WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. WhoisGuard

Case No. D2011-1301

1. The Parties

Complainant is Beachbody, LLC of Santa Monica, California, United States of America represented by Cozen O’Connor, United States of America.

Respondent is WhoisGuard of Westchester, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <p90xworkoutprograms.net> (the “Domain Name”) is registered with eNom.

3. Procedural History

Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2011. On August 1, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On August 1, 2011, eNom 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 Complainant on August 5, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 8, 2011.

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 Respondent of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9, 2011.

The Center appointed Andrew J. Park as the sole panelist in this matter on September 9, 2011. 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

Complainant is a U.S. company incorporated in the state of California. It has been in the business of in-home health, wellness, weight loss, and fitness solutions since 1998. It is the owner of the trademark P90X and has been using that trademark in connection with its products at least as early as July 21, 2003. Complainant is the owner of several trademark registrations in various jurisdictions throughout the world for its P90X mark.

Trademark Reg. No. Reg. Date

1. P90X (mark) 2,869,491 (U.S.) August 3, 2004

2. P90X (word mark) 2,843,063 (U.S.) May 18, 2004

3. P90X (design mark) 2,973,356 (U.S.) July 19, 2005

4. P90X (design mark) 3,669,400 (U.S.) August 18, 2005

5. P90X (word mark) 3,444,723 (U.S.) June 10, 2008

6. P90X 974,040 (International) July 25, 2008

Complainant is also the registrant of the following domain names: <p90x.com> and <p90x.net>.

Complainant’s P90X-branded DVD fitness programs and kits are well-known. The P90X-branded products are advertised and promoted through Complainant’s websites, print and other internet-based advertising, infomercials, and other means. Complainant used its P90X trademarks, sold its P90X-branded DVDs, kits, and other products and services in commerce, and obtained several trademark registrations long before the Domain Name <p90xworkoutprograms.net> was registered on June 17, 2010.

5. Parties’ Contentions

A. Complainant

Complainant’s main arguments are as follows:

1. Identical or Confusingly Similar

Complainant contends that the Domain Name is confusingly similar to Complainant’s P90X trademark. In particular, Complainant argues that P90X is the only mark utilized in the Domain Name and “workoutprograms” is descriptive for “workout” and “programs.” Complainant argues that the addition of those descriptive words does not distinguish the Domain Name from Complainant’s marks and they in fact increase the likely consumer confusion.

2. Rights or Legitimate Interest

Complainant contends that Respondent is not affiliated with Complainant and there is no evidence to suggest that Respondent has registered the Domain Name to advance legitimate interests or for the bona fide offering of legitimate goods or services. In particular, Complainant alleges that Respondent’s website offers potentially counterfeit versions of Complainant’s products and deceives customers into falsely believing that an association, affiliation, or sponsorship relationship exists between the Domain Name website and Complainant. Complainant also alleges that Respondent is using the Domain Name to create initial interest confusion and divert profits away from Complainant.

3. Registered and Used in Bad Faith

Complainant contends that Respondent registered and used the Domain Name in bad faith because Respondent has used and uses the Domain Name website to advertise and offer for sale potentially counterfeit versions of Complainant’s products, which deceives consumers into falsely believing that an association, affiliation, or sponsorship relationship exists between the Domain Name website and Complainant. In particular, Complainant alleges that Respondent registered the Domain Name (1) attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the website, and (2) primarily for the purpose of disrupting the business of a competitor.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Analysis of the Complaint

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the Domain Name to Complainant. Those requirements are that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of said Rules.

A. Identical or Confusingly Similar

Complainant has established its rights in the mark P90X by virtue of the evidence of its trademark registrations in the United States, and its registered domain names <p90x.com> and <p90x.net>. The Panel is therefore satisfied that P90X is a registered trademark owned by Complainant.

The next question is whether the Domain Name is identical or confusingly similar to the trademark. The answer to this question is yes. Respondent’s Domain Name incorporates in its entirety the P90X mark. The additional characters “workoutprograms” are descriptive for “workout” and “programs.” The addition of those descriptive words does not distinguish the Domain Name from Complainant’s P90X trademark. The fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks, e.g., EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (the generic word “parts” added to mark EAUTO in <eautoparts.com> was found to be confusingly similar).

For the above reasons, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s P90X trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances, if found by the Panel to be proved based on its evaluation of all evidence submitted, shall demonstrate rights to or legitimate interests in the Domain Name. Those circumstances are described as follows:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”

Complainant owns several trademark registrations for P90X that are registered in the United States. (See Annexes E-K of the Complaint.) Complainant also owns the domain names <p90x.com> and <p90x.net>. The websites for those domain names redirect Internet users to Complainant’s website “www.beachbody.com” where Complainant sells its P90X-branded DVDs, kits, and other products and services. On the other hand, Respondent does not appear to own a registered trademark with the term “P90X,” does not appear to trade under the name “P90X,” does not appear to be known by the Domain Name, and has not shown any demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. Moreover, Complainant has not authorized Respondent to use the P90X trademark as a domain name or otherwise. Thus, Respondent never had rights or legitimate interests under the Policy in owning/using the Domain Name itself.

Furthermore, Respondent is not an authorized retailer for the purpose of the Policy of Complainant. Although depending on the circumstances, it may not be a trademark infringement to resell or promote for resale genuine trademarked products by making reference to the trademark without the authorization of the trademark owner, any such offering of goods or services should meet some minimum requirements. See, e.g., Oki Data Americas Inc. v. ASD, Inc., WIPO Case No. D2001-0903), which stated:

Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (citations omitted) (bait and switch is not legitimate);

The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents.

In the present case Respondent’s website does not indicate the registrant’s relationship with the trademark owner and through some of the links it is possible to have access to the websites of Complainant’s competitors, e.g., “www.futurefitnesscenters.com” and “www.AFCfitness.com”. [See Annex L of the Complaint] Accordingly, Respondent’s use of the Domain Name is not a bona fide commercial use of a domain name.

Under these circumstances and absent evidence to the contrary, the Panel is unable to find any evidence that would establish that Respondent has rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following conduct is sufficient to support a finding of bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with 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.”

As already mentioned, Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the Domain Name.

Nevertheless, the Panel still has the responsibility of determining which of Complainant’s assertions are established as facts, and whether the conclusions asserted by Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

The evidence, which is not rebutted by Respondent, shows that Respondent had attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s P90X trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s website. Accordingly, the Panel finds that the only credible explanation for the use of the Domain Name is to take advantage of the similarity between the Domain Name and Complainant’s trademark to draw Internet users to that website for commercial advantage. No convincing evidence has been presented showing Respondent has any connection to the name “P90X.”

Additionally, the Panel finds that Respondent’s behavior constitutes evidence of the registration and use of the Domain Name in bad faith under paragraph 4(b)(iv). As discussed above, by the time the Domain Name was registered on June 17, 2010, Complainant’s well-known P90X-branded DVDs, kits, and other products and services had already achieved great success since their introduction in 2003. Moreover, Complainant had been the owner of multiple registrations for the P90X trademark in various jurisdictions throughout the world since May 2004. (See Annexes E-K to the Complaint.) Accordingly, the evidence provided by Complainant with respect to Respondent’s use of the Domain Name indicates that Respondent has used the Domain Name to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website. Accordingly, this Panel is satisfied that Respondent has used the Domain Name in bad faith.

For the above reasons, the Panel finds that Complainant has shown that the Domain Name “has been registered and is being used in bad faith” by Respondent.

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 Name <p90xworkoutprograms.net> be transferred to Complainant.

Andrew J. Park
Sole Panelist
Dated: September 23, 2011