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 Sangfeng of Xiamen, China. 2. The Domain Names and Registrars
The disputed domain names , , , and are registered with 1API GmbH. The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2015. On March 10, 2015, the Center transmitted by email to PDR Ltd. d/b/a PublicDomainR and 1API GmbH a request for registrar verification in connection with the disputed domain names. On March 11, 2015, PDR Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On March 12, 2015 1API GmbH 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 March 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2015.
The Center appointed Steven A. Maier as the sole panelist in this matter on April 16, 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 Complainant is a Delaware, United States limited liability company with its principal place of business in California, United States. It is a provider of in-home health, wellness, weight loss and fitness solutions, including in-home fitness products sold under the name and trademark FOCUS T25.
The Complainant is the owner of trademark registrations including the following:
- United States trademark number 4404411 for FOCUS T25 filed on June 19, 2012 in International Classes 9 and 41, for goods and services including pre-recorded video cassettes, CDs and DVDs featuring exercise, fitness and dietary information and instruction.
- United States trademark number 4412310 for a stylized mark FOCUS T25 filed on February 25, 2013 in International Classes 9 and 41, for similar goods and services as above. The stylized mark consists of the term “T25” in bold black lettering with the term “FOCUS” superimposed on the cross section of the “T” in smaller white lettering.
- International (Madrid) trademark registration number 1183303 for FOCUS T25 registered on July 24, 2013 in International Class 9 for similar goods and services as above and designating a total of 66 countries worldwide.
The disputed domain names were registered on the following dates:
, and on February 13, 2015
and on January 23, 2015
on February 11, 2015
The Complainant has provided evidence by the way of screen prints that, on March 9, 2015, each of the disputed domain names resolved to a website at “” which prominently featured the Complainant’s stylized trademark referred to above and purported to offer the Complainant’s products for sale online. The (considerably less prominent) website page footers stated that the website was operated by a worldwide wholesale supplier named T-25 Ltd offering discounted goods from China. 5. Parties’ Contentions A. Complainant
The Complainant states that it has traded since 1998 and that its in-home fitness products including FOCUS T25 are one the main components of its business. It states that FOCUS T25 is a full body workout regime developed by a fitness trainer which consists of 11 non-stop fitness workouts of 25 minutes each. It states that its products were introduced between 2009 and 2013 and that it has sold millions of kits including those under the FOCUS T25 brand. The Complainant states that owing to the above and to its substantial advertising and promotion of its products worldwide, the Complainant’s trademarks have acquired valuable reputation and goodwill among the general public.
The Complainant submits that the disputed domain names are confusingly similar to trademarks or service marks in which it has rights. The Complainant states that each of the disputed domain names includes the term “T25” which constitutes a significant part of its FOCUS T25 trademarks and the dominant part of its stylized trademark. In addition, each of the disputed domain names includes either the term “focus” or a generic term such as “shop” or “stores” which does not distinguish the disputed domain names from the Complainant’s trademarks. Finally, each of the disputed domain names includes a generic top level domain (“gTLD”), “.net”, “.com”, or “.org.”, which is typically to be disregarded for the purposes of comparison.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant states that it is not affiliated with the Respondent. The Complainant refers to the Respondent’s website and states that the Respondent is infringing not only its registered trademarks but also its copyright by reproducing verbatim the Complainant’s text and images taken from its own websites. Further, the Respondent is using its website to offer counterfeit versions of the Complainant’s products including its FOCUS T25 workout kits for sale. The Respondent is deliberately trying to pass off its website as the Complainant’s.
The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith.
The Complainant repeats the submissions referred to above and states that the Respondent has deliberately attempted to take commercial advantage of the Complainant’s goodwill by using the disputed domain names to offer counterfeit versions of the Complainant’s goods and to infringe its intellectual property rights. The Complainant states that it has sent several cease and desist letters to the Respondent but the Respondent has continued to deceive consumers by falsely representing an affiliation and association with the Complainant, which has caused actual consumer confusion in at least one case.
The Complainant seeks the transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
The Complainant must show that all three of these elements are present even in a case such as this where the Respondent has failed to file a Response. A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in the mark FOCUS T25 including a stylized mark in which the term “T25” is the predominant element. Further, the Panel accepts that the term “T25” has become distinctive of the Complainant and certain of its home fitness products. Ignoring the gTLD, the first disputed domain name consists of the term “T25” together with the term “focus” which together comprise the Complainant’s trademark, albeit that the terms are reversed. Four of the remaining disputed domain names comprise the term “t25” together with the generic terms “shop”, “stores” and “weekly”, which in the view of the Panel do nothing to distinguish the disputed domain names from the distinctive term “T25”: on the contrary, these terms appear to the Panel to allude to sales activities and to the Complainant’s fitness program and therefore add to the potential for confusion. So far as the term “weebly” is concerned, there is no evidence of any meaning attaching to this term and the Panel infers that its most likely purpose is to correspond to an error in typing the word “weekly”.
In the circumstances, the Panel finds that all of the disputed domain names are confusingly similar to a trademark or service mark in which the Complainant has rights. B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions that it has no affiliation with the Respondent, and concerning the Respondent’s use of the disputed domain names, give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Policy includes under paragraph 4(c) a number of circumstances upon which a respondent may rely in order to demonstrate rights or legitimate interests in a disputed domain name and it was open to the Respondent to file a Response in these proceedings making reference to these or any other relevant circumstances. However, no Response has been filed in this case and there is no other evidence available to the Panel upon which to conclude the Respondent has any rights or legitimate interests in respect of the disputed domain names.
Under certain conditions, previous UDRP panels have found a respondent who uses a domain name containing a trademark to sell that trademarked good to have rights or legitimate interests in the domain name. However, those conditions are not met here: the Complainant has submitted (and the Respondent has not disputed) that the goods offered on the website are not the Complainant’s genuine goods and, in any event, the website does not accurately and prominently disclose the relationship between the Complainant and the Respondent. As indicated above, the website footer includes a statement that the disputed domain name is operated by a wholesale supplier, but this statement does not dispel the (false) impression created by the site that it is licensed or authorized by the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s submissions, which the Respondent has not contradicted, that the Respondent has used the disputed domain names to resolve to a website which makes prominent use of the Complainant’s stylized FOCUS T25 trademark, reproduces the Complainant’s copyrighted material and purports to offer the Complainant’s products for sale. (While the Complainant does not make clear its basis for the assertion that the products sold by the Respondent are counterfeit, this is not a determinative factor in this case). Based on the Complainant’s evidence, the Panel concludes that the Respondent registered the disputed domain names in the knowledge of the Complainant’s trademarks and with the intention of taking unfair advantage of the Complainant’s goodwill in those marks, and that the Respondent has used the disputed domain names to pass itself off as, or as being associated with, the Complainant. The Panel finds in particular that, by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of its website or of products or service on its website (paragraph 4(b)(iv) of the Policy).
In the circumstances, the Panel finds that that the disputed domain names have been registered and are 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 names , , , , and be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: April 21, 2015
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