WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. Benson, Linda Michelle

Case No. DAU2014-0002

1. The Parties

The Complainant is Beachbody, LLC of Santa Monica, California, United States of America (“United States”), represented by Cozen O'Connor, United States.

The Respondent is Benson, Linda Michelle of Perth, Australia.

2. The Domain Name and Registrar

The disputed domain name <beachbodyworkout.com.au> is registered with Web Address Registration Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2014. On January 31, 2014, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the disputed domain name. On February 6, 2014, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 February 19, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 13, 2014.

The Center appointed James A. Barker as the sole panelist in this matter on March 20, 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 creator and seller of in-home fitness, health and weight-loss products, including in-home exercise and fitness DVD-based workout kits, exercise gear and supplement products. The Complainant has been in this business since 1998, in the United States and other jurisdictions including the United Kingdom, Australia, Canada, and countries of the European Union. In connection with this business the Complainant has used its BEACHBODY trademark. The Complainant advertises its products through various websites, including those located at “www.beachbody.com”, “www.beachbody.com.au”, “www.beachbody.co.uk” and others. The Complainant also claims that it has marketed its products through other Internet-based advertising, in-person and televised promotional appearances by its trainers, and its infomercials, but does not provide direct evidence of this effort.

The Complainant has various registered marks for BEACHBODY, including an international mark first registered in 2006, a mark registered in Australia in July 2011, and a mark registered in the United States in July 2004.

The disputed domain name was created on July 24, 2013. The Complainant provides evidence (screen shots) of the Respondent’s website at the disputed domain name, as at January 30, 2014. That website appears to feature of series of the Complainant’s products advertised for sale, and features similar product images and graphics, and otherwise a “look and feel” to that used on the Complainant’s own websites.

In December 2013, through its agent, the Complainant sent a “cease and desist” email to the Respondent claiming that the Respondent’s registration of the disputed domain name violated the Complainant’s intellectual property rights. The Complainant says that the Respondent did not reply to that letter.

The Complainant refers to a series of past domain name disputes involving its mark, in which it has been a successful complainant. More recently, these include Beachbody, LLC v. Pan, Wei Hong, WIPO Case No. DAU2013-0020; Beachbody, LLC v. Jianzong Zhan, WIPO Case No. D2012-0819; and Beachbody, LLC v. Gerard Casazza, WIPO Case No. D2012-0532, among others.

5. Parties’ Contentions

A. Complainant

The Complainant claims that, given its reputation and registered marks, there can be little question that the Respondent purchased the disputed domain name with full knowledge of, and the intent to trade off, the Complainant’s pre-existing rights.

The Complainant claims that the disputed domain name is confusingly similar to its mark, as the disputed domain name incorporates the entirety of that mark in combination with the descriptive word “workout”. The addition of that descriptive term fails to distinguish, and in fact increases the likelihood of confusion, among consumers as to the source of the disputed domain name and associated website.

The Complainant states that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no evidence to suggest that the Respondent registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services. Rather, the facts of this case indicate the exact opposite since the Respondent was and is advertising for sale unauthorized and counterfeit copies of the Complainant’s products, using a website which mimics the look and feel of the Complainant’s website at “www.beachbody.com”. In addition, the Respondent uses a copyright notice “© 2012 Beachbody, LLC. All rights reserved” at the bottom of each of its webpages, including the same Terms of Use and the same privacy policy, and contact email as the Complainant, to purportedly invite consumers to inquire about the Beachbody products. This further deceives consumers into mistakenly believing that the Respondent’s website is official and authorized by the Complainant, which it is not. The Respondent has also created a corresponding Facebook account titled “Beachbody Australia” and used the Complainant’s company logo and profile image.

From this evidence, the Complainant also states that there can be little question that the Respondent has registered and used the disputed domain name in bad faith. The Respondent has attempted to take commercial advantage of the Complainant’s goodwill, in which the Complainant has invested significant time, effort and resources. The Complainant says that this conduct constitutes bad faith within the meaning of paragraphs 4(b)(iii) and (iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complaint, nor make any other communication in connection with this case.

6. Discussion and Findings

For the Complaint to succeed, under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a name, 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 was registered in bad faith or subsequently used in bad faith.

The onus is on the Complainant to establish each of the above circumstances. These circumstances are discussed below. The Panel notes that the Policy is, with some notable exceptions, substantially similar to the UDRP and, as such, the Panel has drawn on authority concerning the UDRP, in relation to similar terms of the Policy.

A. Identical or Confusingly Similar

Under paragraph 4(a) of the Policy, the Complainant must establish that it has rights in a trademark and that the disputed domain name is identical or confusingly similar to that mark. The Panel finds that the Complainant has clearly established both of these elements.

The Complainant has provided evidence that it has rights in a registered mark for BEACHBODY.

There is little doubt that the disputed domain name is confusingly similar to the Complainant’s registered mark. It is a well-established principle under the Policy that the “.com.au” extension is to be typically disregarded for the purpose of comparing a domain name to a mark. After disregarding that element, the remaining term in the disputed domain name is “beachbodyworkout”. This term incorporates the Complainant’s mark entirely, as the first appearing element. The addition of the descriptive term “workout”, as the Complainant argues, only serves to reinforce confusion with its mark. This is because that term is obviously and closely associated with the Complainant’s business and products.

In this respect, the circumstances of this case are similar to a previous case involving the Complainant’s mark: Beachbody, LLC v. Gerard Casazza, WIPO Case No. D2012-0532. In that case, the panel found that: “In this instance, the disputed domain name incorporates the Complainant’s BEACHBODY mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark…In the Panel’s view, the confusing similarity of the disputed domain name to the Complainant’s mark is not overcome merely by the addition of the word ‘supplements’, particularly in view of the nature of the Complainant’s trade. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524.” The Panel considers that the addition of the generic term “workout” to the Complainant’s mark is logically similar to the addition of the generic term “supplements” in Beachbody, LLC v. Gerard Casazza, supra. Both terms have a close association with the connotation of the Complainant’s mark. As such, a finding of confusing similarity in this case is consistent with the finding in that previous case.

For these reasons, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s mark in which it has rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the disputed domain name. This paragraph requires the Complainant to present a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant has made a prima facie case, the burden of production shifts to the Respondent to refute it. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1. The Complainant has made a sufficient case against the Respondent, and the circumstances of this case otherwise strongly indicate a case in the Complainant’s favor.

It has also been decided in other proceedings under the UDRP that a respondent’s website may be looked at in determining whether the respondent has rights or legitimate interests in a domain name (and also whether he registered and has used it in bad faith): Asset Loan Co. Pty Ltd v. Gregory Rogers, WIPO Case No. D2006-0300. The Panel has considered the Respondent’s website as compelling evidence for a finding against it in this case.

This case appears to be an obvious one of outright fraud on the Complainant. The Respondent’s website is self-evidently designed to give the appearance of a legitimate website operated by the Complainant. The Complainant has disavowed any association with or license to the Respondent. The Respondent has not denied the allegations against it. The content of the Respondent’s website, and its registration of a confusingly similar domain name to the Complainant’s mark, very strongly indicate that the Respondent has no rights or legitimate interests in the disputed domain name.

For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

Based on the evidence in this case, and for similar reasons to those set out above, the Panel also finds that the disputed domain name has been registered and used in bad faith. This is for the following reasons:

Firstly, the Panel finds that the Respondent was clearly aware of the Complainant’s mark when it registered, and then used the disputed domain name. The Complainant’s uncontested evidence is that its marks are well-known. The series of previous cases under the Policy involving the Complainant’s mark are, in themselves, evidence that the Complainant’s mark is well-known and a target for cyber-squatters.

Secondly, the disputed domain name resolves to a website which falsely suggests an association with the Complainant and, on its face, infringes other intellectual property rights of the Complainant.

Thirdly, the Complainant has sent a “cease and desist” letter to the Respondent in December 2013, and the Respondent was on notice of the Complainant’s rights and chose not to reply.

The evidence in this case points directly to bad faith under paragraph 4(b)(iv) of the Policy. That paragraph provides (in part) that there is evidence of bad faith in circumstances where the Respondent, by using the disputed domain name, has intentionally attempted 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, sponsorship or affiliation, or endorsement of the Respondent’s website. The Respondent’s website features the Complainant’s products for sale and, as such, is self-evidently operating for commercial gain. The extent of apparent infringement and copying of the appearance of the Complainant’s own website clearly points to an intention by the Respondent to profit from confusion with the Complainant’s mark.

For these reasons, the Panel finds that the Complainant has established that the disputed domain name was registered, and has been used, in bad faith.

7. Decision

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 <beachbodyworkout.com.au> be transferred to the Complainant.

James A. Barker
Sole Panelist
Date: April 8, 2014