WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. Guoshi Song a.k.a Song Guoshi

Case No. D2011-1166

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 Guoshi Song a.k.a Song Guoshi of Putian, Fujian, China.

2. The Domain Name and Registrar

The disputed domain name <p90xsale.com> is registered with HiChina Zhicheng Technology Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2011. On July 11, 2011, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain name. On July 12, 2011, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 12, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 July 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 7, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2011.

The Center appointed Yijun Tian as the sole panelist in this matter on August 15, 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. Factual Background

A. Complainant

The Complainant, Beachbody, LLC, is a company incorporated in Santa Monica, California, United States. The Complainant specializes in the field of in-home health, wellness, weight loss, and fitness solutions since 1998.

The Complainant is the registered owner of numerous trademarks consisting or including the wording P90X throughout the world. For example, numerous marks including the wording P90X have been registered as trademarks in the United States since 2004 (see Annexes D-I to the Complaint) and registered as an international trademark on July 25, 2008 (see Annex J to the Complaint).

B. Respondent

The disputed domain name <p90xsale.com> was registered on November 27, 2010.

5. Parties’ Contentions

A. Complainant

The disputed domain name is Identical or Confusingly Similar to a Trademark or Service Mark in Which the Complainant Has Rights

- The Complainant’s well-known P90X branded and INSANITY branded fitness DVDs, kits, and other products and services have achieved great success since their introduction in 2003.

- While the Complainant has gained significant common law trademark and other rights in its P90X mark, though its use, advertising and promotion. The Complainant has also protected its P90X mark by filing for and obtaining trademark registrations in various jurisdictions throughout the world, and has obtained an international registration.

- The Complainant used its trademark registrations long before the Respondent registered the disputed domain name on November 27, 2010.

- The Respondent purchased the disputed domain name with full knowledge, and the intent to trade off, of the Complainant’s pre-existing rights.

- The disputed domain name is nearly identical to, and confusingly similar with the Complainant’s well-known P90X mark.

The Respondent Has no Rights or Legitimate Interests in Respect of the Disputed Domain Names

- The Respondent is not affiliated with the Complainant, and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services.

- The Respondent was and is in actuality advertising, offering and selling counterfeit copies of the Complainant’s products at the website resolving from the disputed domain name including counterfeit versions of Complainant’s P90X and INSANITY branded DVDs and workout kits. (Annex K to the Complaint).

- The Respondent’s registration of the disputed domain name is not for any bona fide offering of goods or services.

- The Respondent has not registered the disputed domain name to advance a legitimate interest.

- The Respondent’s website at the disputed domain name uses the Complainant’s copyrighted product images, graphics and contents, and uses the same color background, logos and fonts as the Complainant’s official product website at “www.p90x.com”. (Annexes L and M to the Complaint)

- The Respondent also provides a Frequently Asked Questions (FAQ) section and a fake copyright notice to deceive consumers to mistakenly believe that “www.p90xsale.com” is a website that is legitimate and authorized by the Complainant to sell the Complainant’s well-known P90X branded products when it is not.

The Disputed Domain Name Has Been Registered and Are Being Used in Bad Faith

- The Respondent’s adoption and use of the disputed domain name is in bad faith.

- The Respondent has attempted to take commercial advantage of the Complainant’s trademark and commercial reputation and trade off the Complainant’s goodwill.

- The Respondent surely is aware that the Complainant operates a website that sells and promotes the P90X brand products at “www.p90x.com”, in which, the “p90x.com url” automatically redirects consumers interested in P90X branded products and services to the product pages at the Complainant’s flagship website located at “www.beachbody.com”.

- On February 11, 2011, the Complainant sent to the Respondent a letter in which it notified the Respondent of the Complainant’s rights and requested that the Respondent transfer the disputed domain name to the Complainant. The Respondent has ignored the Complainant’s February 11, 2011 correspondence.

- The Complainant has sought to have the content removed on several occasions but the Respondent has switched hosting providers on many occasions and the website is still selling counterfeit product.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English. The Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) As evidenced by the website printouts provided in the Annexes K to H to the Complaint, sufficient evidence exists, and has been entered into the record, that the Respondent exhibits familiarity with the requested language.

(b) As evidenced by the website printouts provided in the Annexes K to H to the Complaint, the disputed domain name:

- was used to sell counterfeit products to an English-speaking market, which included counterfeit product packaging and documentation solely in English;

- solely featured content on the associated website, including contact information, in the English language; and

- given that the disputed domain name combines terms with English-only definitions, the administrative proceedings should also be in English.

(c) The Respondent is clearly familiar with, and actually engaged in criminal activity by utilizing the English language in connection with the disputed domain name.

The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0.”) further states: “in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that the Complainant is a United States company, and the Complainant will be spared the burden of dealing with Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name includes Latin characters “sale” (See also Expoconsult B.V. trading as CMP Information v. Roc Guan, WIPO Case No. D2008-1600 ).

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by the Complainant, (a) the disputed domain name <p90xsale.com> is registered in Latin characters and particularly in English language, rather than Chinese script; (b) the website at the disputed domain name is a English-based website and the Respondent is apparently doing business in English through this website (Annex K and Annex L to the Complaint); (c) the websites appear to have been directed to users in worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified the Respondent of the proceedings in both Chinese and English, and the Respondent has indicated no objection to the Complainant’s request that English be the language of the proceeding; (e) the Center informed the Respondent that it would accept a Response in either English or Chinese.

In addition, according to the WIPO Overview 2.0, “a panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name.” (paragraph 4.5). The Panel did undertake limited factual research and visited the website at the disputed domain name, and found that the disputed domain name indeed resolves to an English based website. It seems that the Respondent is apparently doing business in English through this website.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the trademark P90X (the “Trade Mark”) acquired through registration. The Trade Mark has been registered worldwide including in China, and it has a widespread reputation in providing fitness DVDs, kits, and other products and services.

The disputed domain name <p90xsale.com> comprises the Trade Mark in its entirety. The disputed domain name only differs from the Trade Mark by the addition of the term “sale” to the mark P90X. This does not seem to eliminate the identity or at least the similarity between the Trade Mark and the disputed domain name.

Previous WIPO UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a user of a mark “may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; PCCW-HKT DataCom Services Limited v. Yingke, Case No. HK-0500065).

Mere addition of the descriptive term “sale” as a suffix to the Trade Mark fails to distinguish. By contrast, it may increase the likelihood of confusion. The common meaning of the term “sale” is to sell or make products available for purchase. Consumers who visit the website at the disputed domain name are likely to be confused and may falsely believe that the website is operated by Complainant for selling P90X branded products and services.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the Trade Mark.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that the Respondent has been commonly known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

The Complainant has rights in the P90X Trade Mark (international registration since 2008 - see Annex J to the Complaint; United States registration since 2004 - see Annexes D-I to the Complaint) which precede the Respondents’ registrations of the disputed domain name (November 27, 2010).

According to the Complainant, the Complainant is a leading United States company specialized in the field of in-home health, wellness, weight loss, and fitness solutions since 1998. Moreover, the Respondent is not authorized dealers of P90X branded products and services. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “p90x” in its business operation. There has been no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use the Trade Mark or to apply for or use any domain name incorporating the Trade Mark P90X;

(b) There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that the Respondent has any registered trademark rights with respect to the disputed domain name. The Respondent registered the disputed domain name <p90xsale.com> on November 27, 2010. The disputed domain name is identical or confusingly similar to the Trade Mark P90X.

(c) There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by the Complainant, the Respondent was and is in actuality advertising, offering and selling counterfeit copies of the Complainant’s products at the website resolving from the disputed domain name, including counterfeit versions of Complainant’s P90X and INSANITY branded DVDs and workout kits. (Annex K to the Complaint).

The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark 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; or

(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the 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 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 websites 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 websites or location or of a product.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that the Complainant has a widespread reputation in the P90X Trade Mark with regard to its products and services. The Complainant has registered its P90X trademarks internationally, including registration in United States since 2004, and international registration (covering China) since 2008. Moreover, according the information provided by the Complainant, the website at the disputed domain name uses the Complainant’s copyrighted product images, graphics and contents, and uses the same color background, logos and fonts as Complainant’s official product website at “www.p90x.com” (Annexes L and M to the Complaint). As such, it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the Trade Mark not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, the Respondent has chosen not to formally respond to the Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with the Complainant’s P90X branded products and services.

b) Used in Bad Faith

The Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites” offering the Complainant’s P90X branded products and services without authorization. The Complainant claimed that “Respondent has attempted to take commercial advantage of Complainant’s trademark and commercial reputation and trade off Complainant’s goodwill”, and the Respondent “has registered the domain name for the purposes of […] attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the website”.

To establish an “intention for commercial gain”, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the Trade Mark, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with the Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves (see Annexes K-M to the Complaint). In other words, in this Panel’s view the Respondent has through the use of a confusingly similar domain name and webpage contents created a likelihood of confusion with the Trade Mark. Noting also that apparently no clarification as to the Respondent’s relationship to the Complainant is made on the homepage of the website at the disputed domain names, potential Internet users are led to believe that the website “www.p90xsale.com” is either the Complainant’s sites or the site of official authorized partners of the Complainant, which it is not. Moreover, the Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by the Respondent in bad faith.

In summary, the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s trademark, intended to ride on the goodwill of the Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the websites on to which the domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <p90xsale.com> be transferred to the Complainant.

Yijun Tian
Sole Panelist
Dated: September 2, 2011