WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. Domain Whois Protection Service, Brian Miller, Hi to every day in Zhengzhou Medical Devices Co., Ltd

Case No. D2012-1810

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 Domain Whois Protection Service of Hangzhou, Zhejiang, China; Brian Miller of Hefei, Anhui, China; and Hi to every day in Zhengzhou Medical Devices Co., Ltd of Beijing, China (together the “Respondents”).

2. The Domain Names and Registrar

The disputed domain name <p90x-dvd.com>, <p90xdvd4sale.net>, <p90x-p90.net>, <p90x-p90x.net>, and <p90x-p90xx.net> are registered with Hangzhou E-Business Services Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2012. On September 11, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 12, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on September 13, 2012 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 September 17, 2012.

On September 13, 2012, the Center transmitted an email to the parties in both Chinese and English regarding the language of the proceedings. On September 13, 2012, the Complainant confirmed its request that English be the language of the proceedings. 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 Respondents of the Complaint, and the proceedings commenced on September 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 11, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2012.

The Center appointed Douglas Clark as the sole panelist in this matter on November 2, 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

The Complainant is a company based in California, United States of America. It has been engaged in the field of in-home health, wellness, weight loss, and fitness solutions since 1998. One of the main components of the Complainant’s business is the development, production, sale and distribution of a family of health, wellness, weight loss and fitness products and services, including in-home fitness DVDs and kits such as the P90X Extreme Home Fitness DVDs and kits. The Complainant’s P90X-branded fitness DVDs, kits and other products were introduced in 2003.

The Complainant is the registered proprietor in the United States of America of a number of trademarks incorporating P90X in classes 41 (educational services, namely physical fitness instruction), 9 (pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction) and 5 (nutritional and dietary supplements).

The disputed domain names were all registered in 2012 well after the registration of the Complainant’s trademarks.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain names <p90x-dvd.com>, <p90xdvd4sale.net>, <p90x-p90.net>, <p90x-p90x.net>, and <p90x-p90xx.net> are identical to or confusingly similar with the Complainant’s registered trademark. It alleges that the Respondents have no rights or legitimate interests in the disputed domain names. The Complainant alleges that the Respondents have no relationship with the Complainant.

The Complainant alleges the disputed domain names were registered and are being used in bad faith because the websites to which the disputed domain names resolve are selling products that apparently originate from the Complainant and use the Complainant’s registered trademark and copyrighted material.

B. Respondent

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

6. Discussion and Findings

In this Panel’s view, this is a typical case of domain name cybersquatting that the Policy is designed to stop. The Panel accordingly will only make brief findings.

A. Consolidation of proceedings

The Complainant requested, in accordance with paragraphs 3(c) and 10(e) of the Rules, that the proceedings in relation to all the disputed domain names be consolidated on the basis the domains are under common control by the same entity or person.

A summary of the WhoIs details for each domain name is set out below.

The websites the disputed domain names resolve to are substantially similar. The Panel is satisfied that it is likely that the disputed domain names are under common control by the same entity or person.

The Panel is aware from other complaints it has handled recently that the use of multiple similar domain names to misrepresent a business as being linked to a legitimate business is increasingly common. This Panel considers that UDRP panels should take a liberal view of applications to consolidate so as to allow UDRP proceedings to remain a cost effective way of resolving disputes.

In particular, in this case, none of the Respondents have objected to consolidation in this case and the Panel has determined to allow the proceedings to be consolidated.

B. Language of Proceedings

The registration agreements are in Chinese. The Complainant requested that English be the language of proceedings on the basis the disputed domain names (1) were used to sell products to an English-speaking market, which included product packaging and documentation solely in English; (2) solely featured content on the associated websites, including contact information, in the English language; and (3) given that the disputed domain names <p90x-dvd.com>, <p90x-p90.net>, <p90x-p90x.net>, <p90x-p90xx.net>, and <p90xdvd4sale.net> combine terms with English-only definitions, the administrative proceeding should also be in English.

The Respondents did not respond to this.

The Respondents clearly do business in English and must therefore be familiar with English. In the circumstances of the present case, the Panel determines that the language of proceedings be English.

C. Identical or Confusingly Similar

The disputed domain names are composed of the Complainant’s registered trademarks P90X combined with the generic or descriptive terms, i.e. “dvd”, “dvd4sale”, “p90”, “p90x”, “p90xx”.

According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).

The disputed domain names <p90X-dvd.com> and <p90xdvd4sale.net> are therefore confusingly similar to the Complainant’s registered trademark.

The disputed domain names <p90x-p90.net> and <p90x-p90xx.net> are also confusingly similar to the Complainants registered trademark. The addition of “p90” and “p90xx” does not detract from the initial use of P90X mark.

The disputed domain name <p90x-p90x.net> is identical to the Complainant’s trademark. The Complainant’s trademark has been used twice in the same domain name.

The first element of paragraph 4(a) of the UDRP is made out.

D. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests in a disputed domain name, appears to be present in this case.

Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.

E. Registered and Used in Bad Faith

The Panel also finds that the disputed domain names have been registered in bad faith and are being used in bad faith.

This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

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 disputed domain names <p90x-dvd.com>, <p90xdvd4sale.net>, <p90x-p90.net>, <p90x-p90x.net> and <p90x-p90xx.net> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: November 15, 2012