The Complainant is Product Partners, LLC of Beverly Hills, California, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Laksh Internet Solutions Private Limited of Mumbai, India. The initially named Respondent was Private Whois Escrow Domains Private Limited of Mumbai, India.
The disputed domain name <wwwbeachbody.com> (the “Domain Name”) is registered with Lead Networks Domains Pvt. Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2008. The Respondent named in the Complaint was Private Whois Escrow Domains Private Limited, of Mumbai, India. On September 2, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 5, 2008, the Registrar transmitted by email to the Center its verification response, disclosing the name of the Respondent as the registrant and providing contact information for the Domain Name (which differed from the named Respondent and contact information in the Complaint). The Center sent an email communication to the Complainant on September 5, 2008, 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 September 10, 2008, in which the Respondent was named as respondent. The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceeding commenced on September 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 8, 2008.
The Center appointed Warwick Smith as the sole panelist in this matter on October 17, 2008. 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.
As the Respondent did not submit any Response, the Panel has checked to ensure that the Center has discharged its obligation to notify the Complaint to the Respondent. The Panel notes that the courier pack containing the amended Complaint and Notice of Commencement of Administrative Proceeding appears to have been delivered on September 19, 2008. The Panel is therefore satisfied that the Respondent has had actual notice of the Complaint.
The following (uncontested) facts are taken from the Complaint.
The Complainant is a California-based corporation which carries on business in the field of in-home fitness and weight loss solutions. It is the registered proprietor of a number of registered trade marks in the United States of America, which consist of or contain the expression “Beachbody”. By way of example, the Complainant is the proprietor of the word mark BEACH BODY in the United States of America, registered with effect from March 17, 2000 in respect of “dietary supplements and diet aids, namely vitamins and mineral supplements”, in international class 5. The same registration covers “educational service, namely instruction in the use of exercise equipment and diet programs”, in international class 41. The printout from the United States Patent and Trade mark Office principal register, refers to a first use in commerce date of May 10, 1999.
The Complainant is also the proprietor of a United States Federal registration for the mark BEACHBODY.COM, in respect of “meal replacement protein bars, dietary supplements and diet aids, namely vitamins and mineral supplements” (in international class 5), “educational services, namely instruction in the fields of exercise equipment and diet programs” (in international class 41), and “pre-recorded videotapes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” (in international class 9). The application for this mark was filed on July 19, 2004, and it was registered on April 11, 2006.
The Complainant operates its flagship website at the domain name <beachbody.com>.
The Domain Name was registered on March 21, 2003. The Domain Name consists of what the Complainant refers to as a “link farm”, also referred to as a “landing page”, or a “portal site”.
The Complainant produced a copy of a page from the website at the Domain Name (“the Respondent's website”), printed on August 19, 2008. The Respondent's website on that date consisted of nothing more than a landing page and search engine facility, with links to third party websites grouped by categories under the heading “Related Searches”. All of the various click-on links under the “Related Searches” heading, related in one way or another to the topic of dieting and weight loss.
The Complainant's representatives sent a cease and desist letter to Moniker Privacy Services (which was presumably then the privacy shield provider used by the Respondent – that is not explained in the Complaint), on August 8, 2008. They referred to an earlier letter they had sent on July 25, 2008, to which they had received no reply. They referred to the Complainant's incontestable registration of the mark BEACHBODY in the United States of America, and noted that their client had recently learned of the unauthorized registration and use of the Domain Name. The Complainant's representatives demanded the immediate transfer of the Domain Name to the Complainant.
The Complainant contends:
1. The Domain Name is identical or confusingly similar to the Complainant's BEACHBODY marks. The only difference is the presence in the Domain Name of the non-distinctive prefix, “www”.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
(i) There is no evidence that the Respondent has used, or prepared to use, the Domain Name (or any name corresponding to the Domain Name), in connection with any bona fide offering of goods or services.
(ii) Because the Respondent anonymously registered the Domain Name, and has not provided any contact information whatsoever on the Respondent's website, the Respondent (whether as an individual, business, or other organization) cannot claim to have been commonly known by the Domain Name or any similar name.
(iii) The “link farm” at the Respondent's website does not constitute a bona fide offering of goods or services capable of giving rise to a right or legitimate interest in the Domain Name.
3. The Domain Name was registered and is being used in bad faith:
(i) The Respondent has attempted to take commercial advantage of the Complainant's trade mark and commercial reputation, and to trade off the Complainant's goodwill. The Respondent's use of the Domain Name is likely to give rise to confusion as to an association, affiliation, or sponsorship between the Complainant and the Respondent. The Domain Name is likely to attract Internet users seeking the Complainant's services.
(ii) The Respondent's use of the Domain Name has continued in bad faith, notwithstanding the Respondent's full knowledge of the Complainant's prior rights, and the Respondent has wilfully infringed those rights.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint.” Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate.
The Complainant has proved this part of its Complaint. It is the registered proprietor of the marks BEACH BODY, and BEACHBODY.COM. The only difference between those trade marks and the Domain Name, is the addition of the letters “www” at the beginning of the Domain Name. Those letters are non-distinctive, and clearly designed to create confusion with the Complainant's trade marks (for the reasons which are set out in section 6.D. of this decision).
The Panel is satisfied that the Domain Name is confusingly similar to the BEACH BODY and BEACHBODY.COM trade marks in which the Complainant has rights.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations 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; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that it does have a right or a legitimate interest in the Domain Name.
That approach is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Complainant has proved that the Domain Name is confusingly similar to trade marks in which it has rights. It has shown that it has not authorized the Respondent to use its trade marks (or any confusingly similar expressions), whether in a domain name or otherwise. There is nothing in the evidence to suggest that the Respondent might be entitled to claim a right or legitimate interest under paragraph 4(c)(ii) of the Policy (the “commonly known by” right or legitimate interest). In combination, those circumstances sufficiently establish a prima facie case, and the evidentiary onus shifts to the Respondent.
The Respondent has not filed any Response, and it has therefore failed to discharge that evidentiary onus. That default is enough for the Complainant to succeed on this part of its Complaint. The Panel notes, however, that it is difficult to imagine how the Respondent might conceivably have claimed any right or legitimate interest in respect of the Domain Name. For the reasons which are set out in section 6.D. of this decision, the Panel is satisfied that the Respondent registered and has used the Domain Name in bad faith. Bad faith registration and use are essentially inconsistent with use in connection with a bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), and with the concept of “legitimate noncommercial or fair use” (paragraph 4(c)(iii) of the Policy).
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 respondent's] website or location.
The Panel is in no doubt that the Respondent registered and has used the Domain Name for the bad faith purpose described at paragraph 4(b)(iv) of the Policy. The Panel has reached that view for the following reasons.
1. The Complainant operates its flagship website at the domain name <beachbody.com>. It is inconceivable that anyone would have registered a domain name “[wwwdomainname].com”, without first turning his or her mind to the question of who owned the domain name “[domainname].com”. The fact that the Respondent's website also features links to websites offering goods or services of competitors of the Complainant, leaves little room for doubt that the Respondent was aware of the Complainant and its website at “www.beachbody.com”, when the Domain Name was registered.
2. Registering a domain name commencing with the expression “www” (the abbreviation for “worldwide web” which is used as a prefix in all website addresses), is a well known cybersquatter's stratagem. It is typically designed to create confusion between the “www….” domain name and the (otherwise identical) domain name which does not have those three letters at the beginning, thereby attracting increased Internet traffic to the cybersquatter's website and providing additional profit for the cybersquatter. See for example the Panel decision in Trustmark National Bank v. Henry Tsung, WIPO Case No. D2004-0274, where the Panel referred with approval to the case of Pfizer, Inc. v. Seocho and Vladimir Snezko, WIPO Case No. D2001-1199 (a case which was concerned with the domain name <wwwpfizer.com>). In the Pfizer case, the Panel held that the disputed domain name was identical or confusingly similar to the marks owned by the complainant, “the only difference being that www has been inserted in front of the PFIZER mark, a practice known as typo or typosquatting, for the purpose of exploiting users' typographical mistakes when seeking Complainant's site, namely those users who erroneously omit the period between www and Pfizer.”
3. The Respondent's failure to provide any contact details other than those of a privacy shield service, is consistent with the Panel's overall impression of bad faith registration and use, as is the Respondent's failure to file any Response in this proceeding.
4. Having regard to the foregoing, the Panel is satisfied that the Domain Name was registered and has been used for the bad faith purpose described in paragraph 4(b)(iv) of the Policy. The Respondent has deliberately selected a domain name which is almost identical to the Complainant's mark, for the bad faith purpose of creating confusion in an attempt to attract additional Internet traffic to the Respondent's website, thereby trading off the Complainant's goodwill in its marks.
The Complainant having proved each element of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwbeachbody.com> be transferred to the Complainant.
Dated: October 31, 2008