The Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor of United States of America.
The Respondent is Lanre Idewu of Los Angeles, California, United States of America/Domains By Proxy, LLC of Scottsdale, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 22, 2014. On September 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 25, 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 September 30, 2014.
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 October 2, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on October 24, 2014.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 30, 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 November 3, 2014, the Panel issued the following Administrative Panel Procedural Order No. 1:
"Upon reviewing the evidence of registration of trademarks and service marks submitted by Complainant, the Panel notes that the registered owner of all P90X marks is shown as the entity Product Partners, LLC, and not as Complainant. Before proceeding further in this manner, the Panel wishes to provide Complainant with the opportunity to demonstrate to the Panel that it is the current owner of the trademark registrations evidenced in the Amended Complaint, Annexes E, F, G, H, I, J, and K. Accordingly, Complainant is given until November 19, 2014, to demonstrate that Complainant is the owner of the trademarks evidenced by the previously listed Annexes."
On that same date, Complainant forwarded two supplemental annexes, not identified by letter or by number, that established that the registrations evidenced by the cited annexes had been assigned to and used by Complainant in conjunction with the promotion and sale of the aforementioned goods. 4. Factual Background
Complainant offers for sale DVDs and kits associated with health, wellness, fitness and weight loss. These goods are offered under the P90X trademark registered with the United States Patent and Trademark Office ("USPTO"). The earliest of the P90X mark registrations issued May 18, 2004, and the marks have been in use since at least that time.
Respondent registered the disputed domain name on March 26, 2012, long after Complainant's registration and use of its mark. Respondent has been using the disputed domain name to resolve to a web site at which links to goods and services concerning health, wellness, fitness, and weight loss are being offered. On January 27, 2014, Complainant wrote Respondent a letter, notifying Respondent of Complainant's P90X marks, demanding that Respondent stop using the disputed domain name, and requesting that Respondent transfer the disputed domain name to Complainant. Respondent did not reply to the letter, but rather on March 27, 2014, Respondent renewed the registration in Respondent's name. Sometime in April 2014, Respondent ceased to use the disputed domain name to resolve to a web site. 5. Parties' Contentions A. Complainant
Complainant contends that the disputed domain name is confusingly similar to Complainant's P90X trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name at issue, and that Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
i. that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
ii. that the respondent has no rights or legitimate interests in respect of the domain name; and,
iii. that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Where a domain name incorporates the complainant's mark in its entirety, the domain name is confusingly similar to the complainant's mark, despite the addition of other words in the domain name and despite the fact that common words may be appended or common words inserted therein. This is the so-called "objective test" adopted by the majority of UDRP panelists. See Wal-Mart Stores, Inc. v. MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. Therefore the Panel finds that the disputed domain name, which incorporates Complainant's P90X mark and appends the common English word "live", is confusingly similar to Complainant's mark B. Rights or Legitimate Interests
The consensus view of UDRP panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview, 2.0"), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights or legitimate interests. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent registered the disputed domain name which consists of Complainant's P90X mark together with the common English word "live" and used the disputed domain name to resolve to a parking site at which appear links to sites offering health, wellness, fitness, and weight loss services and goods. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith in contravention of paragraph 4(b)(iv) 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 name be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Date: November 5, 2014
Full & Egal Universal Law Academy