WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. A & L, Ran Hill
Case No. D2010-2060
1. The Parties
The Complainant is Beachbody, LLC of California, United States of America represented by Cozen O'Connor, United States of America.
The Respondent is A & L, Ran Hill of London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <p90xclub.com>, <p90xclubs.com> and <p90x13dvd.com> are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2010. On November 30, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On November 30, 2010, eNom. 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 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 December 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2010.
The Center appointed William Van Caenegem as the sole panelist in this matter on January 10, 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 January 25, 2011 the Panel issued Administrative Panel Order No 1, noting that the Complaint was premised on the Complainant Beachbody LLC’s ownership of the registered trade mark P90X and variants, but that the owner of the relevant marks as indicated by the registration certificates provided by the Complainant was Product Partners LLC. The Panel granted the Complainant an opportunity to elucidate and prove the relationship between the Complainant and the owner of the registered trade marks at issue.
In response the Complainant forwarded confirmation to the Center that the United States Patent and Trademark Office recorded the change of name from Product Partners, LLC to Beachbody, LLC for all the US registrations on which the Complaint relied ( i.e.: 2,869,491 - P90X; 2,869,490 - P90X; 2,843,063 - P90X; 2,973,356 - P90X & Design; 3,669,400 - P90X & Design). In addition the Complainant attached confirmation that WIPO has recorded the change of name from Product Partners, LLC to Beachbody, LLC for the International Registration WIPO 974,040 - P90X.
The Respondent did not file arguments in response to the further evidence provided by the Complainant.
4. Factual Background
The Complainant relies on US Reg No 2,869,491 for the P90X word mark in International Class 55, registrered on August 3, 2004; US Reg No 2,869,490 for P90X and Design Mark registered on August 3, 2004 in International Class 5; US Reg No 2,843,063 for the P90X word mark in International Classes 41 and 44, registered on May 18, 2004; US Reg No 2,973,356 for P90X and Design mark in International Class 41, registered on July 19, 2005; US Reg No 3,669,400 for P90X and Design Mark in International Class 9, registered on August 18, 2009; US Reg No 3,444,723 for the P90X word mark in International Class 9, registered on June 10, 2008; and International Reg No 974040 for the P90X word mark in International Class 9, registered on July 25, 2008.
The disputed domain names were registered by the Respondent on the following dates: <p90xclub.com>, March 29, 2010; <p90xclubs.com>, May 29, 2010 ; <and p90x13dvd.com>, June 24, 2010.
5. Parties’ Contentions
The Complainant asserts that it is a leader in the field of in-home health, wellness, weight loss and fitness solutions since 1998. It produces and distributes the Beachbody weight loss products and services which include its P90X branded DVD’s and kits. The Complainant asserts that its marketing and promotional efforts, including advertising and promotion through websites, print, in-person and televised promotional appearances by its fitness trainers, and infomercials, have resulted in the great success of its P90X branded kits and products and services. The Complainant has also protected its P90X mark by the filing and obtaining of trade mark registrations as enumerated above.
The Complainant asserts that it sold its P90X branded goods and services and registered its relevant trade marks long before the Respondent registered the disputed domain names. The Complainant asserts that given its extensive and exclusive rights in the relevant trade marks the Respondent must have purchased the disputed domain names with full knowledge and intent to trade off the Complainant’s pre-existing rights.
The Complainant asserts that the disputed domain names incorporate its trade mark P90X in its entirety, displaying the exact same characters in the same order. The Complainant asserts that the dominant part of the disputed domain name is identical to its trade mark, and that the disputed domain names and the Complainant’s trade mark are nearly identical and confusingly similar.
The Complainant asserts that there is no evidence to suggest that the Respondent has registered the disputed domain names to advance legitimate interests or for the bona fide purpose of offering legitimate goods or services. The Complainant asserts that the Respondent was advertising, offering and selling counterfeit copies of the Complainant’s P90X branded DVD’s at the associated websites. The Complainant asserts that this is evidence of the Respondent’s wholly illegitimate purpose.
The Complainant asserts that given that the Respondent advertises, offers and sells counterfeit DVD’s from the relevant websites, there can be little question that the Respondent adopted and used the disputed domain names in bad faith. The Complainant asserts that the Respondent has registered the disputed domain names, first, in an attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the website; and secondly, primarily for the purpose of disrupting the business of a competitor, both of which are circumstances of bad faith registration pursuant to the Policy.
Further the Respondent ignored the Complainant’s letter notifying it of the Complainant’s rights and requesting transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The registered trade mark on which the Complainant relies is P90X. The Complainant has established its ownership of the relevant trade marks in response to Administrative Panel Order No 1.
The disputed domain names <p90xclub.com>; <p90xclubs.com>; and <p90x13dvd.com> are not identical to the registered trade mark of the Complainant.
However, each of the disputed domain names incorporates the relevant trade mark in its entirety, and as the first and most prominent part of each of the domain names. The relevant trade mark is entirely distinctive and without inherent meaning. Further, the additional parts “club”, “clubs” and “13dvd” are generic terms that together with the relevant trade mark form a totality with no inherent or different meaning. Nor do any of the additions detract from the suggestion that there is a connection between the registered domain name and the P90X trade mark or so branded goods or services. Rather the suggestion inherent in the disputed domain names is of an organization or provider connected with the owner of the P90X trade mark.
Numerous Panels have held that the addition of generic terms which do not result in a combination with a different and distinct meaning is confusingly similar to a registered trade mark which is wholly incorporated in the disputed domain name.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s registered trade mark.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent offered counterfeit DVD’s branded with its trade mark from the websites to which the disputed domain names resolved. The Complainant attaches screen shots dated August 26, 2010 to its Complaint that are consistent with this assertion, in that DVD box sets are pictured displaying the relevant trade mark, which also repeatedly appears elsewhere in the website contents. Exhortations and means to acquire the box sets are displayed. The Center encountered connection failures when attempting to access the relevant domain names on December 2, 2010. The Respondent did not file any response to the Complaint.
In the result there is nothing before the Panel to indicate that legitimate goods or services are or were offered from the relevant websites. The Respondent has not established that it is known under the relevant trade mark, or has used it legitimately or in connection with a legitimate business. The use of domain names for the purpose of attracting consumers to a website where unauthorized trade marked goods are offered for sale can not give rise to legitimate rights or interests in the registrant of those domain names.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names were all registered within a relatively short time period by the same Respondent. Each included the distinctive trade mark of the Complainant in its entirety and as its most prominent part, with a generic addition. There is no inherent significant attaching to the sequence P90X. When viewed as a whole, the disputed domain names suggest a deliberate adoption of a known trade mark in which the Respondent has no apparent rights, coupled with generic terms which further suggest a connection with the Complainant.
As of August 26, 2010, each of the websites to which the domain names resolved offered DVD’s for sale which the Complainant asserts were not its authorized trademarked products. Each product prominently displayed the Complainant’s trade mark in various ways. The Complainant’s trade mark also appeared on the websites in question in various ways, none of which were authorized uses of the mark.
The material before the Panel suggests a deliberate and concerted effort on the part of the Respondent to adopt the domain names incorporating the Complainant’s trade mark with the intention of establishing websites that relied on the false suggestion of a connection with the Complainant to mislead consumers into purchasing unauthorized trademarked products on line.
Therefore the Panel holds that the Respondent registered and used the disputed domain names in 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 names <p90xclub.com>; <p90xclubs.com>; and <p90x13dvd.com> be transferred to the Complainant.
William Van Caenegem
Dated: February 9, 2010