WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. PrivacyProtect.org / COMDOT INTERNET SERVICES PRIVATE LIMITED., PX90 Fashions
Case No. D2011-0609
1. The Parties
The Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O’Connor, United States of America.
The Respondent is PrivacyProtect.org / COMDOT INTERNET SERVICES PRIVATE LIMITED., PX90 Fashions of Munsbach, Luxembourg, and of Mumbai, India, respectively, internally represented.
2. The Domain Name and Registrar
The disputed domain name <px90.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2011 for the domain names <px90.com> and <wp90x.com>. On April 6, 2011, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and Tirupati Domains and Hosting Pvt Ltd. a request for registrar verification in connection with the two domain names. On April 8, 2011 and April 18, 2011, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and Tirupati Domains and Hosting Pvt Ltd. respectively transmitted by email to the Center their verification responses, disclosing a different entity as the registrant for each domain name and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 2011, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Center also sent another email communication on the same date, notifying that the Complaint was administratively deficient. In response, the Complainant filed an amended Complaint on April 20, 2011, among other things, removing the domain name <wp90x.com> from the original Complaint.
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 for the disputed domain name <px90.com> only, and the proceedings commenced on April 26, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2011.
On May 19, 2011, the Complainant submitted a Supplemental Filing and forwarded to the Center the Response and attachments it had received on May 16, 2011. On May 20, 2011, the Respondent also transmitted its Response and attachments to the Center, indicating that it had omitted the Center’s email address for its timely submission of Response. On May 23, 2011, the Respondent submitted a Supplemental Filing in response to the Complainant’s Supplemental Filing.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 25, 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. Supplemental Fillings
The Panel shall determine as a preliminary matter whether the both parties’ unsolicited supplemental fillings should be considered.
No provision in the Policy, the Rules or the Supplemental Rules authorizes the filing of extra submissions by either party to the administrative proceeding without the Panel’s request, and unsolicited supplemental filings tend to be accepted only where there is some exceptional basis for their filing and admission after the primary single round of pleadings.
In the present case, the additional documents appear to present no compelling new evidence but rather to consist merely of additional arguments that for the most part could have been advanced at first instance, and thus the Panel finds no compelling justification for their filling. Accordingly, the Supplemental Fillings will not be considered by the Panel in reaching its decision.
5. Factual Background
The Complainant is a company in the field of in-home health, wellness, weight loss and fitness solutions. One of the Complainant’s products is P90X-branded fitness DVD and kit.
Also, the Complainant filed for and obtained trademark registrations for “P90X” in the United States of America and under the Madrid Agreement and Protocol (Annexes D to J to the Complaint), referring to first use in 2003.
The Respondent sells men and ladies clothing and accessories in India. The Respondent uses the expression “PX90” as part of its commercial name and is registered with the Municipal Corporation of Greater Mumbai, India, since 1993 (exhibit A to the Response).
The disputed domain name was registered on October 28, 2004.
The Panel tried to access the disputed domain name on June 8, 2011, but it did not link to any website.
6. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the Complainant’s well-known and successful trademark P90X. The Complainant has protected its P90X brand by obtaining trademark registrations in various jurisdictions throughout the world. The Respondent registered the disputed domain name with full knowledge of the Complainant’s pre-existing rights. The disputed domain name incorporates the entirety of the Complainant’s trademark but reverses the “x” and the “90”. The reversal of both particles does not distinguish the disputed domain name from the Complainant’s mark, and rather increases the likely consumer confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant. There is no evidence that the Respondent has registered the disputed domain name to advance legitimate or bona fide offering of goods and services. The disputed domain name redirects users to the “www.p90x.com” website, that currently displays several links to divert Internet users to websites that offer potentially counterfeit versions of the Complainant’s products and deceive consumers into falsely believing that there is an association, affiliation or sponsorship relationship between the Respondent and the Complainant. The Respondent’s use of the disputed domain name evidences the Respondent’s illegitimate purpose.
(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name has been and is being used to advertise and offer for sale potentially counterfeit versions of the Complainant’s products, which deceives consumers to falsely believing there is a connection between the disputed domain name and the Complainant. The Respondent has attempted to take commercial advantage of the Complainant’s trademarks and commercial reputation. The Respondent has also registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
The Panel admits the Respondent’s Response, which was timely sent to the Complainant and forwarded to the Center later on. In fact, the Complainant’s arguments were contested during the period required by the Policy. The Panel finds the mere mistake of not including the Center as a recipient of the message containing the Response is in the current circumstances not enough to preclude the examination of the grounds presented directly to the Complainant.
The Respondent denies each and every allegation, submission and contentions in the Complaint and makes the following contentions:
(i) The Respondent is in the business of men and ladies clothing and accessories since 1993, which record was registered before the Municipal Corporation of Greater Mumbai under the Bombay Shops and Establishment Act of 1948;
(ii) The Respondent was not aware of the popularity of the Complainant or its trademarks;
(iii) The domain name is clearly distinct from the Complainant’s trademarks;
(iv) The Respondent’s company is known as PX90 Fashions, from which derived the disputed domain name, so that the Respondent has rights and legitimate interest in the <px90.com> domain name;
(v) The Respondent has not made any profit from the disputed domain name and its website is not ready yet. Hence there is no bad faith use of the disputed domain name;
(vi) The Complaint is not entitled to any relief as the Complainant has failed to prove each of the three elements laid down in the Policy.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Annexes D to J to the Complaint demonstrate registrations of the P90X trademark in the United States of America and under the Madrid Agreement and Protocol.
The trademark P90X is not per se encompassed within the disputed domain name, which rather consists of the somewhat different expression “px90”.
However, considering the peculiar use of the same letters and numbers, changing just the position of the character “x”, the Panel believes that the disputed domain name could potentially be confused with the Complainant’s trademark. Numerous panels in the past have found similarity in the act of adding, deleting, substituting or even reversing the order of letters in a mark. See: Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317; America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495; Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362, etc.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
The Panel concludes that the Respondent has proven the legitimate interest referred on the item (ii) above.
Exhibit A to the Response shows that the Respondent has been commercially identified by the domain name (PX90) since 1993. Exhibits B to E to the Response also prove that the domain name is still being used to designate the store operated by the Respondent in Mumbai, India.
The simultaneous use of the additional word “Fashions” on the Respondent’s commercial name and store (“PX 90 Fashions”) does not change this conclusion, mainly considering that the term “PX 90” is the distinctive and core part of this expression.
Consequently, the Panel finds the Complainant has failed in these proceedings to prove the requisite second element of the Policy.
C. Registered and Used in Bad Faith
Considering that the second element of the Policy was not satisfied by the Complainant, it is not necessary to analyze the third requirement.
For all the foregoing reasons, the Complaint is denied.
Dated: June 8, 2011