The Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States.
The Respondent is Liu Wan of Shanghai, China.
The disputed domain names <fitnessp90x.com>, <p90x-dvdset.com>, <p90x2dvdsets.com> are registered with Beijing Innovative Linkage Technology Ltd. dba dns.com.cn. The disputed domain name <p90x2dvds.com> is registered with Bizcn.com, Inc. (the “Registrars”). The disputed domain names will be collectively referred to as the Disputed Domain Names.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 10, 2012. On July 11, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 12 and 13, 2012, Beijing Innovative Linkage Technology Ltd. dba dns.com.cn and Bizcn.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 16, 2012, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 July 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 15, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 5, 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.
The Complainant is in the field of health, wellness, weight-loss and fitness products since 1998. They have been producing and selling in-home fitness DVDs and kits under the brands P90X and P90X2 since 2003 and 2011 respectively. Although these DVDs and kits are promoted online, print and Internet-based advertising, televised promotional appearances of fitness coaches and infomercials, they are sold only via television infomercials, the Complainant’s websites under the domain names <breachbody.com>, <p90x.com> and <p90x2.com> and authorized sales representatives known as “Beachbody Coaches” who reside only in the United States. The Complainant has sold over 3.5 million copies of its P90X fitness kits with over half a million fans on its Facebook fan page.
The Complainant has registered P90X as a trade mark. Some of these registrations include:
Jurisdiction | Trademark number | Registration date |
|
United States |
2,843,063 |
May 18, 2004 |
|
United States |
2,869,491 |
August 3, 2004 |
|
Madrid System |
974040 |
July 25, 2008 |
The Complainant has also registered P90X2 as a trade mark. Some of these registrations include:
Jurisdiction | Trademark number | Registration date |
|
United States |
4,072,035 |
December 13, 2011 |
|
Madrid System |
1081166 |
May 27, 2011 |
The Disputed Domain Names <p90x2dvdsets.com>, <p90x-dvdset.com>, <fitnessp90x.com>, p90x2dvds.com> were registered between April 18, 2012 and April 25, 2012. As of May 28, 2012, the Disputed Domain Names <p90x-dvdset.com> and <p90x2dvdsets.com> resolved to websites which prominently displays the word “P90X” and offered for sale online DVD sets (at significant discounts) under the trademarks P90X and P90X2. As of June 13, 2012, the Disputed Domain Name <fitnessp90x.com> resolved to a website with similar content.
The Complainant wrote to the Respondent on May 28, 2012 and May 31, 2012 requiring transfer of the Disputed Domain Names. The Respondent did not reply to the Complainant. The Complainant issued a take-down request to the web-hosts of the websites resolved from the Disputed Domain Names which led to the suspension of these websites. The hosting of the websites resolved from <p90x2dvdsets.com> and <p90x-dvdset.com> was moved to another web-host and these websites were again suspended after another take-down request was issued.
As of July 23, 2012, <p90x2dvdsets.com> redirected to <p90x2s.us>, <p90x-dvdset.com> resolved to a parking page, <fitnessp90x.com> redirected to <dvdx.org>, and <p90x2dvds.com> redirected to <ergobabycarrierau.com>. The redirected domains <p90x2s.us> and <dvdx.org> resolved to websites containing posts which discussed fitness products under the trade mark P90X and P90X2. The redirected domain <ergobabycarrierau.com> resolved to a website which offered baby carriers for sale.
The Complainant contends that:
(a) The Disputed Domain Names are identical or confusingly similar to the Complainant’s marks P90X and P90X2. The mere addition of descriptive terms “DVDset”, “DVDsets”, “DVDs” and “Fitness” fails to distinguish but increases the likelihood of confusion;
(b) The Respondent has no rights or any legitimate interests in the Disputed Domain Names. The Respondent is not affiliated with the Complainant. The Respondent is not a sales representative authorised by the Complainant. The DVDs and products offered by the Respondent under the marks P90X and P90X2 are unauthorized/counterfeit copies and therefore demonstrate the Respondent’s illegitimate purpose; and
(c) The Disputed Domain Names were registered and are being used in bad faith. The Respondent registered the Disputed Domain Names attempting to attract Internet users by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the websites resolved from the Disputed Domain Names.
The Respondent did not reply to the Complainant’s contentions.
The language of the registration agreement was Chinese and the default language of the proceedings would therefore be accordingly Chinese. However, paragraph 11(a) of the Rules empowers the Panel to determine otherwise having regard to the circumstances.
The Complainant has requested for the language of this proceeding to be English. Having reviewed the circumstances, the Panel hereby determines that English be the language of the proceedings. In arriving at this decision, the Panel took the following factors into consideration:
(a) The websites resolved from the Disputed Domain Names are entirely in clear grammatical English and indicates that the Respondent is able or has means to understand English;
(c) The Respondent has not filed a Response;
(d) The Complaint has already been filed in English. There is likely to be delay to the proceeding if the Panel maintains Chinese as the language of the proceedings; and
(e) There is no foreseeable benefit to the parties if the language of the proceedings is Chinese.
To succeed in this proceeding, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy, namely:
(a) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(c) The Disputed Domain Names have been registered and are being used in bad faith.
The Panel proceeds to consider each of these 3 limbs in turn.
The Complainant’s trademarks P90X and P90X2 are registered in the multiple jurisdictions and the Complainant accordingly enjoys trademark rights in P90X and P90X2.
The trademark P90X2 is clearly a variant of the earlier trademark P90X, and in fact incorporates the same. It may be said that all the Disputed Domain Names incorporate the mark P90X. However, for the purpose of analysis, the Panel will only address the fact that the Disputed Domain Names <fitnessp90x.com> and <p90x-dvdset.com> incorporate the mark P90X in its entirety. The only difference between these Disputed Domain Names and the mark P90X are the prefix “fitness” in <fitnessp90x.com> and the suffix “-dvdset” in <p90x-dvdset.com>. The word “fitness” describes the content and purpose of the products under the mark P90X while “-dvdset” describes the nature of the product. The Panel takes the view that these words do not assist to distinguish the Disputed Domain Names <fitnessp90x.com> and <p90x-dvdset.com> from the mark P90X. Accordingly, the Panel finds that <fitnessp90x.com> and <p90x-dvdset.com> are confusingly similar to the mark P90X.
In relation to the Disputed Domain Names <p90x2dvdsets.com> and <p90x2dvds.com>, these clearly incorporate the mark P90X2 in its entirety. The only difference between the Disputed Domain Names and the mark P90X2 are the suffix words “dvdsets” and “dvds” respectively. These again are descriptive of the nature of the products sold under the mark P90X2 and fail to distinguish the Disputed Domain Names from the mark P90X2. Accordingly, <p90x2dvdsets.com> and <p90x2dvds.com> are also confusingly similar to the mark P90X2.
The first limb of paragraph 4(a) is established for all Disputed Domain Names.
The Complainant has confirmed that the Respondent is not affiliated with the Complainant. There is no evidence before the Panel to suggest that the Respondent is commonly known by any of the Disputed Domain Names. As of May 28, 2012, the websites resolved from the Disputed Domain Names (except for <p90x2dvds.com> for which the Complainant did not provide any screenshots as evidence) appear to be commercially-driven websites. As of July 23, 2012, <p90x2dvds.com> resolved to a commercially-driven website which purportedly offered baby carriers for sale online. As such, in the absence of contrary evidence, the evidence described above and in section 4 of this Decision does show that the Disputed Domain Names are not being used for legitimate non-commercial purposes. Therefore, the Panel holds that the evidence presents a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names. Since the Respondent did not submit a Response, the prima facie case has not been rebutted and the second limb of paragraph 4(a) of the Policy is also established.
The third limb of the Policy requires the Complainant to show that the Disputed Domain Names were registered and are being used in bad faith. Paragraph 4(b)(iv) of the Policy identifies the following situation of bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”
Based on the content of the websites resolved from the various Disputed Domain Names, it is inconceivable that the Respondent was not aware of the Complainant’s trademarks P90X and P90X2 at the time of registering the Disputed Domain Names. The subsequent redirection of the Disputed Domain Names to other websites, some of which continue to relate to products under the marks P90X and P90X2, confirms that the Respondent was well aware of the Complainant’s products under these marks.
The websites resolved from the Disputed Domain Names as of May 28, 2012 were obviously motivated by commercial gain. The Panel also notes from the evidence that the material on these websites appear to closely resemble material found on the Complainant’s websites. The offering of DVD sets under the marks P90X and P90X2 and/or the sale of other products on the websites resolved from the Disputed Domain Names supports the reasonable conclusion that the Respondent is using the Disputed Domain Names to attract Internet users for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the websites or the products on the websites within the ambit of paragraph 4(b)(iv) of the Policy. The Panel therefore holds that the third limb of the Policy is established.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <fitnessp90x.com>, <p90x-dvdset.com>, <p90x2dvds.com> and <p90x2dvdsets.com> be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Dated: October 11, 2012