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 Zheng Moses of Dongguang, The People’s Republic of China.
The disputed domain name <p90xhome.com> is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2010. On December 28, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On December 29, 2010, Tucows Inc. 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 January 4, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2011.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on February 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.
The Complainant’s principal place of business is Santa Monica, California, United States of America. It has operated in the field of in-home health, wellness, weight-loss and fitness solutions since 1998. In 2003, the Complainant introduced one of the main components of its business, namely the P90X®-branded fitness DVDs and kits.
The Complainant has registered the P90X marks in various jurisdictions since 2003.
The disputed domain name <p90xhome.com> was registered in April 2010.
The evidence submitted by the Complainant shows that the disputed domain name was registered on April 19, 2010, long after the P90X marks were registered. The disputed domain name incorporates the entirety of the Complainant’s mark.
The Complainant alleges that the Respondent’s website “www.p90xhome.com” is used to advertise, offer for sale and sell counterfeit copies of the Complainant’s products, including the P90X®-branded DVDs.
The Complainant’s contentions are that:
a) The disputed domain name is confusingly similar to its mark;
b) The Respondent has no rights or legitimate interest in the disputed domain name;
c) The Respondent registered and is using the disputed domain name in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant’s contentions.
The Rules state that the Panel is required 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 appropriate, paragraph 15 of the Rules. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith.
A number of UDRP panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy, see The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
Furthermore, the addition of a non-distinctive term does not change the overall impression, see MasterCard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050.
In this case the disputed domain name <p90xhome.com> incorporates the Complainant’s registered trademark P90X. The addition of the word “home”, and the addition of the “.com”, are either generic or descriptive.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
The Complainant states that it registered the P90X mark internationally and in the United States from 2003 onwards (well before the disputed domain name was registered in 2010), and that the success of the P90X®-branded fitness DVD kits and other products and services is due in part to the Complainant’s marketing and promotional efforts. The Complainant states that the success of the P90X products has also been furthered by the “word of mouth buzz” of the consumers about its products.
In the circumstances, the Respondent must have purchased the disputed domain name “with full knowledge of Complainant’s pre-existing rights.”
The Respondent had the opportunity to counter the Complainant’s case and show that it has rights or legitimate interests in the disputed domain name: for example by reference to the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so.
The Panel is satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
The Complainant states that the Respondent registered and used the disputed domain name to sell “counterfeit versions of the Complainant’s products”, and that such conduct falls within the bad faith circumstances set out in paragraphs 4(b)(iii) and (iv) of the Policy.
It may seem like an obvious statement that selling counterfeit goods by making use of another’s trademark so as to mislead purchasers constitutes bad faith for the purposes of the Policy. Many UDRP decisions deal with this issue, for example, Bayer AG v. Globex International, WIPO Case No. D2007-0812 (stating that the sale “of what may very well be counterfeit pharmaceutical products under a complainant’s trademark constitutes evidence of registration and use in bad faith of a domain name, especially in circumstances where the Respondent fails to adduce evidence of rights or legitimate interests to the trademark in question”).
The counterfeit allegation is a serious one. The Respondent had the opportunity to answer the allegation by submitting a Response under paragraph 5 of the Rules. It has not done so. Given the Panel’s finding in relation to the confusingly similar nature of the disputed domain name, the finding in relation to rights and legitimate interests, and the fact that the Respondent has failed to submit a Response, the Panel is satisfied that the Complainant has proved the bad faith requirement of paragraph 4(a)(iii) of the Policy.
For all 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 <p90xhome.com> be transferred to the Complainant.
Anthony R. Connerty
Sole Panelist
Dated: February 22, 2011