WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. Jianzong Zhan
Case No. D2012-0819
1. The Parties
Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
Respondent is Jianzong Zhan (“Respondent”) of New York, New Hampshire, United States of America.
2. The Domain Name and Registrar
The disputed domain name <power90beachbody.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2012. On April 18, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On April 18, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 14, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 18, 2012.
The Center appointed James H. Grossman as the sole panelist in this matter on June 1, 2012. 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
Complainant, based in California, United States of America trades under the BEACHBODY name and has established itself prominently in the in-home health, wellness, weight loss, and fitness solutions business since 1998. Its business involves the development, production, sale and distribution of its Beachbody health, wellness, weight loss and fitness productions and services, including fitness DVDs and kits such as Power 90, P90X, Insanity, and Brazil Buttlift as well as others. The Company does significant advertising and promotion on its website and through other Internet channels such as Facebook as well as televised infomercials and other TV advertising.
Complainant has filed for and obtained trademark registrations in various jurisdictions throughout the world, including, but not limited to, the following examples, among a number of others: United States Registration No. 3,450,708 for the word “beachbody” for providing on-line electronic bulletin boards for transmission of messages among computer users concerning exercise; audio and video broadcasting services over the Internet, etc. registered on June 17, 2008 and used by the Complainant in connection with the services since at least as early as February 2, 2004; United States Registration No. 2,665,151 for word “beachboy” for, inter alia, dietary supplements and diet aids video cassettes featuring exercise, fitness and dietary information, etc. registered on December 24, 2002 and used since as early as May 10, 1999; United States Registration No. 3,435,680 for word “power 90” for pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise instruction, etc. registered on May 27, 2008 and used as early as August 1, 2000; and United States Registration No 2,630,688 for mark POWER 90 & Design for booklets, featuring exercise workouts registered on October 8, 2002 and used as early as August 1, 2000.
Complainant changed its name from Product Partners, LLC to Beachbody LLC in September of 2010 and this name change was recorded with the United States Patent and Trademark Office with regard to all of its United States registrations as well as with WIPO with regard to the International Registrations for BEACHBODY and POWER 90.
Complainant does not state in its Complaint if and when it has registered domain names relating to its business that might relate to this case. However, a search by the Panel of the listed domain names at “www.whois.com” shows that Complainant is the registrant of <beachbody.com> registered with Markmonitor.com on August 17, 1999 and expiring on August 17, 2020 and also the registrant of <power90.com> registered with Markmonitor.com on September 7, 1999 and expiring on August 23, 2020.
Respondent registered the Disputed Domain Name on July 11, 2011.
Accordingly, the Disputed Domain Name will expire on July 11, 2012. On April 24, 2012, the Center wrote to the Registrar noting the impending expiration of the Disputed Domain Name and requesting the Registrar confirm its compliance with Paragraph 126.96.36.199 of the ICANN Domain Deletion Policy which gives Complainant during a pending dispute the option to renew or restore the domain name under the same commercial terms as the registrant. In response on April 25, 2012, the Registrar confirmed the lock on the Disputed Domain Name expires only when the Registrar receives an order dismissing or suspending the case or “upon the expiration of the domain registration including the Redemption Grace and Pending Delete Periods at the Registry”. In accordance with the terms of the ICANN Policy cited above, the Registrar states Complainant must bear the burden of ensuring that the domain name does not expire. Not withstanding the above, the Registrar confirmed it does take steps to ensure that the domain name remains in status quo during the pending dispute. The Panel notes this rather confusing position taken by the Registrar. While there can be no assurance of action by this Registrar, the Panel feels confident that this decision will likely be rendered and implemented in accordance with paragraph 4(K) of the Policy in time for Complainant to take some action before the expiration on July 27, 2012.
5. Parties’ Contentions
Complainant points out that the Disputed Domain Name is confusingly similar to Complainant’s two separate trademarks, POWER 90 and BEACHBODY. Respondent has merely put them together to form the Disputed Domain Name. This combination of two trademarks belonging to Complainant increases the likelihood of consumer confusion. Complainant advises that Respondent is not affiliated with Complainant and still is advertising, offering and selling counterfeit versions of the Power 90 and Beachbody fitness products at the website at the Disputed Domain Name. According to Complainant, Respondent has registered at least 18 other domain names relating to Beachbody products and finally abandoned these 18 domain registrations before their expiration. The Disputed Domain Name website has similar contents, including the same graphics, same content, in the same font and colors, and the same dark color background as Complainant’s official websites at “www.beachbody.com” and ”www.p90x.com”. Complainant uses independent sales representatives but confirms it has no record of Respondent being such a representative. Respondent’s use of a “Blog” tab on the Disputed Domain Name site and alleged responses from consumers adds to the confusion for consumers. Finally, Respondent’s unauthorized use of the Disputed Domain Name deceives consumers and is clearly used in bad faith in that Respondent is using this site with counterfeit products for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
i. The Disputed Domain Name is identical or confusing similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
iii. The Disputed Domain Name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to decide a complaint “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Because Respondent has defaulted by failing to timely file a response to the allegations of Complainant, the Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)) and certain factual conclusions may be drawn on the basis of Complainant’s undisputed representations (id paragraph 15(a)). The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. Vertical Solutions Management., Inc. v. webnet-marketing, inc., NAF Claim No. 95095.
A. Identical or Confusingly Similar
The Panel agrees with the points set forth by Complainant relating to the fact that the Disputed Domain Name is clearly confusingly similar to Complainant’s trademarks. In the opinion of this Panel, all that Respondent has done is put two of the Complainant’s trademarks together which only leads to an even more obvious attempt to confuse Internet users. The Disputed Domain Name cannot reduce the clear understanding of an Internet user that this site is that of Complainant’s and therefore the user expects to rely on the reputation and quality of the Complainant’s name. See Lacoste Alligaor S.A. v. China Bizseas, WIPO Case No. D2009-0493, to the effect that a “domain name that wholly incorporates [a] registered trademark establishes confusing similarity.” See also AT&T Corp v. Amjad Kauser, WIPO Case No. D2003-0327. While not dispositive under the Policy this position by the Panel is only further confirmed by going to the Disputed Domain Name’s website as well as Complainant’s sites. Any Internet user would believe the Disputed Domain Name’s website belongs to Complainant.
B. Rights or Legitimate Interests
As Complainant states, the Panel finds there is no evidence that Respondent, in registering the Disputed Domain Name, in any way sought to advance legitimate interests or for the bona fide offering of legitimate goods or services. The Panel is of the view that Respondent is using the Disputed Domain Name to advertise, offer, and sell counterfeit copies of Complainant’s products. It is almost beyond belief that this Respondent has registered at least 18 other domain names which incorporate Complainant’s P90X mark and abandoned each before their expiration.
As Complainant has stated, it uses independent representatives to carry out its business and Complainant confirms that Respondent is not listed as any such representative. According to Complainant, no license or authorization of any other kind has been given by Complainant to Respondent to use the trademarks. In Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055, the panel stated that, “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” This has then been re-established in several cases after that case. See Akbank v. Dr. Mehmet Kahveci, WIPO Case No. D2001-1488; and Citigroup Inc., Citicorp and Citibank, N.A. v. Ghinwa and Gaiia and Faouzi Kh etc. , WIPO Case No. D2003-0494. Further, the use by Respondent of the Disputed Domain Name is obviously commercial and not a fair use in that it is intended for commercial gain and seeks to divert Internet users to what they believe to be a site established by Complainant.
While the overall burden of proof rests with Complainant, prior UDRP panels have agreed that this could require a complainant to prove a negative; that is, requiring complainant to provide information primarily within the knowledge of the respondent. Therefore a complainant is required only to make a prima facie case that respondent lacks rights or a legitimate interest. The Panel accepts that Complainant has made a prima facie case that Respondent lacks rights or legitimate interest in the Disputed Domain Name. Accordingly, the burden of rebuttal is transferred to Respondent. Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455. Since Respondent has failed to respond to the Complaint, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy and accordingly, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
This Panel accepts the argument of Complainant that Respondent was aware of the rights Complainant has in the trademarks BEACHBODY and POWER 90 and the value of said trademarks, at the point of the registration of the Disputed Domain Name in July, 2011. There is no connection between Respondent and Complainant. The Panel also accepts the argument that Respondent knew about the successful Internet business of Complainant and sought to capitalize on this. Respondent is intentionally attempting to attract Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website by combining two of Complainant’s trademarks in the Disputed Domain Name.
According to Complainant, as each web hosting provider shut down the website in response to Complainant’s notice, in accordance with the Digital Millennium Copyright Act, Respondent simply moved to a different hosting provider.
One clear mark of bad faith in the view of the Panel is the obvious fake address and phone number listed by Respondent. His address is listed as New York, New Hampshire and use of a 300 area code should have led to some investigation by any intelligent person at any registrar in this Panel’s opinion. The Panel is of the view that a registrar has some obligation to do some investigation which, in this case, would have led to a disqualification of any request for registration.
The Panel finds that the Respondent registered and used the Disputed Domain Name in bad faith.
For 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 <power90beachbody.com> be transferred to the Complainant.
James H. Grossman
Dated: June 15, 2012