Beachbody, LLC v. Above.com Domain Privacy
Claim Number: FA1408001577482
Complainant is Beachbody, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beachboday.com>, <beachbofy.com>, <beachbpdy.com>, <getinsainty.com>, <getinsaniti.com>, <gotinsanity.com>, <roxkinbody.com>, <teabeachbody.com>, <teambeachbocy.com>, <teambeachbosy.com>, registered with Above.Com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2014; the National Arbitration Forum received payment on August 28, 2014.
On September 2, 2014, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <beachboday.com>, <beachbofy.com>, <beachbpdy.com>, <getinsainty.com>, <getinsaniti.com>, <gotinsanity.com>, <roxkinbody.com>, <teabeachbody.com>, <teambeachbocy.com>, and <teambeachbosy.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 3, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@beachboday.com, postmaster@beachbofy.com, postmaster@beachbpdy.com, postmaster@getinsainty.com, postmaster@getinsaniti.com, postmaster@gotinsanity.com, postmaster@roxkinbody.com, postmaster@teabeachbody.com, postmaster@teambeachbocy.com, and postmaster@teambeachbosy.com. Also on October 14, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights as detailed later and alleges that the disputed domain names are confusingly similar to one or other of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant owns United States Patent and Trademark Office ("USPTO") registrations for BEACHBODY (e.g., Reg. No. 2,665,151, registered Dec. 24, 2002), INSANITY (Reg. No. 3,696,777, registered Oct. 2, 2008), ROCKIN’ BODY (Reg. No. 3,406,325, registered Apr. 1, 2008), and TEAM BEACHBODY (Reg. No. 3,522,191, registered Oct. 21, 2008) (collectively, “the Trademarks”);
2. The Trademarks are used by Complainant in relation to its business of physical exercise and nutrition programs and its provision of home fitness DVDs and peripheral goods.
3. The disputed domain names were registered on the following dates:
<beachboday.com> on September 6, 2009;
<beachbofy.com> on August 2, 2012;
<beachbpdy.com> on March 29, 2009;
<getinsainty.com> on September 2, 2011;
<getinsaniti.com> on July 30, 2012;
<gotinsanity.com> on February 16, 2010;
<roxkinbody.com> on July 10, 2013;
<teabeachbody.com> on November 6, 2013;
<teambeachbocy.com> on April 28, 2014;
<teambeachbosy.com> on August 7, 2011;
4. The domain names resolve to websites hosting advertisements for goods and services which in some cases compete with Complainant’s goods and services;
5. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. Complainant owns US Federal trademark registrations for:
INSANITY,
ROCKIN’ BODY,
BEACHBODY, and
TEAM BEACHBODY,
and so has trademark rights in those terms.
All the disputed domain names carry the gTLD extension, “.com”, which can be disregarded for the purposes of comparison with the Trademarks (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The comparisons then reduce to:
BEACHBODY with
beachboday
beachbofy
beachbpdy;
TEAM BEACHBODY with
teabeachbody
teambeachbocy
teambeachbosy;
INSANITY with
getinsainty
getinsaniti
gotinsanity; and
ROCKIN’ BODY with
roxkinbody.
Complainant alleges that the domain names are typosquatted and obviously misspelt iterations of the Trademarks. For reasons which follow, Panel has little doubt about Respondent’s intentions or any cause to question Complainant’s assertion that typosquatting. Nonetheless, there remains the question of whether the domain names are confusingly similar to the Trademarks.
The domain names may indeed be seen as obvious misspellings of the Trademarks if it is assumed that the Trademarks are already known and recognized by consumers, but that assumption raises the long debated question of whether the reputation of a trademark is a factor to be taken into consideration for the purposes of this aspect of the Policy. Many panelists say it should not and for good reason. Enough said that the disputed domain names must exhibit a sufficient degree of objective similarity to be regarded as confusingly similar.
In these proceedings that must, on any analysis, be so in all instances with the one possible exception of the domain name <roxkinbody.com>. With that exception, the disputed domain names are indeed obvious misspellings of the corresponding trademark and would be readily recognized as such. On the other hand, albeit that the term, roxkinbody, differs from the relevant trademark by only one letter, it is the lack of punctuation and the phonetic differences which make it impossible to rightly conclude that there is confusing similarity.
Panel is also satisfied that the disputed domain names, with the exception of <roxkinbody.com>, are confusingly similar to Complainant’s trademark.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of all of the domain names except <roxkinbody.com>. The Complainant therefore fails as against that domain name.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS information lists Respondent as “Above.com Domain Privacy” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain names have been used in connection with a bona fide offering of goods or services prior to notice of the dispute. The disputed domain names resolve to promote hyperlinks, some of which relate to fitness and weight loss services and products in competition with Complainant’s own offerings in the field. Example in evidence include links such as “Lose Weight,” “Jenny Craig Weight Loss,” “Fitness Pilates Workout,” and “Beachbody Rockin Body.”
Panel finds that Complainant has established prima facie cases and so the onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, those cases are not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 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, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Complainant has, as noted, provided evidence that the domain names are used to promote an array of advertisements, some of which involve the promotion of goods and services which compete with Complainant’s business. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that Respondent is using the domain names to intentionally attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the Complainant’s trademark (see Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) where the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Accordingly, Complainant has established the third and final leg of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the following domain names and so Orders that those domain names be TRANSFERRED from Respondent to Complainant: <beachboday.com>, <beachbofy.com>, <beachbpdy.com>, <getinsainty.com>, <getinsaniti.com>, <gotinsanity.com>, <teabeachbody.com>, <teambeachbocy.com> and <teambeachbosy.com>.
Having failed to establish one of the three elements required under the ICANN Policy in respect of the domain name, <roxkinbody.com>, the Panel concludes that relief shall be DENIED and so the Panel Orders that this domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: November 18, 2014
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