The Complainant is Beachbody, LLC, United States of America (“United States”), represented by Cozen O’Connor, United States.
The Respondent is Contact Privacy, Inc. Customer 1244448913, Contact Privacy, Inc., Canada / Thomas Medley, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 23, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 23, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2019.
The Center appointed Gregory N. Albright as the sole panelist in this matter on July 4, 2019. 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 following factual information is derived from the Amended Complaint and supporting materials submitted by the Complainant.
The Complainant owns the following trademark registrations:
- United States Registration No. 3,534,958 for SHAKEOLOGY in connection with “nutritional and dietary supplements; meal replacement shakes; meal replacement bars” in International Class 5, registered on November 18, 2008;
- United States Registration No. 4,171,714 for in connection with “nutritional and dietary supplements; meal replacement shakes adapted for medical use” in International Class 5, registered on July 10, 2012;
- United States Registration No. 3,979,663 for SHAKEOLOGY THE HEALTHIEST MEAL OF THE DAY in connection with “nutritional and dietary supplements; meal replacement shakes; meal replacement bars” in International Class 5, registered on June 14, 2011;
- International Registration No. 1045004 for SHAKEOLOGY in connection with “nutritional and dietary supplements adapted for medical purposes; dietary meal replacement shakes adapted for medical purposes; dietary meal replacement bars adapted for medical purposes” in International Class 5, registered on April 13, 2010; and
- Canadian Registration No. TMA804,603 for SHAKEOLOGY in connection with “Nutritional and dietary supplements, namely, vitamins and mineral supplements; meal replacement shakes; meal replacement bars” in International Class 5, registered on August 17, 2011.
The disputed domain name was registered by the Respondent on May 5, 2019. The disputed domain name resolves to a webpage offering for sale the Complainant’s SHAKEOLOGY products. 5. Parties’ Contentions A. Complainant
The Complainant is a well-known creator and seller of in-home fitness, health, wellness and weight loss solutions, including nutritional supplement products, in-home exercise and fitness DVD-based workout kits, and exercise gear. The Complainant has a strong presence in the fitness industry as a leading provider of exercise and fitness instruction, exercise, health and nutrition goods and services and has achieved great success since 1998.
The Complainant’s popular SHAKEOLOGY nutritional supplement products are a key component of the Complainant’s business. The Complainant sells its SHAKEOLOGY products around the world including in the United States, Canada, the United Kingdom, and Europe. The Complainant does not sell its SHAKEOLOGY products wholesale. Rather, consumers must either purchase SHAKEOLOGY products directly from the Complainant’s websites or through an authorized Beachbody coach.
The Complainant’s SHAKEOLOGY products have achieved great success since introduction on September 1, 2017, in large part because of the Complainant’s marketing and promotional efforts, including through the Complainant’s websites (“/shk/us” and “”), Facebook product page, Twitter account, YouTube channel, as well as substantial print and Internet-based advertising. The Complainant’s promotional and marketing efforts have generated substantial success for the Complainant and a huge consumer following. The Complainant’s SHAKEOLOGY products were featured in the May 2011 issue of Oprah’s O Magazine, with an annual circulation of over 2.5 million copies. As a result of the Complainant’s efforts, the SHAKEOLOGY trademarks have acquired a valuable reputation and goodwill among consumers, and consumers associate the marks with the Complainant. In addition to the Complainant’s common law trademark rights, the Complainant owns the trademark registrations summarized in Section 4, above.
In an apparent attempt to trade on the Complainant’s marks, the Respondent registered the disputed domain name, which incorporates the entirety of the Complainant’s SHAKEOLOGY trademark, and is confusingly similar thereto. The mere addition of the descriptor “club” to the disputed domain name does not distinguish, and instead increases, the likelihood of confusion amongst consumers as to the source of the disputed domain name and associated website. Given the prominence of SHAKEOLOGY in the disputed domain name, consumers are likely to believe that they will be able to purchase SHAKEOLOGY products through a “club” or at a discounted price through the website associated with the disputed domain name; indeed, this is how the Respondent utilized the website – to offer SHAKEOLOGY products for sale at a discount (USD 40 less than the USD 129.95 list price on the Complainant’s official websites).
The Respondent does not have legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant. The Respondent did not register the disputed domain name to advance legitimate interests, or for the bona fide offering of legitimate goods or services, but instead registered the disputed domain name intending to trade off the goodwill in the Complainant’s SHAKEOLOGY trademarks, confuse consumers into believing the website linked to the disputed domain name is associated with the Complaint, and scam consumers out of their money.
In addition, the Respondent anonymously registered the disputed domain name in an apparent attempt to evade accountability, and the Complainant believes the Respondent provided false contact information to the Registrar.
The Respondent registered and is using the disputed domain name in bad faith. Bad faith may be found where, as here, “the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor”; and/or “by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location”. Seeparagraphs 4(b)(iii) and (iv) of the Policy. The Respondent registered the disputed domain name long after the Complainant began using, and obtained registrations for, the SHAKEOLOGY trademarks.
Bad faith is also apparent because only the Complainant and authorized Beachbody coaches are permitted to sell SHAKEOLOGY products, but the Respondent registered and is using the disputed domain name in connection with a website that creates the false impression that the Respondent is affiliated or associated with the Complainant. The Complainant also contends that the website associated with the disputed domain name shows the Respondent’s bad faith because it incorporates the Complainant’s trade dress and protected logos, and the Complainant’s copyrighted images and text.
The Complainant takes protection of its valuable intellectual property very seriously, and as soon as it learned of the Respondent’s actions its counsel gave notice of infringement to the host of the disputed domain name, and sent a demand letter to the Respondent. No response was received, and no corrective action was taken. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name. A. Identical or Confusingly Similar
The Complainant has shown that it owns rights in the SHAKEOLOGY trademarks and that it acquired those rights long before the Respondent registered the disputed domain name.
The Panel also finds that the Complainant has established confusing similarity. The addition of the descriptive term “club” to the Complainant’s SHAKEOLOGY mark – to create the disputed domain name – does not in this Panel’s view eliminate confusing similarity. The disputed domain name incorporates the entirety of the Complainant’s SHAKEOLOGY trademark, and the mark is the disputed domain name’s predominant feature. Further, “club” is an addition to the Complainant’s mark that prospective customers might reasonably expect to see associated with a website that is operated or authorized by the Complainant.
The first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests
The Amended Complaint confirms that the Respondent is not a Beachbody coach authorized to sell the Complainant’s SHAKEOLOGY products, the Respondent is not otherwise affiliated or associated with the Complainant, and the Respondent does not have the Complainant’s permission to use the disputed domain name or the Complainant’s SHAKEOLOGY trademarks.
Further, the Complainant has made a prima facie showing that the Respondent is not using the disputed domain name in connection with the bona fide offering of goods or services. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Complainant has shown that the disputed domain name is being used in connection with a website through which the Respondent – without authorization – ostensibly offers SHAKEOLOGY products for sale at a discount of about 30 percent off the official list price for the same products on the Complainant’s websites. The Complainant also asserts that the Respondent’s website wrongfully incorporates elements of the Complainant’s protected trade dress and subject matter protected by copyright (resolving the merits of those claims is beyond the scope of this proceeding, but the Panel takes note of the claims).
In addition, the Complainant offered evidence of similarities between the Respondent’s disputed domain name and associated website and another website (now taken down) connected to a similar and unauthorized domain name. Both websites were associated with domain names that adopted the SHAKEOLOGY mark as a predominant feature (with “club” added to one and “deals” added to the other), and both websites purported to offer the Complainant’s product at the same discounted price – USD 89.95. Moreover, the Complainant has received complaints from customers who never received the SHAKEOLOGY products they ordered through the website associated with the domain name. The similarity of the Respondent’s disputed domain name and associated website to the domain name and website raises a legitimate question whether they are both operated by the Respondent, and whether the Respondent is using the disputed domain name to obtain money for products that the Respondent does not in fact deliver, thus defrauding customers and potentially injuring the Complainant’s reputation in the marketplace. Any such conduct would not constitute a bona fide offering of goods or services. SeeWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition(“WIPO Overview 3.0”), Section 2.13.
The Respondent, however, did not come forward to answer the serious questions presented by the Amended Complaint, or to offer any evidence to rebut the Complainant’s prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second element of paragraph 4(a) of the Policy is satisfied. C. Registered and Used in Bad Faith
The disputed domain name was registered by the Respondent several years after the Complainant commenced use and obtained trademark registrations for the SHAKEOLOGY marks. The Complainant has also described its substantial marketing efforts including extensive Internet advertising, and its SHAKEOLOGY marks appear to be well known in the relevant marketplace. This evidence, coupled with the confusing similarity of the Complainant’s marks and the disputed domain name, leads inescapably to the conclusion that the Respondent chose the disputed domain name with knowledge of the Complainant’s marks, and with the intent to trade on the marks and divert to the Respondent’s website Internet users who were seeking to purchase genuine SHAKEOLOGY products from an authorized seller. The Panel therefore finds that the Respondent registered the disputed domain name in bad faith.
In addition, the Panel notes the analysis of the use made under the second element and that the Respondent did not respond to the Amended Complaint in this proceeding. Nor did the Respondent respond to the Complainant’s demand letter, which advised the Respondent of the Complainant’s trademark rights and requested, among other things, voluntary transfer of the disputed domain name to the Complainant. Instead, at the time of the Amended Complaint the website associated with the disputed domain name remained active. The Panel therefore finds that the Respondent used, and with notice of the Complainant’s rights continued to use, the disputed domain name in bad faith.
The third element of paragraph 4(a) of the Policy is satisfied. 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.
Gregory N. Albright
Sole Panelist
Date: July 8, 2019
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