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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Beachbody, LLC v. John Drake

Case No. D2012-1100

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 Respondent is John Drake of Taipei, China.

2. The Domain Name and Registrar

The disputed domain name <getp90x.com> 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 May 25, 2012. On May 29, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 1, 2012, the Registrar 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 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 Respondent of the Complaint, and the proceedings commenced on June 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2012.

The Center appointed Mladen Vukmir as the sole panelist in this matter on July 4, 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 California based company, dealing in the field of in-home health, wellness, weight loss and fitness solutions since 1998. As part of its business, the Complainant develops, produces, sells and distributes in-home fitness DVDs and kits such as the P90X® Extreme Home Fitness DVDs and kits. The Complainant uses the website “www.beachbody.com”, as well as social networks, inter alia, for the promotion of its identity, brands and products on the Internet.

The Complainant protected its P90X mark by obtaining several United States (U.S.) trademark registrations, as well as an International Registration. These registrations include, among others, the following verbal and figurative trademarks:

- U.S. Reg. No. 2,869,491 for the P90X word mark for “nutritional and dietary supplements” in International Class 5, registered on August 3, 2004 (Annex E to the Complaint);

- U.S. Reg. No. 2,869,490 for the P90X & Design mark for “meal replacement bars, nutritional and dietary supplements” in International Class 5, registered on August 3, 2004 (Annex F to the Complaint);

- U.S. Reg. No. 2,843,063 for the P90X word mark for “educational services, namely physical fitness instruction” in International Class 41 and for “dietary instruction, namely nutritional counseling services” in International Class 44, registered on May 18, 2004 (Annex G to the Complaint);

- U.S. Reg. No. 2,973,356 for the P90X & Design mark for “educational services, namely instruction in the use of exercise equipment and diet programs” in International Class 41, registered on July 19, 2005 (Annex H to the Complaint);

- U.S. Reg. No. 3,669,400 for the P90X & Design mark for “pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on August 18, 2009 (Annex I to the Complaint);

- U.S. Reg. No. 3,444,723 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on June 10, 2008 (Annex J to the Complaint);

- International Reg. No. 974040 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on July 25, 2008 (Annex K to the Complaint).

The Panel reviewed the print-outs of representative pages of the website to which the domain name <p90x.com> resolves, as well as the Complainant’s Facebook company page and its P90X® and P90X2® product pages on Facebook, submitted by the Complainant as Annex D to the Complaint. In accordance with the normal practice and consensus views amongst UDRP panels (see paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)), on July 18, 2012, the Panel made a limited factual research into WhoIs information for the domain names <p90x.com > and <beachbody.com> and determined that said domain names were registered on August 2, 2002 and August 17, 1999, respectively, and that the registrant of the same is the Complainant.

There is no information available about the Respondent other than the information contained in the verification response of the Registrar, transmitted by email to the Center on June 1, 2012; and the Complaint, particularly, the pertinent Annex M.

According to a print-out of the WhoIs records for the disputed domain name (Annex A to the Complaint), the disputed domain name <getp90x.com> was created on February 10, 2009.

The Panel notes that the majority of the Complainant’s registered P90X trademarks and its flagship domain names <beachbody.com> and <p90x.com> were registered before the disputed domain name <getp90x.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it has been a leader in the field of in-home health, wellness, weight loss, and fitness solutions since 1998;

- one of the main components of its business encompasses the development, production, sale and distribution of its Beachbody® family of health, wellness, weight loss and fitness products and services, including its popular in-home fitness DVDs and kits such as the P90X® Extreme Home Fitness DVDs and kits;

- its well-known P90X®-branded fitness DVDs, kits and other P90X®-branded products have achieved great success since their introduction in 2003;

- the Complainant has invested significant marketing and promotional efforts into the furtherance of its P90X® branded goods and services, including advertising and promotion of the P90X mark, name and products and services through such channels as company and product websites (including its flagship website located at “www.beachbody.com” and “www.p90x.com”), its Facebook company and product pages, substantial print and other internet-based advertising, as well as in-person and televised promotional appearances by its trainers and its infomercials, among other efforts;

- the Complainant and its P90X mark have acquired a valuable reputation and goodwill among consumers, purchasers and members of the public at large;

- the Complainant has sold more than 3.5 million copies of its P90X® Extreme Home Fitness kits and has over half a million fans on its Facebook fan page;

- the Respondent purchased the disputed domain name with full knowledge and the intent to trade off of the Complainant’s pre-existing rights;

- the disputed domain name <getp90x.com> is confusingly similar to the Complainant’s P90X trademarks and domain name, because it wholly incorporates the entirety of the Complainant’s P90X trademark with the addition of a generic word “get” and the generic “.com” domain extension;

- the Respondent’s activities surrounding the disputed domain name demonstrate an utter lack of a legitimate interest or a bona fide offering of legitimate goods or services, because the Respondent is not affiliated with the Complainant and it has used the disputed domain name to promote products and services at the website “www.getp90x”, which directly compete with the products and services offered by the Complainant in the fields of health, fitness and exercise;

- the Respondent’s registration and use of the disputed domain name and associated website is in bad faith, given the fact that the Respondent has used the website located at “www.getp90x.com”, and thus directly uses the Complainant’s well-known P90X trademark, to advertise and promote competing third-party fitness, exercise and bodybuilding products and services, and has received click-through commissions from Internet users clicking on the links in these advertisements.

B. Respondent

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

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the disputed domain name, 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.

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of a number of P90X trademarks in the United States, as well as of an International Registration No. 974040 under the Madrid Agreement and Protocol designating numerous jurisdictions, including China, where the Respondent is apparently located (Taipei, China). Further, the Complainant has established that its P90X trademarks have been extensively used on the Internet through the classified advertising business the Complainant carries, inter alia, on its websites “www.beachbody.com” and “www.p90x.com”.

It is well established that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine the likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being disregarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2 of the WIPO Overview 2.0).

It is evident that the disputed domain name <getp90x.com> incorporates the Complainant’s P90X trademark in its entirety, and that the P90X trademark of the Complainant is clearly recognizable within the same. In other words, the disputed domain name consists of three parts, of which the main part carrying the semantic load is identical to the Complainant’s distinctive trademark P90X used in the disputed domain name in its entirety, without any modification. The remaining two parts are the word “get” and the applicable top-level suffix “.com”.

The question where the Panel pauses is whether adding the word “get” to the characters used in the Complainant’s trademark (i.e. “p90x”) is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s P90X trademark.

The Complainant has presented enough evidence showing that it has extensively used its P90X trademark, including on the Internet, so the Panel accepts and concludes that P90X is a widely known mark within the relevant Internet community.

The Panel upholds the Complainant’s contention that the word “get” is descriptive to the P90X trademark used by the Respondent in combination with said word in creation of the disputed domain name. As the Complainant asserts, “…the common meaning of the term ‘GET’ is descriptive as to obtain, acquire, or buy something. Particularly, adding the descriptive term ‘GET’ to Beachbody’s P90X mark may suggest that Respondent’s website is a location where a consumer may obtain the P90X®-branded products. Since Beachbody advertises, sells and distributes the P90X®-branded exercise DVDs, fitness kits, nutritional supplements as well as related health, wellness and fitness products and services under the P90X® brand, consumers who visit GetP90X.COM are likely to be confused based upon the false belief that GetP90X.COM is owned and operated by Beachbody as a website for promoting and selling P90X®-branded products and services”. Thus, in the Panel’s view, there remains significant room for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name with the Complainant.

Therefore, it is safe to conclude that the disputed domain name <getp90x.com> trades on the renown of the Complainant’s P90X trademark. The presence of the Complainant’s P90X trademark in the disputed domain name certainly bears weight as a signal to the potential consumers and the disputed domain name benefits from the same, especially, given that the word “get” by itself has no distinctive character, and as such can be considered as a common/generic term. Moreover, as the Complainant demonstrated, in this case, the Respondent, clearly did not intend to distinguish the disputed domain name from the Complainant’s trademark by adding the generic term “get” to the Complainant’s entire unique trademark P90X. On the contrary, adding said generic word may, in fact, reinforces consumer confusion as to the connection between the Complainant's trademark and the disputed domain name.

It should be noted, that panels have found confusing similarity in several earlier UDRP cases based on the circumstances involving domain names comprised of a known trademark and a generic term. Confusing similarity was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the trademark itself. See Entertainment Shoping AG v. Nischal Soni, Sonik Technologies, WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd., WIPO Case No. D2000-0275; Société Air France v. R Blue, WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant, WIPO Case No. D2007-0930. Also, see the generally adopted UDRP panel views under paragraph 1.9 of the WIPO Overview 2.0.

Taking into consideration the renown of the Complainant’s P90X trademark and the association induced by the term “p90x” in the disputed domain name, as well as the previous practice in the UDRP, in this Panel’s view, the word “get” is not sufficient to overcome the overall confusing similarity between the disputed domain name <getp90x.com> and the Complainant’s P90X trademarks.

As for the applicable top-level “.com” suffix in the disputed domain name, it is a consensus view that it is usually disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied Policy, paragraph 4(a)(i), i.e. has proven that the disputed domain name <getp90x.com> is confusingly similar to the its P90X trademarks.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [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 trade mark or service mark at issue.

The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP… If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant…”.

In the case at hand, the Complainant has established that it is the owner of a number of P90X trademarks protected in various jurisdictions around the world, and that it has extensively used the same trademark on the Internet through its websites “www.beachbody.com” and “www.p90x.com”, as well as through other channels. Furthermore, the Complainant has stated that it neither is in any manner affiliated with the Respondent nor has authorized, licensed, permitted or otherwise consented to the Respondent’s use of its P90X trademark in the disputed domain name.

The Respondent failed to deliver a Response to the Complaint or give any explanation as to why the disputed domain name was chosen and registered, notwithstanding the Respondent’s announcement in its response of April 30, 2012 to the Complainant’s cease and desist letter of April 23, 2012, that the Respondent intended to contest any possible complaint filed by the Complainant in accordance with the Policy.

The Panel furthermore observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant.

In addition, there is no indication that the Respondent is commonly known by the disputed domain name, that it has used the same in connection with bona fide offering of goods or services, or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. On the contrary, the Panel finds that it can be safely concluded that the Respondent deliberately chose to include the Complainant’s P90X trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use.

Given the above, the Panel finds that the Complainant has made the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

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

(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.

With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its P90X trademark. As the Complainant pointed out in the Complaint, “Respondent’s use of the “GET P90X” and “EXTREME HOME FITNESS DVD PROGRAM” title banner and his selection of an image relating to weight-lifting and exercising shows that Respondent had knowledge of Beachbody’s P90X® Extreme Home Fitness program, DVDs and exercise kit prior to the registration of the domain name and the creation of the website”. On the other hand, the Complainant provided sufficient evidence to show that it has established a significant business in the field of in-home health, wellness, weight loss, and fitness solutions and that its P90X branded goods and services have been quite successful and popular among the relevant consumer segment due to heavy marketing and promotion, including through such channels as company and product websites (including “www.beachbody.com“ and “www.p90x.com“), its Facebook company and product pages and other Internet-based advertising, among other efforts.

Finally, the evidence of the content available on the website under the disputed domain name <getp90x.com>, provided by the Complainant in Annex L to the Complaint, indicates that the Respondent uses the website at the disputed domain name to promote products and services competitive to those offered by the Complainant and to profit from click-through commissions through Google’s “Adsense” program.

Therefore, it is safe to assume that the Respondent was aware of the Complainant, its P90X trademark and the Complainant’s business, and that it has registered the disputed domain name in order to unfairly trade on the renown of the Complaint’s trademark. In this Panel’s view, it cannot be denied that the term “p90x” carries distinction, and given the above-described use of the disputed domain name by the Respondent, it is obvious that by using the disputed domain name, the 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 the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel, therefore, finds paragraph 4(b)(iv) of the Policy to be applicable in this case.

In view of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

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 name <getp90x.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Dated: July 18, 2012

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