WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beachbody, LLC v. Venkateshwara Distributor Private Limited.
Case No. D2011-0698
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 Venkateshwara Distributor Private Limited. of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name <wp90x.com> is registered with Tirupati Domains and Hosting Pvt Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2011. On April 21, 2011, the Center transmitted by email to Tirupati Domains and Hosting Pvt Ltd. a request for registrar verification in connection with the disputed domain name. On April 22, 2011, Tirupati Domains and Hosting Pvt 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 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 April 28, 2011. The due date for Response was May 18, 2011 (Rules, paragraph 5(a)). The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 19, 2011.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on May 26, 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
The Complainant is a company in the field of in-home health, wellness, weight loss and fitness solutions. One of the Complainant’s products is P90X-branded fitness DVD and kit.
The Complainant filed for and obtained trademark registrations for P90X in the United States of America and under the Madrid Agreement and Protocol (Annexes D to J to the Complaint), referring to first use in 2003.
The disputed domain name was registered on November 01, 2010.
The Panel accessed the disputed domain name on June 6, 2011. The disputed domain name connects to a pay-per-click webpage with several links to other websites related to the Complainant’s business (health and care).
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The disputed domain name is confusingly similar to the Complainant’s well-known and successful trademark P90X. The Complainant has obtained trademark registrations for P90X in various jurisdictions throughout the world. The Respondent registered the disputed domain name with full knowledge of the Complainant’s pre-existing rights. The disputed domain name incorporates the entirety of the Complainant’s trademark in combination with the letter “w”, which is not enough to distinguish the disputed domain name from the Complainant’s trademark and rather increases the likely consumer confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not affiliated with the Complainant. The disputed domain name currently displays several links to divert Internet users to websites that offer potentially counterfeit versions of the Complainant’s products and deceive consumers into falsely believing that there is an association, affiliation or sponsorship relationship between the Respondent and the Complainant. The Respondent’s use of the disputed domain name evidences the Respondent’s illegitimate purpose.
(iii) The disputed domain name was registered and is being used in bad faith. The disputed domain name has been being used to advertise and offer for sale potentially counterfeit versions of the Complainant’s products, which deceives consumers to falsely believing there is a connection between the disputed domain name and the Complainant. The Respondent has attempted to take commercial advantage of the Complainant’s trademark and commercial reputation. The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The 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.
A. Identical or Confusingly Similar
Annexes D to J to the Complaint demonstrate registrations of the P90X trademark in the United States of America and under the Madrid Agreement and Protocol.
The trademark P90X is wholly encompassed within the disputed domain name and is preceded with the letter “w”.
The Panel considers that the mere addition of the letter “w” before the Complainant’s trademark is not sufficient to refute confusing similarity in the present case. Numerous panels have found similarity in the act of adding, deleting, substituting or reversing the order of letters in a mark. See: Yurtici Kargo Servisi A.S. v. Yurticicargo Yurticikargo, WIPO Case No. D2003-0707; CareerBuilder, LLC v. Azra Khan, WIPO Case No. D2003-0493; The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145; Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Hobsons, Inc. v. Peter Carrington a/k/a/ Party Night Inc., WIPO Case No. D2003-0317; America Online Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, WIPO Case No. D2000-1495; Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362, etc.
Furthermore, the letter “w” is commonly related to Internet operations, as part of the acronym for the world wide web. So, several companies use this letter to identify the web version of some of its products or services.
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) 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 trademark at issue.
Based on the Respondents default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant filed screenshots of the web pages that were published at the disputed domain name showing pay-per-click pages filled with links to competitors’ websites.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant’s trademark was already known in the field of fitness DVDs when the disputed domain name was registered.
The disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer fitness products, including DVDs.
Therefore, in doing so, the Respondent:
(i) creates a likelihood of confusion with the Complainant’s trademark;
(ii) obtains click-through revenue from this practice; and
(iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, previous UDRP decisions have considered this type of usage of a domain name enough to demonstrate bad faith. “It is now well-established that the use of a parking page in this manner is strong evidence of bad faith” (Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474). See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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 <wp90x.com> be transferred to the Complainant.
Dated: June 9, 2011