The Complainant is Beachbody, LLC of Santa Monica, California, United States of America represented by Cozen O'Connor, United States of America.
The Respondent is Pan, Wei Hong of Gold Coast, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Crazy Domains FZ-LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2013. On July 18, 2013, the Center transmitted by email to Crazy Domains FZ-LLC a request for registrar verification in connection with the disputed domain name. On July 23, 2013, Crazy Domains FZ-LLC 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 July 26, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2013.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on August 28, 2013. 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 facts relevant to the findings and decision in this case are that:
1. the Complainant creates and sells instructional DVDs concerned with fitness and health by reference to the registered trade mark BEACHBODY (the “Trade Mark”);
2. the Complainant is the owner of, inter alia, International trade mark registration no. 897949 for the word mark BEACHBODY registered August 31, 2006 as well as Australian trade mark registration no. 1440670 registered July 13, 2011, also for the word mark BEACHBODY;
3. the disputed domain name was registered to the Respondent on January 25, 2012;
4. a website corresponding with the disputed domain name offers goods and services in direct competition with the Complainant and includes matter which indicates an affiliation with the Complainant’s business;
5. there has been no commercial or other relationship between the parties and the Complainant has not authorized the Respondent to use the Trade Mark or to register any domain name incorporating the Trade Mark. 5. Parties’ Contentions A. Complainant
The Complainant asserts rights in the Trade Mark and alleges that the disputed domain name is confusingly similar to the Trade Mark.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent registered and/or used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complaint. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the Respondent’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent’s domain name has been registered or subsequently used in bad faith.
Having considered the Complaint and the available evidence, the Panel finds the following: A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether the Complainant has rights in the Trade Mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the Trade Mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy1. The Complainant provides evidence of registration of the Trade Mark and so the Panel is satisfied that it has trade mark rights in BEACHBODY.
The remaining question is whether the disputed domain name is confusingly similar to the Complainant’s Trade Mark. For the purposes of testing confusing similarity, the country code Top Level Domain (“ccTLD”), “.” can typically be ignored as trivial and of no distinguishing value.2 The comparison then reduces to the Trade Mark and the expression “beachbodyfitness”.
The Panel finds the disputed domain name to be confusing similar to the Trade Mark since it takes the whole of the Trade Mark and simply adds descriptive and non-distinctive matter “fitness”. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.3
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a disputed domain name:
“(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.”
The publicly available WhoIs database does not support any conclusion that the Respondent might be commonly known by the disputed domain name. There is no evidence that the Respondent has trade mark rights in the disputed domain name, registered or not. Further, the Complainant has not authorized the Respondent to use the Trade Mark and it alleges that the goods sold by the Respondent are counterfeit versions of the Complainant’s goods. Evidence is also provided that the website to which the disputed name resolved slavishly reproduced copyright material from the Complainant’s website and carried legal notices and other attributions which import a direct but false claim that the Respondent is formally affiliated with the Complainant’s business.
The Panel finds that the Complainant has established a prima facie case that the Respondent lack rights or legitimate interests in the disputed domain name and so the onus shifts to the Respondent to establish a right or legitimate interest in the disputed domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and so finds that Complainant has satisfied the second limb of the Policy. C. Registered or Subsequently Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration or use of a domain name in bad faith. They are:
“(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 another person 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 a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of that website or location or of a product or service on that website or location.”
The Panel finds that the Respondent’s actions fall squarely under paragraph 4(b)(iv) above. The Panel has already found the disputed domain name to be confusingly similar to the Complainant’s Trade Mark. The Complainant submits evidence of screenshots of the web page(s) corresponding with the disputed domain name. The Panel notes that those pages directly lift images from the Complainant’s official website. The very purpose of the resolving website in this case is commercial gain. In terms of paragraph 4(b)(iv) of the Policy, the Panel finds that the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s Trade Mark.
The Panel finds that the Respondent registered and used the disputed domain name in bad faith and, accordingly, the Complainant has satisfied the third and final limb of the Policy. 7. Decision
For all 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.
Debrett G. Lyons
Sole Panelist
Date: September 11, 2013
1 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 174052 (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
2 See Gardline Surveys Ltd v. Domain Finance Ltd., NAF Claim No. 153545 (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
3 See Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 780200.
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