WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. da lu
Case No. D2011-1698
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 da lu of Henan, China.
2. The Domain Name and Registrar
The disputed domain name <p90xsales.com> (the “Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2011 against a privacy Service. On October 7, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 2011 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 October 12, 2011 amending the name of the Respondent. On October 11, 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 confirmed its 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 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 October 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2011.
The Center appointed Karen Fong as the sole panelist in this matter on November 18, 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.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceedings shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement in relation to the Domain Name is Chinese.
In response to the Center’s email of October 11, 2011, regarding the language of the proceeding of the Domain Name, the Complainant submitted a request that English be the language of the proceeding as the Respondent shows familiarity with the language, namely:
- The website connected to the Domain Name (the “Website”) is in English;
- The Domain Name includes an English word;
- The contact information on the Website includes an email address in English: email@example.com;
- The Website offers for sale counterfeit products to an English speaking market;
- The packaging and documentation of the counterfeit products are in English;
The Respondent did not comment on the language of the proceeding by the specified due date.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to be familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. Furthermore, the Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceedings.
4. Factual Background
The Complainant’s business is in the field of in-home health, wellness, weight loss and fitness solutions since 1998. One of the main components of its business is the development, production sale and distribution of its weight loss and fitness products and services which includes its P90X Extreme Home Fitness DVDs and kits. The P90X line was launched in 2003.
The Complainant owns trade mark registrations for P90X in various jurisdictions around the world including the United States of America and an International Registration under no. 974040 covering a number of countries including China. The earliest registration dates back to 2004. The trade mark registration certificates submitted were in the name of Product Partners LLC, which the Panel notes is the former name of the Complainant.
The Complainant owns and uses the domain name <p90x.com> to sell its P90X products and services.
The Domain Name was registered on August 18, 2011 and is connected to the Website which purports to sell what appears to be counterfeit P90X products.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical or confusingly similar to the P90X trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Names was registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark P90X.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark P90X is the dominant portion of the Domain Name. The addition of the descriptive term, “sales” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic top level domain suffix “.com”. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
The Complainant alleges that the Respondent is not affiliated with the Complainant. It also alleges that the Respondent is advertising, offering for sale and selling counterfeit copies of the Complainant’s products on the Website including the Complainant’s P90X INSANITY branded DVDs and workout kits. The Complainant monitors the distribution and sales of this product which is only sold via television informercials, on the Internet through the Complainant’s authorized websites which are connected to the domain names <P90X.com> and <beachbody.com> and through authorized independent contractor sales representatives known as “Team Beachbody Coaches” who reside only in the United States of America. The Complainant has no record of the Respondent being a Team Beachbody Coach which in any event would not have been possible since the Respondent’s WhoIs details show that it is based in China. The Complainant therefore concludes that the products in question are not from a legitimate source and therefore counterfeit.
In this Panel’s view, there can be no legitimate interest in the sale of counterfeits (see Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM, WIPO Case No. D2009-1572).
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name. Further, the Respondent has defaulted. Paragraph 14 of the Rules provides that the Panel may draw such inferences from such a default as it considers appropriate. Accordingly, the Panel infers from the Respondent’s silence that the Complainant’s reasonable allegations are, in fact, correct. And the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied and the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Complainant’s mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the P90X trade mark registrations.
The very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s trade marks and what appears to be counterfeit products on the Website confirm the Respondent’s awareness of the trade marks.
Further, the Respondent registered the Domain Name in the name of privacy domain name registration service with underlying contact address details which appear non existent - “henanhenan, henan, Henan 467858”. The deliberate use of fictitious and/or ineffective contact particulars may be further evidence of bad faith. (Farouk Systems Inc. v. David, WIPO Case No. D2009-1245).
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appear to be counterfeit P90X products for reasons set out in paragraph 6C. The use by a respondent of a domain name which includes a well-known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark may be evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren, WIPO Case No. D2008-1546 and Prada SA v Domains for Life, WIPO Case No. D2004-1019).
In addition, the Website was set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. The following are some of the features which the Respondent uses:
- The Website mimics the look and feel of the Complainant’s official website;
- The Respondent uses the Complainant’s copyright product images, graphics and content, and uses the same colour background, logos and fonts as the Complainant’s official website without the Complainant’s licence, authorization or approval e.g. both websites use the same dark colour background and prominently feature graphics and content titled “P90X”, “Extreme Home Fitness” and “YES! I’d like to try P90X today!” within a red banner.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy, thus satisfying paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <p90xsales.com> be transferred to the Complainant.
Dated: December 6, 2011