Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O’Connor, United States of America.
Respondent is shoeclothe.Inc of United States of America. 2. The Domain Names and Registrars
The disputed domain names , , , , , , ,, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,, , , , , , , and are registered with Chengdu West Dimension Digital Technology Co., Ltd. and GoD, LLC (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2014. On March 12, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 12 and 17, 2014, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the Respondent named in the Complaint. The Center sent an email communication to Complainant on March 19, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 21, 2014. On March 19, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 20, 2014, Complainant confirmed its request that English be the language of the proceeding. Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on March 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2014. Several email communications were received from Respondent but no formal Response was received.
On April 17, the Complainant filed a Supplemental filing requesting to incorporate six additional domain names to the Complaint.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on May 1, 2014. 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.
On May 26, 2014, the Panel issued the Administrative Panel Procedural Order No.1, ordering that subject to Registrar verification the six additional domain names , , , , and be added to the proceeding. On May 26, 2014, the Center transmitted by email to the Registrar GoD, LLC a request for registrar verification in connection with the six disputed domain names. On May 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center formally notified Respondent of the Complaint on June 4, 2014, and the proceedings commenced on June 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2014. 4. Factual Background
Complainant bases its Complaint on its nine United States trademark registrations (Annexes F through N to the Complaint) for the marks BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25 as well as on its additional seven United States trademark registrations asserted through its supplemental filing (Annex C thereto) for the marks P90X, P90X2, and P90X3.
Respondent, according to Complainant, and as found by this Panel below, is an entity operating under the name “shoeclothe.Inc”. 5. Parties’ Contentions A. Complainant
Complainant requests that the Panel consolidate the multiple registrants of the multiple disputed domain names into one dispute pursuant to paragraphs 3(c) and 10(e) of the Rules. Complainant also has submitted a Supplemental Filing identifying six additional domain names.
Complainant asserts (1) that Complainant is the exclusive owner of the trademark rights in the BEACHBODY, INSANITY, INSANITY THE ASYLUM, FOCUS T25, P90X, P90X2, and P90X3 marks, (2) that the disputed domain names are confusingly similar to the BEACHBODY, INSANITY, INSANITY THE ASYLUM, FOCUS T25, P90X, P90X2, and P90X3 mark, (3) that Respondent has no rights or legitimate interests in the disputed domain names, and (4) that Respondent has registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not formally reply to Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed, Complainant must prove each of the following:
(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect of the disputed domain names; and
(iii) The disputed domain names were registered and are being used in bad faith. A. Consolidation of Complaint
As a preliminary matter, the Panel grants Complainant’s request to consolidate the multiple registrants into one dispute. The Panel agrees with Complainant that based on the similar content of the websites resolving from the disputed domain names, and especially based on the same uncommon typographical error found in the Conditions of Use identifying “shoeclothe.Inc” as the operator of each of the website, it is appropriate to consolidated the disputes into one Complaint. B. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25, P90X, P90X2, and P90X3 marks. Many of the disputed domain names incorporate a variety of combination of Complainant’s BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25, P90X, P90X2, and P90X3 marks in their entirety. Some of the disputed domain names incorporate more than one of the BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25, P90X, P90X2, and P90X3 marks. Some of the disputed domain names incorporate part of the FOCUS T25 or P90X marks along with generic terms such as “DVD”, “cheap”, or “workout”. Some of the disputed domain names incorporate part of the FOCUS T25 or P90X marks with terms related to Complainant’s products such as Shaun T, the trainer featured in certain of Complainant’s products. As a general matter, the addition of generic terms or terms that relate to Complainant’s products do not add distinctiveness to the disputed domain names or minimize the confusing similarity. Based on a review of the list of the disputed domain names, the Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in that the disputed domain names are identical or confusingly similar to Complainant’s BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25, P90X, P90X2, and P90X3 marks. C. Rights or Legitimate Interests
Complainant has asserted that Respondent is not affiliated with Complainant and has received no license or authorization of any kind to use the BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25, P90X, P90X2, and P90X3 marks. Respondent has not claimed that he or she operates a bona fide business using the BEACHBODY, INSANITY, INSANITY THE ASYLUM, and FOCUS T25, P90X, P90X2, and P90X3 marks. Nothing in the record indicates that he or she has any other rights or legitimate interests in that mark. Furthermore, there is no evidence in the available record that Respondent’s use of the disputed domain name is legitimate noncommercial or fair use, on that Respondent is commonly known by the disputed domain name. On the contrary, the Panel relies on Complainant’s assertion that the products sold from the websites resolving from the disputes domain names are likely counterfeit.
The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Using domain names to facilitate the sale of counterfeit goods is strong evidence of bad faith. The Panel relies on Complainant’s assertion that the products sold from the websites resolving from the disputes domain names are likely counterfeit. To the extent the products sold at the websites are merely unauthorized, the Panel nonetheless finds that Respondent has registered and used the disputed domain names in bad faith in light of the plain attempts to attract, for commercial gain, Internet users to the websites resolving from the disputed domain names by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the websites. The Panel further agrees with Complainant that Respondent’s registration and use of the disputed domain names may also be considered in this case as an attempt to disrupt the business of a competitor and is therefore in bad faith.
In light of the above, the Panel finds that Complainant has established that Respondent registered and is using the disputed domain names in bad faith, and has satisfied the requirements of paragraph 4(a)(iii) 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.
Kimberly Chen Nobles
Sole Panelist
Date: June 30, 2014
Full & Egal Universal Law Academy