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 Internet Domain Administrator, N/A of Beaverton, Kgatleng, Botswana. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 2, 2015. On November 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 27, 2015.
The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on November 30, 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, Beachbody, LLC is a United States company registered under the laws of Delaware with its principal place of business in Santa Monica. The Complainant has been a leader in the field of in-home health, wellness, weight loss, and fitness solutions since 1998. One of the components of the Complainant's business are its popular in-home fitness DVDs and kits including its P90X, P90X2, P90X3-branded fitness DVDs and kits that have known great success since their introduction in 2003, 2011 and 2013 respectively.
The Complainant has engaged in several marketing and promotional efforts of its P90X, P90X2, P90X3 marks and products and services through many channels as its international sites, its facebook pages, as well other Internet-based advertising and in-person and televised promotional appearances by its trainers, by which they have acquired a valuable reputation and goodwill.
The Complainant has protected its P90X, P90X2, P90X3 marks (the "Trademarks") by filing trademarks registrations in several jurisdictions including Singapore, the United Kingdom of Great Britain and Norther Ireland, the European Union, the United States, Canada and Australia.
The disputed domain name was registered on September 5, 2015, well after the Complainant secured rights to the Trademarks. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant contends that the disputed domain name is confusingly similar to the registered rights in which the Complainant has rights. The disputed domain name incorporates in its entirety the Complainant's Trademarks and displays the character of the Complainant's Trademarks in the same order in combination with the descriptive phrase "on sale" and the generic date "2015". The Complainant argues that the addition of the generic Top-Level Domain ("gTLD") extension ".com" can usually be ignored when comparing a domain name and a trademark.
While referring to previous UDRP panels decisions dealing with similar additions of generic words, the Complainant holds that the descriptive phrase "on sale" and the generic date "2015" increases the likelihood of consumer confusion and clearly infringes the Complainant's Trademarks.
Lastly the Complainant submits that the mere addition of the descriptive phrase "on sale" and the generic date "2015" to the Complainant's Trademarks fails to distinguish, and actually increases the likelihood of confusion amongst consumers as to the source of the disputed domain name. (b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant asserts that it has rights in P90X, P90X2, P90X3 and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
First, the Complainant contends that the Respondent is not affiliated with the Complainant.
The Complainant further claims that the Respondent was and is advertising, offering and selling counterfeit copies of the Complainant's product on the website at the disputed domain name.
The Complainant also submits that the Respondent is making unauthorized and infringing use of the Complainant's Trademarks including other registered trademarks and copyright protected content.
The Complainant finally submits that the Respondent has not provided and cannot provide any legitimate basis for its registration of any domain name that incorporates the Complainant's Trademarks and the entirety of actions of the Respondent demonstrates the Respondent's illegitimate purpose. (c) The disputed domain name was registered and is being used in bad faith.
First the Complainant contends that due to the Respondent's unauthorized and infringing use of the Complainant's Trademarks and copyright protected content, there is little question that the Respondent's use and registration was in bad faith.
Further, the Complainant contends that the Respondent attempted to take commercial advantages of the Complainant's Trademarks, copyright protected content, commercial reputation and trade off the Complainant's goodwill.
Lastly, the Complainant submits that the Respondent, at a minimum, registered the disputed domain name in an attempt to attract Internet users by creating a likelihood of confusion with the Complainant's Trademarks as to its source, sponsorship, affiliation or endorsement of the website and the goods sold and for the purpose of disrupting the business of the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).
First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to P90X, P90X2 and P90X3.
Secondly, the disputed domain name fully incorporates the Complainant's P90X, P90X2 and P90X3 Trademarks in which the Complainant has exclusive rights. Therefore this Panel finds, similarly to other UDRP panels, that it is established that where the disputed domain name wholly incorporates a complainant's registered trademark, it is sufficient to establish identity or confusing similarity for purposes of the Policy. (EAuto, L.L.C. v. EAuto Parts,WIPO Case No. D2000-0096; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995).
This Panel further finds, similarly to other UDRP panels, that it is established that where the disputed domain name incorporates a complainant's registered trademark together with the addition of generic words, in this case "on sale" and "2015", is not sufficient to escape the finding of confusing similarity of the disputed domain name. (SANOFI AVENTIS v. ProtectF/RegisterF,WIPO Case No. D2006-1272; Pepsico, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696).
Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD ".com" to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant's P90X, P90X2 and P90X3 Trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent's rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
"When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
This Panel finds in light of the Complainant's asserted facts, that no license, permission or authorization of any kind to use the Complainant's Trademarks has been granted to the Respondent, neither is the Complainant affiliated with the Respondent. Thus, the Respondent has no rights in the P90X, P90X2 and P90X3 Trademarks.
An examination of the website operating under the disputed domain name shows no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The website at the disputed domain name offers alleged counterfeit copies of the Complainant's products without any disclosure of the lack of relationship between the Complainant and the Respondent. Hence the Respondent is making unauthorized and infringing use of not only the Complainant's Trademarks but also its copyright protected content. Similar to other UDRP panels, this Panel finds that using the disputed domain name to sell counterfeit imitations of the Complainant's branded products, is not a legitimate interest. (Cartier International, N.V., Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758).
Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the disputed domain name.
This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name.
For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of "registration and use of a domain name in bad faith."
First of all, with regard to the Respondent's registration of the disputed domain name, this Panel believes, after reviewing the website as evidenced by the Complainant, that the Respondent must have known and been aware of the rights on the prior Trademarks, since the Respondent registered the disputed domain name well after the registration of the Complainant's Trademarks and after the products and services of the Complainant have become well-known.
Secondly, this Panel finds, for reasons similar to other UDRP panels, that the Respondent was aware of the Complainant's Trademarks, because the disputed domain name contains the Complainant's Trademarks and the website at the disputed domain name offers to sell alleged counterfeit imitations of the Complainant's products. (Cartier International, N.V., Cartier International, B.V. v. David Lee, supra).
Lastly, this Panel has also considered that the Respondent uses the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's Trademarks. Further, the Respondent's website offering alleged counterfeit goods is competing with the Complainant and is therefore disrupting the business of the Complainant. (Mattel, Inc. v. Magic 8 ball factory,WIPO Case No. D2013-0058).
In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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.
Benoit Van Asbroeck
Sole Panelist
Date: December 14, 2015
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