The Complainant is Beachbody, LLC, United States of America, represented by Cozen O’Connor, United States of America.
The Respondent is Contact Privacy, Inc. Customer 1244215311, Canada / Jeffrey Ocampo, United States of America and Contact Privacy, Inc. Customer 1244361922, Canada / Rebecca Hayes, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2019. On August 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 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 August 29, 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 August 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 20, 2019.
The Center appointed Carol Anne Been as the sole panelist in this matter on October 2, 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 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 logo 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. 1,045,004 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 June 23, 2019. The disputed domain name was registered by the Respondent on July 3, 2019.
Both disputed domain names are currently inactive. 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 sale of nutritional supplement products includes its popular SHAKEOLOGY nutritional supplement products, which it introduced on September 1, 2007. The Complainant sells its SHAKEOLOGY nutritional supplement products worldwide including directly from the Complainant’s websites at “” and “”, or through authorized Beachbody coaches, see “”. The Complainant also promotes its SHAKEOLOGY products through social media, including Facebook, Twitter, and YouTube, which have significant numbers of followers and views.
Many years after the Complainant established rights in its SHAKEOLOGY mark and the success of its SHAKEOLOGY nutritional supplement products, the Respondent registered the disputed domain name on June 23, 2019 and the disputed domain name on July 3, 2019. The Respondent provided false contact information when registering the disputed domain names, and the disputed domain names are under common control.
The Respondent is using the disputed domain names to host websites that purportedly offer SHAKEOLOGY products at approximately USD 40 less than the price listed on the Complainant’s official websites. The websites also use the Complainant’s trademarks, trade dress and copyrights. Any SHAKEOLOGY products offered or purported to be sold on the websites at the disputed domain names were obtained through unauthorized means or, if the Respondent is an authorized Beachbody coach, are offered and purported to be sold in violation of the Complainant’s policies and procedures for coaches. Further, the Complainant has received multiple complaints and inquiries from consumers who attempted to purchase SHAKEOLOGY products through the websites at the disputed domain names, but never received the purchased products, suggesting fraud. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary issue: Multiple Respondents
The Panel notes that the Complaint is filed against “Jeffrey Ocampo” and “Rebecca Hayes”. However, the Complainant has demonstrated that the disputed domain names are subject to common control and the consolidation would be fair and equitable to all parties. The content of the websites associated with both disputed domain names was nearly identical before becoming inactive. Further, the disputed domain names were both registered through the same Registrar, with what seems to be false contact information. Lastly, both disputed domain names point to the same IP address.
In view of the above, this Panel concludes that the Complaint consolidated against two respondents is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see section 4.11.2 WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Therefore, the Panel will now proceed to a decision on the merits of the case. B. Identical or Confusingly Similar
The disputed domain names incorporate the entire SHAKEOLOGY trademark of the Complainant, and add the descriptive terms “team” or “usa”. The addition of these terms to the Complainant’s SHAKEOLOGY trademark does not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0).
The Panel concludes that the disputed domain names are confusingly similar to a trademark in which the Complainant has prior rights. (Policy, paragraph 4(a)(i)). C. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent registered the disputed domain names for legitimate interests or for the bona fide offering of legitimate goods or services. The Complainant has presented evidence and arguments that the Respondent’s use of the disputed domain names may involve improperly obtained products or fraud.
The Respondent did not answer the allegations raised by the Complainant, and did not offer any evidence to rebut the Complainant’s prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names. (Policy, paragraph 4(a)(ii)). D. Registered and Used in Bad Faith
The Respondent has registered the disputed domain names with actual or constructive knowledge of the Complainant’s long prior rights in its SHAKEOLOGY mark as the Respondent has used the disputed domain names to sell the Complainant’s products using the Complainant’s trademarks, trade dress and copyrights, to create confusion and attract Internet traffic intended for the Complainant’s sites. With respect to the use in bad faith, the websites at the disputed domain names offered and purported to sell SHAKEOLOGY products. However, multiple complaints and inquiries from consumers who attempted to purchase SHAKEOLOGY products through the websites at the disputed domain names, but never received the purchased products, suggest use of the disputed domain names for fraud. Finally, the websites did not disclose the relationship between the Complainant and the Respondent.
Accordingly, the Panel concludes that the Respondent registered and is using the disputed domain names in bad faith. (Policy, paragraphs 4(a)(iii), 4(b)(iv)). 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.
Carol Anne Been
Sole Panelist
Date: October 15, 2019
Full & Egal Universal Law Academy