WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. Cornel Ungureanu / Cyberland LLC
Case No. D2014-0361
1. The Parties
The Complainant is Beachbody, LLC of Santa Monica, California, United States of America ("US"), represented by Cozen O'Connor, US.
The Respondent is Cornel Ungureanu / Cyberland LLC of Gaithersburg, Maryland, US.
2. The Domain Name and Registrar
The disputed domain name <insanitylive.com> (the "Domain Name") is registered with 1&1 Internet AG (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 8, 2014. On March 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 14, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details. The Complainant filed an amended Complaint on March 18, 2014.
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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 19, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 8, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 9, 2014.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 17, 2014. 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 limited liability company organized under the laws of the State of Delaware, US, and headquartered in Santa Monica, California, US. The Complainant offers in-home fitness and health products, chiefly workout DVD videos, exercise gear, and nutritional supplements. Its products include the INSANITY and INSANITY THE ASYLUM fitness DVDs and kits, introduced in 2008 and 2010, respectively, which guide customers through an intense workout program for fitness and weight loss. These products are ordered online or by telephone or email, and the Complainant provides worldwide shipping of its exercise DVDs and kits. The Complainant also offers training and certification for instructors of INSANITY group exercise classes.
The Complaint includes links and attaches documents demonstrating that the Complainant's INSANITY and INSANITY THE ASYLUM products are widely advertised online, in social media, on television, and in print media. The INSANITY program was featured on a national television talk show in the United States in 2010, and it has been discussed in newspaper and magazine articles. The Complainant operates related websites at "www.getinsanity.com" and "www.insanitycertification.com", as well as three INSANITY Facebook pages, which have been "liked" by nearly a million visitors. The Complainant regularly presents direct-response "infomercials" on television, YouTube, and social media platforms, garnering awards in 2010 and 2012 from Responsemagazine and the Electronic Retailing Association.
The Complainant holds several relevant trademark registrations, including the following registered by the US Patent and Trademark Office:
October 13, 2009
INSANITY (word and design)
November 1, 2011
INSANITY THE ASYLUM
August 2, 2011
According to the Registrar, the Domain Name was created on June 8, 2012, and registered in the name of the Respondent, an individual in Gaithersburg, Maryland, US. The "Registrant Organization" is shown as Cyberland LLC, but no company by that name is listed in the online business entity database operated by the State of Maryland. The Respondent has not replied to communications from the Complainant and the Center.
As demonstrated by a screenshot of the Respondent's website associated with the Domain Name on January 7, 2014, and a similar one dated January 15, 2014 that is available on the Internet Archive's Wayback Machine at "www.archive.org", the Respondent used the Domain Name for a website headed "InsanityLive.com" with the tagline "Insane training, workouts and stuns [sic] Live!" The home page featured a video titled "Hottie Body Hump Club" and "HUMPILATES", with a still shot showing what appears to be a person performing a Pilates exercise routine. Other images on the home page also depicted people working out in a gymnasium or engaged in "extreme" sports or stunts. Otherwise, the home page of the website was chiefly aimed at advertising the online and social media marketing services of "nextyp" and recruiting individuals interested in becoming sales representatives for nextyp, although the URL furnished for that entity currently resolves only to an online "Integrity Yellow Pages" directory website.
Representatives of the Complainant sent the Respondent a succession of cease-and-desist letters dated January 27, 2014, February 5, 2014, and February 17, 2014. The Respondent did not reply to these communications, but the Respondent changed its website content significantly, as shown in screenshots dated February 19, 2014.
The Respondent's revised website, which at the time of this Decision remains in substantially the same form, is headed "InsanityLive," "Skateboarding, tricks and stunts, Local and Live". The website seems to have nothing to do with skateboarding, but it advertises assistance in operating an Internet business and distributing promotional videos online and in social media, with the tagline, "A great name is a terrible thing to waste!" The website also includes sample videos and a variety of apparently unrelated advertising links, including those offering "online exercise and fitness", weight loss programs, and beauty products.
5. Parties' Contentions
The Complainant asserts that the Domain Name is confusingly similar to its INSANITY and INSANITY THE ASYLUM marks (collectively, the "INSANITY marks") and that the Respondent has no rights or legitimate interests in using a confusingly similar Domain Name. The Complainant concludes that the Respondent selected the Domain Name in bad faith, in an effort to mislead Internet user for commercial gain.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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.
Under paragraph 15(a) of the Rules, "A Panel shall 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."
A. Identical or Confusingly Similar
The Complainant holds registered INSANITY trademarks. The Domain Name includes the INSANITY mark in its entirety and adds the English dictionary word "live". "Insanity", of course, is also a dictionary word in English, but it is also trademarked for its arbitrary or suggestive association with the Complainant's personal fitness products. The addition of a generic or descriptive term to a domain name including a mark generally does not obviate the likelihood of confusion for purposes of the first element of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9. This is especially true in this instance, because "live" is a verb often associated with discussions of healthy life and well-being, and "live" as an adjective is often used in connection with performances and presentations. Both senses could appear relevant to an Internet user familiar with the Complainant's products and marketing.
In any event, UDRP panels customarily treat the first element of a Policy complaint as a standing requirement, which simply requires "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name". See WIPO Overview 2.0, paragraph 1.2. The Panel finds that this test is satisfied in the present case and concludes that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because the respondent in a UDRP proceeding is in the best position to assert its rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Respondent's use of the Domain Name is commercial, and there is no assertion that the Respondent or its business has been known by a corresponding name. While the Respondent may well engage in an Internet and social media marketing business, the use of a misleading Domain Name exploiting another party's trademark should not be considered a use "in connection with a bona fide offering of goods or services" for purposes of the second element of the Complaint. The offering cannot be considered to be made in "good faith" if it is deliberately mislabeled, misleading, and apparently infringing, a point explored further below in connection with the "bad faith" element of the Complaint.
Even where the mark in question is also a dictionary word, as it is in this case, the respondent does not automatically have a legitimate interest in using it for a Domain Name:
"Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)." (WIPO Overview 2.0, paragraph 2.2)
The Respondent's website predominantly concerns Internet and social media marketing services, not "insanity" in the dictionary sense. The Respondent's re-labeling of the website to refer to "skateboarding, tricks and stunts" (immediately following the Complainant's cease-and-desist letters) may reflect an effort to make the word "insanity" more relevant to the content, but the revised website does not, in fact, feature content about skateboarding, tricks, and stunts.
The Panel concludes that the Complainant makes a prima facie case against legitimacy, which the Respondent has not rebutted, and finds on this record that the second element of the Complainant has been established.
C. Registered and Used in Bad Faith
The Policy's non-exhaustive list of circumstances that shall be considered evidence of bad faith registration and use (paragraph 4(b)) includes the following:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
This example fits the circumstances of the current proceeding. The record indicates that the Complainant's INSANITY mark is relatively well known in the US, where both parties are located, in connection with strenuous exercise programs and related fitness products. The Respondent's website associated with the Domain Name was initially headed "Insane training, workouts and stuns [sic] Live!" and centrally featured on the home page an exercise video and graphics relating to exercise and sport. Even following the revisions in the wake of the Complainant's cease-and-desist letters, the Respondent's website continued to advertise "online exercise and fitness" programs and weight loss products, which appear to compete with those offered by the Complainant under its INSANITY marks. Rather than a coincidental use of a not obviously relevant dictionary word for the Domain Name, these facts suggest a deliberate targeting of the Complainant's well-advertised mark, and the Respondent has not come forward with a more benign explanation for choosing the Domain Name and using it in this manner.
The Panel concludes, on the available record, that the Domain Name was more likely than not registered and used in bad faith, and that the Complainant prevails on the third element of the Complaint.
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 <insanitylive.com> be transferred to the Complainant.
W. Scott Blackmer
Date: April 26, 2014