The Complainant is Beachbody, LLC of Santa Monica, California, United States of America ("United States"), represented by Cozen O'Connor, United States.
The Respondent is Zhang Liangying of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2015. On February 18, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2015, the Registrar 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 proceeding commenced on February 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 13, 2015.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on March 25, 2015. 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
The disputed domain name was created on December 26, 2014.
The Complainant is a Delaware limited liability company which has since 2003 carried on business conducting wellness and fitness programs and producing and marketing compact discs (CDs) and digital video discs (DVDs) for such programs. It has many trademark registrations worldwide consisting of or including the trademark P90X. Those registrations include several in the United States and International Registrations covering a large number of countries including Singapore. The Complainant has produced evidence of extensive online promotion of its goods and services through its websites at and . It also promotes those goods and services through websites at country code Top-Level Domains including ".", ".ca" and "." as well as through Facebook and other social media. It also claims to produce substantial print promotional material and has advertising, promotion and placements in print media including the New York Times, and popular television programs in the United States.
The website at the disputed domain name substantially replicates the look and feel of the Complainant's website at "www." and offers for sale at that website CDs and DVDs for wellness and fitness programs which, the Complainant states, are counterfeit copies of its corresponding discs. In addition to discs offered under the P90X trademark the website offers counterfeit discs under the Complainant's other registered trademarks INSANITY and INSANITY THE ASYLUM. The Complainant asserts that the images and content of those discs are protected by United States Copyright Registrations Nos. PA0001324687 and PA0001689744. 5. Parties' Contentions A. Complainant
The Complainant asserts that it is not in any way connected with the Respondent and has not licensed or otherwise authorized the Respondent to use or register the disputed domain name.
The Complainant further asserts that the CDs and DVDs offered at the website to which the disputed domain name directs are counterfeit copies of the images and content of discs put out by the Complainant under its P90X trademark and other trademarks and which constitute infringement of the Complainant's copyright in those works and discs.
The Complainant further contends that:
(i) the disputed domain name is confusingly similar to its trademark P90X and that the addition to that trademark of the geographical word "singapore" does not distinguish the disputed domain name but rather serves to heighten the likelihood of confusion by targeting consumers in that jurisdiction.
(ii) the Complainant further contends that the Respondent's unauthorized and infringing use of the Complainant's trademarks and copyright material cannot found a claim for a right or legitimate interest in the disputed domain name. Further, the Complainant contends that from the registration and use of the disputed domain name to advertise discs and workout kits under the Complainant's trademark it is clear that the Respondent has registered and is using the disputed domain name in an attempt to attract, for commercial gain Internet users by creating confusion with the Complainant's mark and primarily for the purpose of disrupting the business of a competitor, both of which constitute evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name wholly contains the Complainant's trademark to which is added the geographic name "singapore". It is well established in many prior UDRP decisions that the addition of a geographic or descriptive term does not serve to distinguish the disputed domain name from the Complainant's trademark and that, indeed, it may well serve to heighten the likelihood of confusion (see for example a previous case in which the Complainant was the target, Beachbody LLC v. Tianxiang Xu,WIPO Case No. D2011-1858).
The Panel therefore finds that the disputed domain name is substantially identical or confusingly similar to the trademark P90X in which the Complainant has well established rights. B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent is not affiliated with the Complainant. The Panel accepts that assertion. The Complainant's evidence shows that the Complainant's trademark P90X was registered and widely used and promoted throughout the world well prior to the registration of the disputed domain name in December, 2014. The fact that the disputed domain name was subsequently used to resolve to a site which imitates the Complainant's website and offers what are likely counterfeits of the Complainant's goods at that site strongly indicates that the Respondent registered the disputed domain name in full knowledge of the Complainant's rights. The use of the disputed domain name in such a way cannot constitute a bona fide offering of goods or services.1 The Respondent had an opportunity to rebut, or explain its position in relation to, the Complainant's allegations but failed to do so.
The Panel therefore accepts the Complainant's assertions and contentions in this regard and finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As explained above, the inevitable conclusion from the Complainant's evidence of its rights and reputation in its P90X trademark and the contents of the website at the disputed domain name give rise to a clear inference that at the time the disputed domain name was registered the reputation of the Complainant's mark was known to the Respondent and that the registration and subsequent use of the disputed domain name was for the purpose of capitalizing on that reputation. The infringing use of the disputed domain name to point to a website offering goods which the Complainant alleges to be counterfeit is clearly a bad faith use of the disputed domain name. In the Panel's view the Respondent's conduct clearly falls within paragraph 4(b)(iv) of the Policy. Again, the Respondent had an opportunity to rebut the Complainant's contentions but failed to do so.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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.
Desmond J. Ryan AM
Sole Panelist
Date: April 1, 2015
1 In any event, even if the goods on offer under the disputed domain name are genuine, such use would still not amount to a bona fide offering of goods under the criteria laid out in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, as there is no disclosure on the website as to the Respondent's relationship (or lack thereof) with the Complainant.
Full & Egal Universal Law Academy