1.1 The Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America (the "Complainant").
1.2 The Respondent is Zhang Sanfeng of Xiamen, Fujian, China (the "Respondent"). 2. The Domain Name and Registrar
2.1 The disputed domain name (the "Disputed Domain Name") is registered with 1API GmbH (the "Registrar"). 3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 2, 2015. On June 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 9, 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.
3.2 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").
3.3 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 June 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 2, 2015. The Complainant filed requests respectively on June 17, 2015 and July 8, 2015, wishing to add additional domain names registered by the Respondent to the present proceeding.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on July 8, 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
4.1 The Complainant in this administrative proceeding is a Limited Liability Company with its principal place of business situated at Santa Monica, California, United States of America. The Complainant is said to have been a leader in the business of in-home health, wellness, weight loss and fitness solutions since 1998. One of the main components of the Complainant's business is said to be the development, production, sale, and distribution of its Beachbody family of health, wellness, weight loss and fitness products and services, including the popular in-home fitness DVDs and kits such as the FOCUS T25, INSANITY, P90X3 and PIYO fitness DVDs, kits and related services collectively described as Beachbody's Products and Services. All of the Complainant's products and services as aforesaid are all said to bear the BEACHBODY registered trademarks. The Complainant's products and services are said to have achieved great success throughout the world as the Complainant has sold millions of its well known INSANITY, P90X3 and FOCUS T25 DVDs and home fitness kits.
4.2 The Respondent in this administrative proceeding is Zhang Sanfeng, and according to the WhoIs database is located at Xiamen, Fujian, China. The Respondent is recorded as having created the Disputed Domain Name on May 12, 2015. 5. Parties' Contentions A. Complainant
5.1 The Complainant is the owner of the following trademark registrations with which the Complainant's fitness products and services under the trademark FOCUS T25 are produced and sold, namely:
i) United States trademark registration number 4404411 for the trademark FOCUS T25 registered on September 17, 2013 in International Classes 9 and 41, for goods and services including pre-recorded videocassettes, CDs, and DVDs featuring exercise, fitness and dietary information and instructions etc.
ii) United States trademark registration number 4412310 for the trademark FOCUS T25 (Stylized) registered on October 1, 2013 in International Classes 9 and 41 for goods and services including pre-recorded videocassettes, CDs, and DVDs featuring exercise, fitness and dietary information and instructions etc.
iii) International trademark registration number 1183303 for the trademark FOCUS T25 registered on July 24, 2013 in International Class 9 for goods and services including pre-recorded videocassettes, CDs, and DVDs featuring exercise fitness and dietary information and instructions etc.
5.2 The Complainant therefore contends that the Disputed Domain Name is confusingly similar to the Complainant's FOCUS T25 trademark as the Disputed Domain Name incorporates a significant portion of the Complainant's trademark namely "t25". The Complainant contends further that "t25" is the dominant portion of the stylized FOCUS T25 trademark and is most prominently displayed on the Complainant's exercise DVDs and fitness kits. The Complainant further submits that the mere addition of the descriptive term "kit" to the abbreviated version of the Complainant's trademark, namely "t25" does not in any way distinguish the Disputed Domain Name, instead, it increases the likelihood of confusion amongst consumers as to the source of the Disputed Domain Name and the associated website. In support the Complainant relies on a number of previous UDRP decisions such as F. Hoffmann-La Roche AG v. Avieltech Consultant,WIPO Case No. D2007-0930 and Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546. Similarly, the Complainant submits that the addition of the generic Top-Level Domain ("gTLD") extension ".com" to the Disputed Domain Name does not prevent a finding of confusing similarity following previous UDRP decisions such as Omega SA v. Domain Admin,WIPO Case No. DME2011-0001 and Sanofi Aventis v.ProtectF/RegisterF,WIPO Case No. D2006-1272.
5.3 The Complainant also submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as there is no evidence to suggest that the Respondent is affiliated to the Complainant or that the Respondent has registered the Disputed Domain Name to advance legitimate interests or for the bona fide offering of legitimate goods and services. The Complainant asserts that the Respondent is actually advertising, offering and selling counterfeit versions of the Complainant's FOCUS T25, P90X, INSANITY and PIYO branded DVDs and workout kits on the website to which the Disputed Domain Name resolves. Furthermore, the Complainant refers to website print-outs annexed to this proceeding to further assert that the Respondent uses the FOCUS T25 trademark as the title and banner of the Disputed Domain Name's landing page to attract Internet users to visit the website and to improve visibility of the websites on the Internet and advance search engine optimization ranking among websites that feature contents related to the Complainant's products. The Complainant finally concludes in this regard, that since the Respondent is using the Disputed Domain Name to directly and blatantly infringe upon the Complainant's trademarks and copyright-protected content, create initial interest confusion, and promote distribute and sell counterfeit copies of the Complainants branded DVDs and workout kits, the entirety of the evidence clearly demonstrates the Respondent's wholly illegitimate purposes.
5.4 On the question of bad faith use, the first submission advanced by the Complainant is, given that the Respondent has used and continues to use the Disputed Domain Name to advertise, offer for sale, and sell unauthorized/counterfeit copies of the Complainant's trademarked fitness DVDs and workout kits there can be no question that such usage is tantamount to bad faith use, following Prada S.A. v. Domain's For Life,WIPO Case No. D2004-1019. Secondly, the Complainant describes the Respondent as a serial infringer of the Complainant's intellectual property rights, as the Respondent as recently as April 21, 2015 was ordered to transfer to the Complainant a number of infringing domain names namely, , , , , and in a recent UDRP decision involving both the Complainant and the Respondent in this proceeding. See the recent UDRP decision in Beachbody, LLC v. Zhang Sangfeng,WIPO Case No. D2015-0418. Thirdly, the Complainant argues that since the Respondent has registered the Disputed Domain Name which incorporates a significant portion of the Complainant's FOCUS T25 trademark and is using the said Disputed Domain Name for the purpose of either (i) attempting to attract for commercial gain, Internet users by creating a likelihood of confusion as to source, sponsorship affiliation or endorsement of the website, and of the goods being sold on the websites and (ii) disrupting the business of the Complainant, both of these objectives constitute bad faith registration and use pursuant to Policy paragraph 4(b)(iii)-(iv). B. Respondent
5.5 The Respondent did not reply to the Complainant's contentions within the time stipulated by the Rules. 6. Discussion and Findings A. Preliminary Consideration of the Complainant's Request to Amend the Complaint to add Nine Additional domain names
6.1 The Complainant by emails of June 17, 2015 and July 8, 2015 applied to the Center to amend this Complaint to include nine other domain names namely: , , , , , , , and said to have been recently registered by the Respondent. In this regard the Complainant submits that it is fair for these recently registered domain names to be added to this complaint, as the Respondent would be provided with an opportunity to review and respond to the amended Complaint if allowed. In response to the application, the Complainant was advised by the Center by reply email that the decision to amend the Complaint was a matter to be considered after the constitution of the Panel.
Accordingly, the Panel rejects the Complainant's requests for amendment for the following reasons. In the first instance, in accordance with paragraph 4(f) of the UDRP Policy and paragraph 10(e) of UDRP Rules, the power to determine a party's request for the consolidation of multiple domain names is at the sole discretion of the Panel, a discretion which must be exercised in accordance with the spirit of the UDRP Policy and the Rules promulgated to safeguard inter alia fairness as enshrined in paragraph 10(b) of the UDRP Rules and due expedition as stipulated in paragraph 10(c) of the UDRP Rules. See further in support, Department of Management Services, State of Florida v. Digi Real Estate Foundation,WIPO Case No. D2007-0547. Secondly at paragraph 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), a relevant extract therefrom states as follows: "additional names may in certain circumstances be added to a complaint after filing but prior to formal commencement of UDRP proceedings." In this instance, the date of commencement of proceedings is June 11, 2015. On the basis that the Complainant's request for amendment as conveyed in the emails of June 17, 2015 and July 8, 2015 was received well after the due date of commencement of the proceeding, the Panel is inclined to reject the requests for amendment of the Complaint for purposes of including nine other domain names, as being out of time. Furthermore, and more significantly, as held in Archipelago Holdings LLC v. Creative Genius Domain Sales and Robert Aragon d/b/a Creative Genius Domain Sales,WIPO Case No. D2001-0729 and Societe Air France v. Kristin Hirsch, Hirsch Company,WIPO Case No. D2008-1213 the addition of nine other domain names to this Complaint was bound to cause undue and substantial delay as it would be necessary for the Center to seek and obtain new registrar verifications and allow the Respondent another 20 days to respond to the amended Complaint. B. UDRP Elements
6.2 With regards to the original Complaint, the Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail, namely that:
i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark which the Complainant has rights;
ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
iii) the Respondent has registered and is using the Disputed Domain Name in bad faith. C. Identical or Confusingly Similar
6.3 The Panel is satisfied that the Complainant owns United States and International trademark registrations in the FOCUS T25 trademark. The Panel accepts that the Complainant has been a leader in the business of in-home health and fitness solutions since 1998.
Clearly, the Disputed Domain Name incorporates a dominant and significant part of the Complainant's trademark namely "t25" and as submitted by the Complainant, the addition of the descriptive term "kit" and or the gTLD extension ".com" does not prevent a finding of confusing similarity. See F. Hoffmann-La Roche AG v. Avieltech Consultant, supra and Omega SA v. Domain Admin, supra. Undoubtedly, the Complainant's customers, Internet users and consumers will be misled into believing that the Disputed Domain Name and the website it resolves to are associated with the Complainant and the Complainant's well known fitness kits DVDs and other products and services in general. The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant's FOCUS T25 trademark. In the circumstances the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. D. Rights or Legitimate Interests
6.4 The Panel without any hesitation finds that the Respondent has failed to produce any evidence that demonstrates that the Respondent has any rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy. There is no evidence to show that the Respondent was licensed or authorised by the Complainant to use the Complainant's trademark or register the Disputed Domain Name. In essence, the Respondent has no affiliation whatsoever with the Complainant. The Panel therefore finds that as the Disputed Domain Name resolves to a website which appears to be advertising, offering and selling counterfeit copies of the Complainant's fitness products such as trademarked DVDs and workout kits and or displaying copyrighted images and verbatim text from the Complainant's own website, such usage or conduct cannot be described as a legitimate and noncommercial fair use of the Disputed Domain Name. See generally, Oki Data Americas Inc. v. ASD Inc.,WIPO Case No. D2001-0903. In view of the foregoing the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. E. Registered and Used in Bad Faith
6.5 On the issue of bad faith registration and use the Panel without any hesitation finds that the Respondent undoubtedly registered the Disputed Domain Name in bad faith and continued to engage in bad faith use. The printouts from the Respondent's website to which the Disputed Domain Name resolves and attached to Annex H to the Complaint, supports this finding without question. Thus as held in Prada S.A. v. Domains For Life, supra, the Panel finds that the use of a domain name to engage in the advertisement and sale of counterfeit goods is strong evidence of bad faith registration and use of a domain name. Secondly, the Complainant is justified in describing the Respondent as a serial infringer of the Complainant's intellectual property rights in its well-known workout and fitness products. As recently as April 21, 2015, the Respondent was ordered to transfer six other infringing domain names to the Complainant. See the decision in Beachbody, LLC v. Zhang Sangfeng, supra. Most crucially, the Panel observes that, all six infringing domain names incorporated the Complainant's mark "T25" just as the same mark is incorporated in the Disputed Domain Name, which is the subject matter of this administrative proceeding. It is also evidentially significant to observe from the chronology of events that in less than a month's time the Respondent had elected to create and register yet another infringing domain name on May 12, 2015. The Panel therefore infers from the chronology of events and the Respondent's blatant disregard of this previous recent UDRP decision that the Respondent deliberately registered the Disputed Domain Name with the sole objective of either (i) attempting to attract for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent's website and the goods being sold on the websites and or (ii) disrupting the business of the Complainant for commercial gain. The Panel therefore finds that any of the said motives or both of them, if considered together, all constitute evidence of bad faith registration and use. Thirdly, the Panel draws adverse inferences from the failure or refusal of the Respondent to respond to this Complaint. Accordingly, the Panel is satisfied that the Complainant has established the essential requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
7.1 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.
Ike Ehiribe
Sole Panelist
Date: July 22, 2015
Full & Egal Universal Law Academy