The Complainant is Beachbody, LLC of California, United States of America represented by Cozen O'Connor, United States of America.
The Respondent is Gregg Gillies of New Jersey, United States of America.
The disputed domain name <p90xworkoutschedule.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2011. On February 24, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On February 24, 2011, eNom transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 28, 2011.
The Center verified that the Complaint together with the amendment to 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 the Respondent of the Complaint, and the proceedings commenced on March 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 21, 2011. The Respondent submitted an email communication to the Center on March 20, 2011.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on March 28, 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.
On April 5, 2011, the Panel issued Panel Order No. 1 regarding the strength of Complainant’s mark as well as its allegations of bad faith use by the Respondent. On April 8, 2011, Complainant submitted a Response to said Panel Order No.1 together with supporting materials. On April 11, 2011, the Panel issued Panel Order No. 2 requesting further clarification of Complainant’s allegations of bad faith use of the disputed domain name by the Respondent. On April 12, 2011, Complainant submitted a Response to said Panel Order No. 2.
The disputed domain name <p90xworkoutschedule.com> (the "Disputed Domain Name"), was registered in the name of Gregg Gillies on June 11, 2009.
The Complaint states that is the owner of the following United States trademark registrations:
United States Reg. No. 2,869,491 for the mark P90X and Design in International Class 5 for "nutritional and dietary supplements", registered on August 3, 2004, and used by Complainant in connection with these products as early of July 21, 2003 (Annex D to the Complaint).
United States Reg. No. 2,869,490 for the mark P90X in International Class 5 for "meal replacement bars, nutritional and dietary supplements" registered on August 3, 2004, and used by Complainant in connection with these products as early as July 21, 2005 (Annex E to the Complaint).
United States Reg. No. 2,843,063 for the mark P90X in International Class 41 for "educational services, namely physical fitness instruction", registered on May 18, 2004, and used by Complainant in connection with these services as early as May 18, 2004, and in International Class 44 for "dietary instruction, namely nutritional fitness counseling services", registered on May 18, 2004, and used by Complainant in connection with these services as early as February 18, 2003 (Annex F to the Complaint).
United States Reg. No. 2,993,356 for the mark P90X and Design in International Class 41 for "educational services, namely instruction in the use of exercise equipment and diet programs", registered on July 19, 2005 and used by Complainant in connection with these services as early as July, 2003 (Annex G to the Complaint).
United States Reg, No. 3,669,400 for the mark P90X and Design in International Class 9 for "pre-recorded video tapes, cassettes, DVD's and CD's featuring exercise, fitness and dietary information and instruction," registered on August 18, 2009 and used by Complainant as early as June 21, 2003 (Annex H to the Complaint).
United States Reg. No. 3,444,723 for the mark PX90 in International Class 9 for " pre-recorded video tapes, cassettes. DVD's and CD's featuring exercise, fitness and dietary information and instruction," registered in June 10, 2008, and used by Complainant as early as February 18, 2003 (Annex I to the Complaint).
While the initial owner of these United States registrations is listed as Product Partners LLC., an inspection of these registrations on the database of the United States Patent and Trademark Office indicates that the Complainant is listed as the current owner of these registrations by virtue of assignment.
International Reg. No. 974040 for the mark P90X in International Class 9 for "pre-recorded video tapes, cassettes. DVD's, and CD's, featuring exercise, fitness and dietary information and instruction”, registered on July 25, 2008 (Annex J to the Complaint).
While the initial owner of this International Registration is listed as Product Partners LLC., in inspection of this registration on the database of the World Intellectual Property Organization for the Madrid System for the International Registration of Marks indicates that the Complainant is listed as the last owner of this registrations by virtue of assignment.
These registrations are individually and collectively referred to as the "Mark."
The Complainant has been a leader in the field of in-home health, wellness, weight loss and fitness solutions since 1998. Among its products and services, the Complainant has marketed and sold DVD products, kits and products and services under the brand P90X since 2003 (hereinafter: the Mark). These various products and services have been advertised and sold under the Mark through a variety of channels, including the Complainant's website, print advertising, Internet-based advertising, in-person and televised promotional appearances by trainers and by infomercials. Products and services sold under the Mark have also enjoyed extensive word-of-mouth promotion by satisfied users.
In particular, the P90X is one of the Complainant's most popular home exercise kits, consisting of 13 DVD’s,
providing a 90-day workout routine that features a technique called "muscle confusion," which prevents exercise from reaching a plateau by varying exercises over days and weeks. In 2010 alone, the Complainant has expended "many, many millions in advertising dollars". In that year, the Complainant generated over USD100 million dollars through the sale of over one million units products bearing the Mark. Complainant notes that since it is a privately held company, the exact figures are confidential. (The Panel has not requested that these figures be disclosed.)
Based on the foregoing, the Mark has come to enjoy valuable goodwill and reputation among consumers and members of the public at large.
The Complainant states that "the Respondent was and is using the Disputed Domain Name and website in connection with the advertising and promotion of an e-book entitled "The Truth About Six Pack Abs." No evidence (e.g., screenshots) of this use has been submitted in the present record or in response to the Panel Orders. In so doing, Respondent seeks to attract customers to its site based on their familiarity with the Mark and to take advantage of the reputation and goodwill therein.
Complainant alleges the following:
1. The Disputed Domain Name is confusing similar to the Mark.
2. Respondent has no rights or legitimate interests in the Disputed Domain Name.
3. The Disputed Domain Name was registered and has been used in bad faith.
In a brief response, Respondent states that the mere use of a trademark as part of a domain name does not constitute 'a trademark violation. Respondent contends further as follows: “There is no confusion or misrepresentation on the site as to whether it’s the original p90x site or owned by Beach Body, LLC. It clearly gives a review of the product (p90x), which I own, and in fact, even gives a positive review, so I clearly not trying to harm Beach Body or alter sales of p90x in a negative way. I use the site to share my experiences with p90x and to specifically talk about its workout schedule. I don’t pretend to be an official site, nor do I try and confuse anyone about that fact.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that Disputed Domain Name should be cancelled or transferred.
(i) The Disputed Domain Name is identical or is 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.
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
Based on the foregoing contentions by the parties, the Panel rules with respect to each of these three elements as follows:
The Complainant is the owner of a number of United States trademark registrations, each of which is comprised of the alphanumeric P90X, either solely or in combination with a design element. The registration date for each of these Marks predates the registration date of the Disputed Domain Name, being June 11, 2009. Respondent, in its response, in effect gives recognition to the rights of Complainant, referring to P90X as a "trademarked name."
It is well-established that in comparing the Mark with a disputed domain name, the top level domain, “.com” should be ignored. See, e.g., Hoffmann-LaRoche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456.
The Disputed Domain Name, while not identical to the Mark, differing by the addition of the formative “workoutschedule” as part of the Disputed Domain Name, is confusingly similar to the Mark within the meaning of paragraph 4(a)(i) of the Policy. In comparing a mark and a domain name, special attention should be paid to the dominant part of the disputed domain name (as well as the trademark). This is especially so when the first part of the Disputed Domain Name is identical to the Mark. As stated by the panel in Dr. Ing. h.c.F. Porsche AG v. Vasili Terkin, WIPO Case No. D2003-0888, “a domain name that wholly incorporates a complainants' registered mark may be sufficient to establish confusingly similarity for purposes of the UDRP”.
That is the situation when, as here, generic or highly descriptive term is added to a mark or name in which the complainant has rights. Such addition of a generic or highly descriptive term does not serve to distinguish between the mark of the complainant and the disputed domain name. As noted in the case of Dr. Ing. H.c.F. Porsche AG, supra, “[t]he fact that the word “auto parts” is added to the Complainants' trademark does not eliminate the identity, or at least the similarity, between Complainants' trademark and the disputed name, as “auto parts” is a descriptive component of the disputed domain name”. Similarly, in the instant case, the addition of the descriptive component "workoutschedule" does not eliminate the similarity between the Mark and the Disputed Domain Name.
For all of the foregoing reasons, the Panel finds that the Disputed Domain Name is confusingly similar to the Mark.
The Panel refers to the suggested grounds set out in paragraph 4(c) of the Policy. Under those grounds, there is no evidence that Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof, or that it has any right in the Mark on an unregistered basis. The name of the Respondent bears no resemblance to the Disputed Domain Name nor is there any basis to conclude that the Respondent is or has ever been known by it. There is no evidence that Complainant has entered into any agreement, authorization, license or transfer with Respondent with respect to the use of the Mark.
The Respondent appears to claim that it has a right or legitimate interest in the Disputed Domain Name by virtue of the fact that the Respondent is making legitimate noncommercial fair use of the Disputed Domain Name without intent for commercial gain by misleadingly diverting customers. However, the Respondent does not provide sufficient evidence and information to enable the Panel to reach a decision on this point. In light of this, the Panel prefers to consider this claim within the context of its discussion in ( C ) below regarding whether the Respondent has registered and used the Mark in bad faith.
Paragraph 4(b) of the Policy sets out a non exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:
(i) Circumstances indicate that the Respondent has registered the Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark 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 Domain Name.
(ii) The Domain Name has been registered to prevent the Complainant from reflecting its Marks in a corresponding domain name.
(iii) The Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks 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 heart of the Complainant's claim in these proceedings is that, under paragraph 4(b)(iv) of the Policy, the Respondent is using the Disputed Domain Name to draw people to its site for the purpose of the promoting the e-book "Truth About Six Pack Abs." However, the Complainant has not provided any explicit evidentiary support for this claim, other than to refer generally to Respondent's website accessible through the Disputed Domain Name. The Complaint does not set out where on the website the Respondent has been promoting the e-book “Truth About Six Pack Abs.” Review by the Panel of the exhibits and other materials provided by the Complainant in the Complaint did not disclose any explicit reference to the promotion and sale of the e-book "Truth About Six Pack Abs."
The Panel issued Administrative Panel Procedural Order No. 2, which explicitly requested the Complainant to provide information about the allegations with respect to the "Truth About Six Pack Abs." In the Response, Complainant effectively restated the position set out in the Complaint, but once again failed to provide any explicit reference to the website, or to any other documentary materials in support of its claim of bad faith under subparagraph 4(b)(iv) of the Policy with respect to the e-book "Truth About Six Pack Abs."
The Panel does not find any other basis in the Complaint for a claim of bad faith under this paragraph.
The Panel takes note of the fact that the website at the Disputed Domain Name includes the following disclaimer: “This site is no way associated with Beach Body LLC or the P90X program. It’s designed to give you information on the program so you can decide whether or not to purchase it.” This disclaimer is in the same font and size of most the other text on the website and it in no way is highlighted. Moreover, it does not appear on the first page of the website, but rather in an inside page.
Taken by itself, the inclusion of the disclaimer by Respondent might not be effective on its own to refute the Complainant’s allegation that Respondent has acted and used the Mark in bad faith. As observed by the Panel in the case of U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511.
"[G]iven the disclaimer's low prominence, it easy to imagine that confusion would be dispelled since many visitors might never read that far. …” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.5 (“What is the role of a disclaimer on the web page of a disputed domain name?”) states that, "[t]he existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors."
However, when there is a disclaimer on the Respondent’s website where there is a colorable argument of legitimate use, and the Complainant has provided no convincing evidence to support its claim of bad faith by the Respondent, such a disclaimer may serve to buttress Respondent’s claim that it has not acted in bad faith. The Panel finds that is the situation here. The Panel further takes note of a number of “Ads by Google” apparently present on the website, amidst Respondent’s described work-out schedule. However, even if these might in some way be indicative of use by the Respondent in bad faith, the Complainant has made no contention or submission whatsoever on this issue. As such, based on the record of the Complaint, the Panel does not find it sufficient to carry the balance in the Complainant’s favor.
Based on the foregoing, the Panel is of the view that the Complainant has not succeeded on the provided record in these proceedings in proving that the Respondent has not registered nor used the Disputed Domain Name in bad faith.
For all the foregoing reasons, the Complaint is denied.
Neil, J. Wilkof
Dated: April 21, 2011