The Complainant is Product Partners, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America / Naiyang Ren of Shanghai, China.
The disputed domain name <power90xonsale.com> is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2010. On April 23, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 23, 2010, the Registrar transmitted by email to the Center its verification response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 27, 2010, 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 April 29, 2010. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 25, 2010.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on June 1, 2010. 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.
The Complainant in this administrative proceeding is Product Partners LLC (“Product Partners”). Product Partners operates in the field of in-home fitness and weight loss solutions and two of its product lines are the “Power90” and “P90X” fitness videos and kits.
The Complainant is the proprietor of a number of United States registered trade and service marks for the word mark POWER90 (registration numbers 3,435,680; 2,630,688; and 2,594,003), the earliest of which was registered on July 16, 2001. The Complainant submits that it has used the POWER90 mark in commerce since at least August 1, 2000.
The Complainant is also the proprietor of a number of United States registered trade and service marks for the work mark and P90X (registration numbers 2,869,491; 8,869,491; 2,843,063; 2,973,356; 3,669,400; and 3,444,723), the earliest of which was registered on May 18, 2004. The Complainant submits that it has used the P90X mark in commerce since at least February 18, 2003.
The disputed domain name was registered on April 2, 2010. The registration and use of the Complainant's POWER90 and P90X trade and service marks therefore pre-date the Respondent's registration of the disputed domain name.
The Complainant submits that the disputed domain name <power90xonsale.com> is confusingly similar to its registered trade and service marks for POWER90 and P90X.
The Complainant submits that the disputed domain name incorporates all of the characters of its POWER90 mark in the identical order to its registration. Further, the Complainant submits that the “90X” element of the disputed domain name is confusingly similar to its P90X registration.
The Complainant submits that the disputed domain name is directed to a website which offers for sale counterfeit versions of its exercise DVD products at prices which are significantly lower than the retail prices of its legitimate goods. The Complainant submits that this use does not amount to a bona fide offering of legitimate goods or services. Further, as the Respondent has not provided any contact information on the website located at the disputed domain name or otherwise identified itself thereon, the Complainant submits the Respondent cannot have been commonly known by the disputed domain name or any similar name.
The Complainant therefore submits that the Respondent does not have any right or legitimate interest in the disputed domain name.
The Complainant submits that the Respondent has taken commercial advantage of its trade and service marks and commercial reputation and has sought to trade off the goodwill which it has generated in its marks. The Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to is website by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of its website and/or the products listed on its website which demonstrates that the disputed domain name was registered and has been used in bad faith. In particular, the Complainant relies on the fact that the products offered by the Respondent from the website to which the disputed domain name directs Internet users are counterfeit versions of the Complainant's P90X DVDs.
The Respondent has not offered any reply to the Complainant's contentions.
For the Complainant to prevail in this administrative proceeding, it must establish each of the following elements of paragraph 4(a) of the Policy:
(i) The Respondent's disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The Respondent's disputed domain name has been registered and is being used in bad faith.
Paragraph 5(e) of the Rules provides that if the Respondent fails to submit a Response (as in this case), in the absence of exceptional circumstances the Panel shall decide the dispute based upon the Complaint.
This Panel is satisfied that the Complainant has shown that the disputed domain name is confusingly similar to its POWER90 registered trade and service marks and has thus satisfied this requirement of paragraph 4 (a)(i) of the Policy.
The Complainant has established that it is the registered proprietor of a number of United States registered trade and service marks for the word marks POWER90 and P90X. The Policy does not require that the Complainant has rights in a trade or service mark in the country which the Respondent is domiciled (or any other country in particular) and so each of these registrations is relevant for the assessment under paragraph 4(a)(i) of the Policy.
It is well established that the ‘.com' suffix is irrelevant for the purposes of the determining whether a disputed domain name is identical or confusingly similar to a trade mark or service mark in which a Complainant has rights under Paragraph 4(a)(i) of the Policy (see Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499).
The disputed domain name incorporates the entirety of the Complainant's POWER90 word mark with the addition of the “xonsale.com” suffix. The Panel considers the Complainant's POWER90 mark to be a distinctive mark, in that the word has no obvious literal meaning or particular connection to the goods and services for which it is registered. The Panel considers the ‘onsale' element of the disputed domain name to be a merely generic suffix which does not change the overall impression that that domain name is one which is connected to the Complainant. This part of the disputed domain name may therefore be ignored for the purposes of the analysis under paragraph 4(a)(i) of the Policy (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). Similarly, the Panel does not consider that the additional “x” element of the disputed domain name is sufficient to change the overall impression that the disputed domain is one which is connected to the Complainant and thus it is confusingly similar to the Complainant's POWER90 trade and service marks.
The Panel is not persuaded by the Complainant's submission that the disputed domain name is confusingly similar to its P90X mark but, as the Panel has found that the disputed domain name is confusingly similar to the Complainant's POWER90 marks, this finding requires no further exploration.
The Complainant has established in its submissions and in the evidence in support thereof a prima facie case that the Respondent does not have a right or legitimate interest in disputed domain name as follows:
1) the disputed domain name has been used by the Respondent to direct internet users to a website which offers counterfeit versions of the Complainant's P90X products and, as such, has not been used in connection with a bona fide offering of goods and services; and
2) there is no evidence to suggest that the Respondent has at any time been known or made any attempt to be known by the disputed domain name.
In these circumstances, the evidential burden moves to the Respondent to show that it does have some right or legitimate interest in the disputed domain name (see Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074).
The Respondent has failed to make any submissions to the contrary and, accordingly, the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy.
As noted earlier in the decision, the Panel finds that the disputed domain name is confusingly similar to Complainant's POWER90 trade and service marks. In addition, the Complainant has adduced evidence that the Respondent's website hosted at the disputed domain name offers for sale counterfeit versions of its P90X products (for which it also has a number of trade and service mark registrations). In the absence of any response from the Respondent to these assertions, the Panel has no choice but to find that the Respondent has registered and used the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of that web site or of a product or service on that web site.
As found in Pandora Jewelry, LLC v. WhoisGuard/ dsgdsfg, dfgdsfg, WIPO Case No. D2009-1093 (to which the Claimant has referred in its submissions); the Respondent's conduct in offering counterfeit versions of the Complainant's P90X products from the disputed domain name is, in the circumstances, an example of conduct of egregious bad faith.
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 <power90xonsale.com> be transferred to the Complainant.
Charters Macdonald-Brown
Sole Panelist
Dated: June 15, 2010