Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
Respondent is Domain Manager, Premium Reserved Names, LLC of Saint Louis, Missouri, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with My.CO Gateway (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2010. On November 22, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on December 22, 2010.
The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on January 11, 2011. 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
According to Complainant, Complainant has offered goods and services in the field of in-home health, wellness, weight loss, and other fitness solutions since 1998. One of the main components of Complainant’s business involves the development, production, sale, and distribution of its BEACHBODY family of weight loss and fitness products and services, including its P90X fitness DVDs and kits.
Complainant owns United States trademark registration numbers 2,869,491, 2,869,490, 2,843,063, 2,973,356, 3,669,400, and 3,444,723 for the marks P90X and P90X and design for use in connection with various goods and services related to fitness and weight loss, including nutritional and dietary supplements, physical fitness instruction services, and pre-recorded DVDs and videotapes featuring physical fitness instruction. Complainant also owns international registration number 974040 for the mark P90X for use in connection with pre-recorded video tapes, cassettes, DVDs, and CDs featuring exercise, fitness and dietary information and instruction.
The “.co” domain names became available to the general public for registration on July 20, 2010. Respondent registered the Disputed Domain Name on July 20, 2010. 5. Parties’ Contentions A. Complainant
Complainant contends that its P90X-branded DVDs, kits, and other products and services have achieved great success since their introduction in 2003. Complainant contends that this success is due in part to Complainant’s marketing and promotional efforts, including advertising and promotion through Complainant’s websites, print and other Internet-based advertising, in-person and televised promotional appearances by its trainers, and its infomercials, among other efforts. Complainant contends that its success is also furthered by its consumers, who generate word of mouth endorsements and success stories. As a result, Complainant contends that it has acquired a valuable reputation and goodwill in its P90X family of marks.
Complainant contends that it was using its P90X mark, sold its P90X-branded DVDs, kits, and other products and services in commerce, and obtained the above-referenced trademark registrations long before Respondent registered the Disputed Domain Name on July 20, 2010.
Complainant further contends that the Disputed Domain Name is identical to, and confusingly similar with, Complainant’s well-known P90X mark because the Disputed Domain Name incorporates the entirety of Complainant’s mark, displaying the identical characters in the exact same chronological order as found in Complainant’s mark.
Complainant asserts that Respondent is not affiliated with Complainant, and contends there is no evidence to suggest that Respondent has registered the Disputed Domain Name either to advance legitimate interests or in connection with a bona fide offering of legitimate goods or services. Complainant contends that Respondent was initially using the Disputed Domain Name in connection with a website that provided links to a host of websites offering goods and services directly overlapping with and/or competing with those offered by Complainant under the P90X mark. Only after Complainant contacted Respondent to complain about the site’s illegal activities, was the site replaced with a large photo of a gun with the header “P-90 Experts.” Respondent apparently claimed that it registered the Disputed Domain Name for purposes of creating a website about the P90 rifle. After investigating Respondent’s claim, Complainant again contacted Respondent asserting that Respondent had no legitimate interest in the Disputed Domain Name, to which correspondence Respondent failed to respond. Specifically, Complainant contends that Respondent’s allegations of a legitimate interest in the Disputed Domain Name are disingenuous because the domain name was also available at the time Respondent registered the Disputed Domain Name. Complainant further contends that Respondent has not provided and cannot provide any legitimate basis for its registration of a domain name that solely incorporates Complainant’s P90X mark and that the totality of the evidence clearly demonstrates a wholly illegitimate purpose.
Finally, Complainant contends that Respondent registered and is using the Domain Name in bad faith. In particular, Complainant contends that, given Respondent’s registration of the Disputed Domain Name incorporating the entirety of Complainant’s P90X mark and given the availability of the domain name at the time Respondent registered the Disputed Domain Name, there can be little question that Respondent’s adoption, registration, and use of the Disputed Domain Name is and was in bad faith. Complainant contends that Respondent has attempted to take commercial advantage of Complainant’s mark and reputation and has attempted to trade off of Complainant’s goodwill. In particular, Complainant contends that Respondent’s registration and use of the Disputed Domain Name was and is to attract consumers to Respondent’s website for Respondent’s commercial gain by creating a likelihood of confusion as to source, affiliation, and/or sponsorship with Complainant. Furthermore, Complainant contends, upon information and belief, that Respondent owns over 600 domain names. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the Disputed Domain Name under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following elements:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding based on Complainant’s undisputed allegations for which there are support, pursuant to the Rules, paragraphs 5(e), 14(a), and 15(a), and draw such inferences it considers appropriate, pursuant to the Rules, paragraph 14(b). A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Name is identical and confusingly similar to Complainant’s P90X trademark. Complainant has demonstrated that it owns rights in the trademark P90X. When comparing the Disputed Domain Name with the mark in which Complainant has rights, it is well established under the Policy that the top-level domain, i.e., in this case, the ccTLD “.co,” should not be considered. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (stating that “the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”). Accordingly, the Disputed Domain Name consists of Complainant’s P90X mark in its entirety, without any additional matter. Therefore, the Panel finds that the Disputed Domain Name is identical and confusingly similar to Complainant’s P90X mark. See 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 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”).
For these reasons, the Panel concludes that the Disputed Domain Name is identical and confusingly similar to the P90X mark, a trademark in which Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or legitimate interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of production passes to the respondent to show that it does indeed have such a right or legitimate interest. See, e.g., Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name. For the reasons that follow, the Panel finds that Complainant has made a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case.
Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. In fact, Complainant has provided evidence that, at the time Complainant first contacted Respondent regarding this matter, Respondent was using the Disputed Domain Name to re-direct Internet users to other websites offering goods and services that directly overlapped with and/or competed with Complainant’s goods and services. Respondent’s use of the Disputed Domain Name to provide links to goods and services that are related to those of Complainant does not constitute a bona fide offering of goods or services. See, e.g., St. Baldrick’s Foundation Inc. v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0705 (stating that prior panels “have decided that the use of confusingly similar domain names in connection with a ‘click-through’ scheme does not serve to establish a bona fide offering of goods or services”).
Although Respondent is no longer using the Disputed Domain Name to re-direct users to other websites, Complainant has alleged that Respondent’s claim of a legitimate interest in the Disputed Domain Name is transparent and insincere. Respondent has not denied Complainant’s allegation. Given Respondent’s prior use of the Disputed Domain Name in connection with a website that offered goods and services directly overlapping and/or competing with Complainant’s, a use that stopped only after Respondent was contacted by Complainant, in the Panel’s view, Respondent’s current use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
The undisputed record indicates that Respondent registered the Disputed Domain Name 7 years after Complainant established rights in the P90X mark through use and more than 6 years after Complainant received its first United States registration for the mark. Given the record before the Panel, it is a reasonable inference that Respondent was aware of Complainant and Complainant’s business when Respondent registered the Disputed Domain Name and that Respondent deliberately incorporated Complainant’s P90X mark in the Disputed Domain Name with intent for commercial gain to misleadingly divert customers.
The Panel, especially in the absence of any response from Respondent, considers that the circumstances described in the Policy, paragraph 4(c), of proof of right or legitimate interest by Respondent in the Disputed Domain Name, are not likely to exist. For these reasons, in accordance with the Policy, paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product on Respondent’s web site or location.
Policy, paragraph 4(b).
As already mentioned, the Panel finds that it is likely that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name, which evidences bad faith on Respondent’s part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Indeed, Complainant has submitted evidence that the Disputed Domain Name originally resolved to an advertising portal with links to various third party fitness and weight loss goods and services. In other words, Respondent appears to have used the Disputed Domain Name in order to intentionally trade on the goodwill in the P90X mark and to attract traffic to other websites for commercial gain (pay-per-click revenue), which previous panels have concluded may support a finding of bad faith. See St. Baldrick’s Foundation Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0707 (“Prior panel decisions have consistently recognized that the registration of domain names which are then used to operate ‘click-through’ sites, can be considered to be evidence of bad faith.”).
In this case, in which Respondent failed to respond to the Complaint, the Panel finds that the totality of the circumstances supports the conclusion that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Panel concludes that the bad faith element of the Policy is satisfied. 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 Complainant.
Steven M. Auvil
Sole Panelist
Dated: January 25, 2011
Full & Egal Universal Law Academy