WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. He Annie, Fundacion Private Whois

Case No. D2012-0906

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 Respondents are He Annie of Fujian, China, and Fundacion Private Whois of Panama City, Panama.

2. The Domain Names and Registrars

The disputed domain name <p90xp90x2.com> is registered with Jiangsu Bangning Science & technology Co. Ltd.

The disputed domain name <p90x2p90x.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2012. On April 30, 2012, the Center transmitted by email to the registrars a request for registrar verification in connection with the disputed domain names. On May 2, 2012, Internet.bs Corp transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On May 2, 2012, Jiangsu Bangning Science & technology Co. Ltd. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <p90xp90x2.com> which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 2012 providing the registrant and contact information disclosed by the registrars, and inviting the Complainant to submit an amendment to the Complaint and a request for consolidation. The Complainant filed an amended Complaint on May 8, 2012.

On May 3, 2012, the Center also transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On May 3, 2012, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings 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 May 14, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 3, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 5, 2012.

The Center appointed Colin Yee Cheng Ong as the sole panelist in this matter on June 28, 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

4.1 The Complainant has alleged that it has been a leader in the field of in-home health, wellness, weight loss, and fitness solutions since 1998. It has stated that one of the main components of the Complainant’s business encompasses the development, production, sale and distribution of its Beachbody® family of health, wellness, weight loss and fitness products and services, including its popular in-home fitness DVDs and kits such as the P90X® Extreme Home Fitness DVDs and kits and the P90X2® fitness DVDs and kits.

4.2 The Complainant has alleged that great success of Beachbody’s P90X® and P90X2®-branded DVDs, fitness kits, and other products and services is due in part to Beachbody’s marketing and promotional efforts. It has then provided evidence including significant advertising and promotion of the P90X and P90X2 marks, names and products and services through many channels, including Beachbody’s websites, located at “www.beachbody.com”, “www.P90X.com” and “www.P90X2.com”; substantial print and other internet-based advertising and in-person and televised promotional appearances by its trainers.

4.3 The Complainant has provided further evidence that it is the owner of the following trademarks:

U.S. Reg. No. 2,869,491 for the P90X word mark for “nutritional and dietary supplements” in International Class 5, registered on August 3, 2004;

U.S. Reg. No. 2,869,490 for the P90X & Design mark for “meal replacement bars, nutritional and dietary supplements” in International Class 5, registered on August 3, 2004;

U.S. Reg. No. 2,843,063 for the P90X word mark for “educational services, namely physical fitness instruction” in International Class 41 and for “dietary instruction, namely nutritional counseling services” in International Class 44, registered on May 18, 2004;

U.S. Reg. No. 2,973,356 for the P90X & Design mark for “educational services, namely instruction in the use of exercise equipment and diet programs” in International Class 41, registered on July 19, 2005;

U.S. Reg. No. 3,669,400 for the P90X & Design mark for “pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on August 18, 2009;

U.S. Reg. No. 3,444,723 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on June 10, 2008;

International Reg. No. 974040 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on July 25, 2008;

U.S. Reg. No. 4,072,035 for the P90X2 word mark for “pre-recorded video tapes, audio and video cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction and instructional materials distributed in connection therewith” in International Class 9, registered on December 13, 2011;

International Reg. No. 1081166 for the P90X2 word mark for “pre-recorded video tapes, audio and video cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction and instructional materials distributed in connection therewith” in International Class 9, registered on May 27, 2011.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that the disputed domain names <p90xp90x2.com> and <p90x2p90x.com> are confusingly similar to the Complainant’s P90X and P90X2 marks for several reasons:

(a) The disputed domain names wholly incorporate the entirety of the Complainant’s well-known P90X and P90X2 marks and the generic “.com” domain extension. The Complainant submits that it is well-established that when comparing a domain name and a trademark, the domain extension can usually be ignored.

(b) The Respondent’s domain names display the identical characters of the Complainant’s two marks in the exact same chronological order. One disputed domain name combines the P90X and P90X2 marks as <p90xp90x2.com>, while the other disputed domain name combines the two marks in reverse order as <p90x2p90x.com>. The Complainant submits that the combination of the Complainant’s P90X and P90X2 marks increases the likelihood of consumer confusion and clearly infringes the Complainant’s registered trademarks.

The Complainant submits that consumers who visit the websites at the disputed domain names <p90xp90x2.com> and <p90x2p90x.com> are likely to be confused based upon the false belief that the disputed domain names are owned and operated by the Complainant as websites for promoting and selling P90X and P90X2-branded products and services.

5.2 The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons:

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

(b) the website at the disputed domain name <p90x2p90x.com> offered goods and services that directly overlap with those in which the Complainant is exclusively entitled to provide in connection with the P90X and P90X2 marks;

(c) the Respondent was in actuality advertising, offering and selling unauthorized and counterfeit copies of the Complainant’s P90X, P90X2 products, and other Beachbody fitness DVDs and exercise kits on the website at the disputed domain name <p90x2p90x.com>;

(d) the disputed domain names captured consumers who were searching for the Complainant’s P90X and/or P90X2 products and services and they offered unauthorized and counterfeit versions of the Complainant’s products including P90X®, P90X2®, Insanity® and Insanity the Asylum®.

(e) The infringing contents on the website at the disputed domain name <p90x2p90x.com> were removed upon receipt of the Complainant’s Digital Millennium Copyright Act (DMCA) notice on April 3, 2012, and presently both the dispute domain names <p90x2p90x.com> and <p90xp90x2.com> do not resolve to any active websites.

(f) The Complainant does not have a record of the Respondent as a Beachbody Coach and the Respondent’s “fake” address at “Fujian Fujian Fujian” in China shows that it is not a sales representative authorized by Beachbody. The counterfeit versions of the Complainant’s P90X, P90X2, and other Beachbody-branded products have not been authorized by the Complainant.

5.3 The Complainant, lastly, contends that the disputed domain names were registered and are being used in bad faith for the following reasons:

(i) The Complainant alleged that the Respondent has registered the disputed domain names in bad faith because the Respondent uses the disputed domain names to advertise, offer for sale and sell unauthorized and counterfeit copies of the Complainant’s P90X, P90X2 and other Beachbody products, and deceives consumers into falsely believing that an association, affiliation, or sponsorship relationship exists between the Complainant and the disputed domain names.

(ii) The Respondent has registered and used the disputed domain names to advertise and sell counterfeit versions of the Complainant’s products and has attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the websites.

(iii) The Respondent has registered and used the disputed domain names primarily for the purpose of disrupting the business of a competitor.

The Complainant requests a decision that the disputed domain names be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Preliminary Issue: Respondent’s identity:

The Panel notes that the domain name <p90xp90x2.com> is registered by He Annie and the domain name <p90x2p90x.com> is registered by Fundacion Private Whois.

Consolidation of multiples registrants as Respondent in a single administrative proceeding may in certain circumstances be appropriate under Par. 3(c) and 10(e) of the Rules.

In this case both domain names incorporate both Complainants’ Trademark in their entirety and the websites resolve to the same page offering Complainant’s products and other goods and services related. Both domain names are registered on March 2012.

This Panel is satisfied that Complainant has demonstrated that the domain names are subject to common control, and in view of the specific circumstances of this case, this Panel determines that consolidation would be procedurally efficient, fair and equitable to all parties.

6.1 The Complaint was filed in the English language. On May 3, 2012, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On May 3, 2012, the Complainant confirmed its request that English be the language of proceeding. 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. The Center has been informed by the concerned registrar Jiangsu Bangning Science & Technology that the language of the registration agreement for the disputed domain name < p90xp90x2.com > is Chinese. Although the Chinese language is the language of the registration agreement for the disputed domain name, the Complainant asserted its request that English should be the language of proceedings. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless an agreement between the parties stipulates or the Panel decides otherwise. The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.

6.2 The Complainant requested that English be the language of the proceedings, while the Respondent did not protest.

6.3 In the present case, considering the composition of the domain name, the content of the website, and the Panel’s assessment of the unique circumstances of the case, bearing in mind its broad powers given to the Panel by paragraph 11(a) of the Rules, and bearing in mind the fact that the Respondent did not attempt to contest these proceedings, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceeding in this case.

6.4 The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The procedural history of this case raises the question as to whether the Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. The Panel has reviewed the Complaint together with its annexes and, in the light of this material, the Panel finds as set out below. This Panel does not find any exceptional circumstances pursuant to paragraph 5(e) of the Rules so as to prevent this Panel determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.

6.5 The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. Some previous UDRP panels have suggested that if the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that the Respondent accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. (See cases set out by the Complainant above). However, this Panel respectfully views that any such adverse inference is not conclusive at all and the Complainant would still be obliged to prove its case in accordance with the UDRP. The burden of proof falls upon and remains on the Complainant. In such case of silence by the Respondent, the Complainant shall then continue with its case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700).

6.6 Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the panel “shall draw such inferences there from as it considers appropriate”. Therefore, in a case where a respondent fails to put in a response, a panel may draw negative inferences from the respondent’s default (see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)). Notwithstanding the default of the respondent, it remains incumbent on the complainant to make out its case in all respects as set out in paragraph 4(a) of the Policy (see, PRL USA Holdings, Inc. v. Yan Shif, supra). Namely, the complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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.

A. Identical or Confusingly Similar

6.8. Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. In line with such provision, the Complainant must prove two limbs, i.e., that it holds the trademark or service mark right; and that the disputed domain names are identical with or confusingly similar to its trademark or service mark. The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the domain name’s use or other marketing factors, usually considered in trademark infringement (see, for example, Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).

6.9 The Complainant has appended to the Complaint a list of registered trademarks and a registered domain name that incorporate the trademarks P90X and P90X2. It is quite clear that the Complainant is the legitimate owner of these trademarks and domain name. The Respondent’s registration of the disputed domain name consists of the use of the Complainant’s trademarks P90X and P90X2 cause confusing similarity. In this case there is no addition of generic words. Given this, the Panel has little difficulty in concluding that the disputed domain names are confusing similar to a number of trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

6.11 The Panel accepts that the Complainant has satisfied it in providing evidence showing that the trademarks for P90X and P90X2 are well-known throughout the world, registered and is present in China, where the Respondent is located. The Complainant is claiming that the Respondent has registered the domain name with a view to attracting Internet users to its website to intentionally link its domain name with the Complainant’s P90X and P90X2 trademarks. The Panel accepts that such activity clearly does not provide the Respondent with a legitimate interest in the disputed domain names.

6.12 According to paragraph 4(a)(ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain names. Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain names. However, it is the prevailing view among panelists that where a complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show, inter alia, one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack a right or legitimate interest in the domain name.

6.13 As previously held by other UDRP panels, “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. (See eBay Inc. v. Akram Mehmood, WIPO Case No. DAE2007-0001). As another panel had held in the case of Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Varentinuo inc. reg by sopao.com, WIPO Case No. D2008-0186, if a respondent wants to argue that it has a right or legitimate interest in a domain name on this basis, it is then for the respondent to positively advance that case and to bring forward evidence in support (see paragraph 6.16 of that decision).

6.14 The Respondent has not provided such evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name. There is no evidence on the record of this proceeding to suggest that Respondent has been commonly known by the disputed domain names, or that Respondent has made noncommercial or fair use of the domain names. The Respondent has also not used the disputed domain names in connection with a bona fide offering of goods or services.

6.15 Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain names and that the requirement of paragraph 4(a)(ii) of the Policy is also satisfied.

C. Registered and Used in Bad Faith

6.16. The Complainant has rightly pointed out the fact that the Respondent has registered the disputed domain names in bad faith because it registered the domain name with the knowledge of the Complainant’s P90X and P90X2 trademarks.

6.17. The Panel accepts the Complainant’s submission that the Respondent is using the disputed domain names to intentionally gain commercially by attracting Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark.

6.18. The Panel also accepts the Complainant’s submissions that the Respondent registered the disputed domain names primarily for the purpose of disrupting the business of a competitor

6.19. Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. Paragraph 4(b)(iv) of the Policy refers to use of a domain name to intentionally attempt to attract for commercial gain Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source of a website.

6.20. Given that the Respondent has failed to show (for the reasons set out under the heading Rights and Legitimate Interests above) that it was using the disputed domain name genuinely for its own goods or services and that it has also failed to disclose on the site the true relationship between it and the Complainant, the Panel concludes that the Respondent in this case did intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. The Panel accepts the submission that the Respondent is intentionally attempting for a commercial purpose to attract Internet users to the Respondent’s website. The activities of the Respondent, therefore, fall within the scope of paragraph 4(b)(iv) of the Policy.

6.21. In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy. This is sufficient to dispose of this matter in favour of the Complainant. The Panel has been able to conclude that the Respondent registered and is using the disputed domain names in bad faith reasons.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <p90xp90x2.com> and <p90x2p90x.com> be transferred to the Complainant.

Dr Colin Yee Cheng Ong
Sole Panelist
Dated: August 22, 2012