The Complainant is Beachbody, LLC of Santa Monica, California, United States of America (“USA”), represented by Cozen O'Connor, USA.
The Respondent is Sam Lee of Patchogue, Alabama, USA. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2012. On July 17, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2012.
The Center appointed Sandra Sellers as the sole panelist in this matter on September 3, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
Complainant has provided in-home health, wellness, weight loss, and fitness solutions since 1998. In particular, Complainant’s popular in-home fitness DVDs and kits sold under the P90X brand have been highly successful since their introduction in 2003, largely due to significant advertising and promotion via social media, print and Internet ads, infomercials, promotional appearances by its trainers, and “word of mouth buzz.”
Complainant owns USA and international registrations containing the P90X word and design marks, with first use dates in 2003.
Respondent registered all nine disputed domain names on March 9, 2012, well after introduction of Complainant’s P90X products and services.
On May 28 and 31, 2012, Complainant sent letters to the web hosting providers to request take-down of the infringing content pursuant to the Digital Millennium Copyright Act. On June 7 and 14, 2012, Complainant sent Respondent cease and desist letters, to which Complainant received no reply. 5. Parties’ Contentions A. Complainant
Complainant asserts that its mark is well-known in the field of in-home health, wellness, weight loss and fitness solutions and products. Complainant contends that the disputed domain names are confusingly similar to Complainant’s mark because they consist of Complainant’s mark P90X in its entirety, and that the only difference between Complainant’s mark and the disputed domain names is insertion of the generic terms such as “workout”, “station”, “best shop”, “power”, “I like”, “to”, “top”, “us”, or “ur”, and the generic extension “.com”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain names, and that it registered and uses the disputed domain names in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
As set forth above, Complainant holds registered trademarks in the USA and internationally for its P90X fitness products and services, and thus has rights in the P90X mark.
The disputed domain names consist of Complainant’s mark P90X in its entirety, and the only difference between Complainant’s mark and the disputed domain names are the insertion of generic terms such as “workout”, “station”, “best shop”, “power”, “I like”, “to”, “top”, “us”, or “ur”, and the generic extension “.com”. It has long been held that the addition of a generic word or the extension “.com” is irrelevant to the determination of whether a domain name is identical or confusingly similar to a complainant’s mark. Indeed, other UDRP Panels have found that the addition of generic terms to Complainant’s P90X mark does not dispel a finding of confusing similarity. Beachbody, LLC v. Tianxiange Xu, WIPO Case No. D2011-1858 and Beachbody LLC v Tu Ran, WIPO Case No. D2011-1358.
Accordingly, the Panel finds that Complainant has rights in the P90X mark and that the disputed domains name are confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the P90X mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain names. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain names.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence is sufficient under the circumstances to establish that Respondent has no rights or legitimate interests in the disputed domain names, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
This Panel infers that Respondent most likely knew of Complainant’s P90X mark when Respondent registered the disputed domain names. Furthermore, it appears that Respondent at the time the Complaint was filed, was making commercial use of the disputed domain names. The disputed domain names revert to web pages that offer for sale fitness products and services under the P90X brand in competition with Complainant’s products and services (at the time the Complaint was filed (Complaint annex D)). The web pages also used Complainant’s copyrighted images, graphics and content, and mimicked the appearance of Complainant’s official site by using the same background, logos, and fonts, which further deceives customers into mistakenly believing that the websites and products and services are legitimate and authorized by Complainant. Under paragraph 4(b)(iv) of the Policy above, Respondent’s use of the disputed domain name clearly is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith and that Complainant meets the third criterion of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , , and be transferred to the Complainant.
Sandra Sellers
Sole Panelist
Dated: September 14, 2012
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