WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. Registration Private, Domains By Proxy, LLC / Trang Pham Thi
Case No. D2019-2123
1. The Parties
The Complainant is Beachbody, LLC, United States of America (“United States”), represented by Cozen O’Connor, United States of America.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Trang Pham Thi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <shakeologyflavors.com> (the “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 August 30, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2019, 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 September 6, 2019, 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 6, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on October 16, 2019. 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 has a strong presence in the fitness industry as a leading provider of exercise and fitness instruction, exercise, health and nutrition goods and services. Its business includes its SHAKEOLOGY nutritional supplement products which are sold around the world including in the United States, Canada, the United Kingdom and other countries in Europe. The Complainant does not sell its SHAKEOLOGY products wholesale. Consumers must either purchase such products directly from the Complainant’s websites at “www.beachbody.com” and “www.shakeology.com/shk/us”, or through an authorized coach.
The Complainant has a number of trademark registrations in various jurisdictions throughout the world including United States Registration No. 3,534,958 with a registration date of November 18, 2008 and International Registration No. 1,045,004 registered on April 13, 2010, both for SHAKEOLOGY.
Not much is known of the Respondent who registered the Domain Name, <shakeologyflavors.com> on August 7, 2019. The Domain Name is currently inactive but it once resolved to a website which appeared to show SHAKEOLOGY products for sale at discounted prices.
5. Parties’ Contentions
A brief summary of the Complainant’s contentions are set out below.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant’s well-known SHAKEOLOGY products have achieved great success since their introduction on September 1, 2007, due in large part to the substantial amount of time and money that it has invested in its marketing and promotional efforts. These efforts include significant advertising and promotion through the Complainant’s websites, its SHAKEOLOGY Facebook product page, Twitter account and SHAKEOLOGY YouTube channel, as well as substantial print and other Internet-based advertising. As a result of these efforts and the quality of the SHAKEOLOGY products, the SHAKEOLOGY trademarks have acquired a valuable reputation and goodwill among consumers which accrued well before the Respondent registered the Domain Name. As well as gaining significant common law trademark and other rights in its SHAKEOLOGY marks, it has also protected these valuable trademarks by obtaining registrations, as described earlier.
In an apparent attempt to syphon off the Complainant’s goodwill, the Respondent registered the Domain Name which wholly incorporates the SHAKEOLOGY trademark and is confusingly similar thereto. The SHAKEOLOGY mark appears prominently and in its entirety as the first term in the Domain Name. Whilst it also includes the descriptor “flavors”, the mere addition of this term fails to distinguish, but in fact increases the likelihood of confusion amongst consumers as to the source of the Domain Name and associated website.
Consumers are likely to believe that they are able to purchase SHAKEOLOGY products, and all of the available “flavors”, at a discounted price (approximately USD 40 less than the price listed on the Complainant’s official websites) at the website to which the Domain Name resolves.
The Domain Name is confusingly similar to the trademarks in which the Complainant has established rights.
The Respondent has no rights or legitimate interests in respect of the Domain Name
The Respondent is not affiliated with the Complainant, and there is no evidence to suggest that the Respondent has registered the Domain Name to advance legitimate interests or for the bona fide offering of legitimate goods or services. The evidence in fact indicates the exact opposite.
The Respondent has registered the Domain Name for illegitimate purposes, namely to intentionally trade off of the goodwill in the Complainant’s SHAKEOLOGY trademarks and products, to confuse consumers into believing that its website was associated with the Complainant, and to scam consumers out of their money by purportedly selling legitimate SHAKEOLOGY products (as described further below). Trading on the name, goodwill and reputation of another by misleadingly attracting Internet users for commercial gain, cannot be considered bona fide commercial or fair use. Using a domain name for apparently illegal activities cannot be the basis of rights or legitimate interests.
The Respondent has anonymously registered the Domain Name in an effort to evade the consequences of registering a domain name in which he/she has no rights or legitimate interests. The use of a privacy or proxy registration service to register a domain name has led numerous panels to take the registrant’s anonymity into account and draw adverse inferences. Further, because the Respondent anonymously registered the Domain Name, the Respondent cannot claim to have been commonly known by the Domain Name or similar names. The Respondent has made no effort to associate himself with the Domain Name.
The Respondent cannot provide any legitimate basis for its registration of the Domain Name. Using the Domain Name and associated website to directly infringe the Complainant’s trademarks and copyright works, create initial interest confusion, divert profits away from the Complainant, and potentially perpetuate fraud against consumers, demonstrates the Respondent’s wholly illegitimate purpose in registering and using the Domain Name.
The Respondent does not have a legitimate interest in the Domain Name.
The Domain Name was registered and is being used in bad faith
The Complainant refers to a past UDRP decision where it was held that registering a domain name very similar to a well-known trademark to perpetuate fraudulent transactions falls within paragraph 4(b)(iii) of the Policy (the domain name being registered primarily for the purpose of disrupting the business of a competitor) because, as the panel stated in that case, such action inevitably creates a dispute as to who is liable for the price of goods, gives rise to bad relations between the complainant and its suppliers and incurs a considerable waste of time and money in unraveling the fraud and its consequences. (Such conduct was also found to bring the case within paragraph 4(b)(iv) of the Policy – creating a likelihood of confusion).
Here, the Respondent registered the Domain Name and created the associated website long after the Complainant began advertising and selling its SHAKEOLOGY products and obtained registrations for its SHAKEOLOGY trademarks. Moreover, it is apparent from the Respondent’s website, that he registered the Domain Name and created the associated website solely to trade off of the Complainant’s goodwill in its marks and to confuse consumers into believing that the Respondent’s website is affiliated or associated with the Complainant when that is not the case.
The Respondent intentionally and willfully infringed upon the Complainant’s trademark rights by not only registering the Domain Name, but by also creating a website whereby the Respondent purportedly advertised, sold, and distributed authentic SHAKEOLOGY products. However, only the Complainant or its authorized coaches are permitted to sell SHAKEOLOGY products.
The Respondent’s use of the Complainant’s registered trademarks, as well as various pictures of the Complainant’s products bearing the Complainant’s trade dress and protected logos in connection with the advertisement, promotion, offering for sale, and purported sale and distribution of products obtained through unauthorized sales or means or otherwise, without authorization, constitutes trademark infringement and unfair competition in violation of the Lanham Act and other state and federal laws. Such infringing activity strongly suggests bad faith.
Furthermore, the Respondent’s website significantly copied the Complainant’s copyright images and text from its official websites without consent or authorization, and such blatant unauthorized copying constitutes willful copyright infringement in violation of United States law. Such copying was plainly performed in order to make the Respondent’s website appear authentic, when it was not.
Even if the Respondent is an authorized coach, his actions would still constitute bad faith. The Complainant maintains policies and procedures for coaches wherein, among other things, they are prohibited from using the Complainant’s copyright-protected material. Therefore, even if the Respondent was an authorized coach, by using copyright content, he would be in violation of the Complainant’s policies and procedures as well as intellectual property law.
More likely than not, the Respondent is attempting to perpetuate fraud on consumers by purportedly selling SHAKEOLOGY products, taking consumers’ money, but never actually sending anything to the unwitting consumers. The Respondent’s website is strikingly similar to a website previously registered and only recently removed, at <shakeologydeals.com>, where the registrant purported to sell SHAKEOLOGY products at an almost identical discounted price to the Respondent (USD 90.99 rather than USD 89.00 here). The Complainant received multiple complaints and inquiries from consumers who purchased products from <shakeologydeals.com> but never received their purchases. These consumers contacted the Complainant because they assumed that the website was associated with it. The Complainant has reason to believe that the Respondent’s website and that at <shakeologydeals.com> are connected and that the same type of fraud is being perpetuated.
It is apparent that the Respondent intentionally used the Complainant’s registered trademarks and copyright content, and registered the Domain Name, to create an illusion that the Respondent and his website were sponsored or endorsed by, or otherwise affiliated or associated with, the Complainant. Such actions further reek of bad faith intent, both with respect to initial registration of the Domain Name and its use.
The Respondent registered the Domain Name for commercial gain and to profit from the resulting consumer confusion. Such registration and use constitutes opportunistic bad faith.
It is clear that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant has rights in its SHAKEOLOGY trademark.
Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the SHAKEOLOGY trademark but adds the word “flavors” afterwards to create the Domain Name <shakeologyflavors.com>.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the Domain Name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms would not prevent a finding of confusing similarity.
The SHAKEOLOGY trademark is clearly recognizable within the Domain Name. The addition of “flavors” does not prevent the Domain Name from being confusingly similar to the SHAKEOLOGY trademark.
The Panel finds that the Domain Name is confusingly similar to the SHAKEOLOGY trademark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial 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. Here, however, the Respondent is not known by the Domain Name, and given the nature of the website to which the Domain Name once resolved i.e. one that at best creates a misleading impression that it is in some way associated with the Complainant and, at worst, is designed to cheat consumers out of their money by purportedly selling legitimate SHAKEOLOGY products but not delivering them, it would be difficult to conclude, without a proper explanation from the Respondent, that there is anything legitimate or non-commercial or fair about the Respondent’s use.
As to an absence of an intent to mislead (for commercial gain), the Respondent’s choice of Domain Name, the dominant element being the Complainant’s SHAKEOLOGY trademark with the addition of a word (“flavors”) describing a feature of the products associated with the Complainant and its trademark, (thus enhancing rather than reducing the risk of confusion), suggests the very opposite.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it seems clear that the Respondent set out to acquire a domain name that would create a misleading impression of association with the Complainant, which has then been used to resolve to a website that, without proper explanation, could not (for the reasons described above) be regarded as a bona fide offering of goods or services for the purposes of the Policy.
The Respondent has sought to create an impression of association with the Complainant for commercial ends and it appears to the Panel that there is very little the Respondent could say to challenge the Complainant’s assertion that it lacks rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use, as envisaged by the non-exhaustive list of circumstances described in paragraph 4(b) of the Policy, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website (or other online location) by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website (or other location) or of products or services on it.
Given the nature of the Domain Name and the use to which it has been put, the Respondent was aware of the Complainant’s SHAKEOLOGY trademark at the time of its registration and has sought by its use to create a misleading impression of association with the Complainant.
The circumstances of this Complaint mirror the circumstances illustrative of bad faith registration and use as described above (taken from paragraph 4(b)(iv) of the Policy).
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <shakeologyflavors.com> be transferred to the Complainant.
Date: October 22, 2019