Beachbody, LLC v. Zhi Chao Yang
Claim Number: FA2211002018997
Complainant is Beachbody, LLC (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California. Respondent is Zhi Chao Yang (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <beachbodykndemand.com>, <beachbodyondemaend.com>, and <beachbodyoneemand.com>, registered with Chengdu West Dimension Digital Technology Co., 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 4, 2022; Forum received payment on November 4, 2022. The Complaint was submitted in English.
On November 7, 2022, Chengdu West Dimension Digital Technology Co., Ltd. confirmed by e-mail to Forum that the <beachbodykndemand.com>, <beachbodyondemaend.com>, and <beachbodyoneemand.com> domain names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. has verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., 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 November 8, 2022, Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 28, 2022 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@beachbodykndemand.com, postmaster@beachbodyondemaend.com, postmaster@beachbodyoneemand.com.
Also on November 8, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 disputed domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDING
This Panel notes that the Registration Agreement is written in Chinese, thereby making Chinese the default language of the proceedings.
Pursuant to Rule 11.1, this Panel may decide that because Respondent signed an agreement in Chinese, the Complaint should be resubmitted in Chinese and the case recommenced.
Complainant has convincingly argued however that the disputed domain names are all in the English language, and the content of the websites to which the disputed domain names resolve are also in the English language.
As more particularly described below, the evidence illustrates that Respondent is engaged in typosquatting by incorporating misspellings of the words “on demand” in each of the disputed domain names.
This Panel finds therefore that the evidence discloses that Respondent is conversant and proficient in the English language. It follows that in such circumstances Respondent will not be prejudiced by this Complaint, proceeding in the English language.
Furthermore, a significant factor in the arguments and findings in relation to both Policy ¶¶ 4(a)(i) and (iii) turn on the fact that each of the disputed domain names is composed in part of misspellings of the English language words “on demand”, and that Respondent is engaged in typosquatting.
Therefore, pursuant to UDRP Rule 11(a), this Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language and that Respondent is not prejudiced by proceedings in the English language.
In exercising his discretion under UDRP Rule 11(a), this Panel determines that taking into consideration these particular circumstances, English is the appropriate language of this administrative proceeding,
This Panel decides that the proceeding should be in English.
A. Complainant
Addressing the preliminary procedural issue in relation to the language of the proceedings, Complainant acknowledges that it understands that the Registration Agreement for the disputed domain names is in Chinese.
Complainant explains that it is choosing not to translate the Complaint into Chinese and requests that the proceedings be conducted in English, given that the websites to which the disputed domain names resolve are in English as shown in a screen capture exhibited in an annex to the Complaint, Since the text of the websites is in English, it is clear that Respondent is proficient in English.
Complainant adds that the disputed domain name are themselves in English and incorporate a misspelling of Complainant’s English language domain names. HDR Global Trading Limited v. XuSiYin (NAF 2007562 Sep. 15, 2022) (finding that domain name resolving to an English language website is sufficient to show Respondent is likely proficient in English and using English as language of the proceeding would not cause undue prejudice to Respondent).
Complainant submits that Respondent is proficient in English because the websites to which each of the disputed domain names resolve display information in the English language, and the disputed domain names themselves are misspellings of English terms. It is therefore fair and not prejudicial to Respondent to have the proceedings conducted in English.
Addressing substantive issues, Complainant claims rights in the BEACHBODY, BEACHBODY ON DEMAND, and BEACHBODY.COM trademarks and service mark trademarks and service marks established by of the portfolio of United States of America registrations described below and extensive use of the mark over a period of 23 years in providing fitness services and related goods and services.
Complainant alleges that the disputed domain names <beachbodykndemand.com, beachbodyondemaend.com, and beachbodyoneemand.com> are each confusingly similar to Complainant’s BEACHBODY, BEACHBODY ON DEMAND, and BEACHBODY.COM trademarks and service marks as they each contain the BEACHBODY mark in its entirety and incorporate a misspelling of the term “on demand,” either by including “kn” instead of “on” or including the term “demaend” and “eemand” instead of “demand.”
Complainant adds that that by registering the disputed domain names, each of which incorporates a misspelling of Complainant’s own website address specifically, <www.beachbodyondemand.com>, and its trademark BEACHBODY ON DEMAND, Respondent clearly creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the disputed domain names. It has previously been held that misspellings, even when in connection with other terms included in the domain name at issue, are not sufficient to overcome a likelihood of confusion. See Morgan Stanley v. DNS Admin Buntai LTD/shilei/she lei, FA 2003019 (Forum August 9, 20220 (“a domain name is generally considered confusingly similar to the mark it incorporates where it misspells the mark, adds generic or descriptive terms (even if misspelled) and appends a gTLD”).
Furthermore, Complainant argues that by adding descriptive terms, even one used by Complainant itself (specifically the misspelling of the wording “on demand”), Respondent does nothing to prevent a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. Complainant adds that the misspelling Complainant’s BEACHBODY ON DEMAND mark and website address, is insufficient to distinguish the disputed domain names from Complainant’s marks. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”);
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant’s marks are not descriptive marks in which Respondent might have an interest, and submits that the subject marks have acquired distinctiveness through their substantial and continuous use worldwide over the past twenty-three years in connection with Complainant’s goods and services. Complainant adds that it’s rights in the BEACHBODY or BEACHBODY ON DEMAND marks, long predate the registration of the disputed domain names
Complainant asserts that it has not consented to Respondent’s use of the disputed domain names, that Respondent does not have, and has never had, a license or any other authorization from Complainant to use its BEACHBODY or BEACHBODY ON DEMAND mark, and that the disputed domain names are not affiliated with Complainant in any way.
Complainant adds that upon information and belief, Respondent is not commonly known by the disputed domain names, either as a business, individual or other organization. Respondent’s name is Zhi Chao Yang. Nothing in Respondent’s WHOIS information implied that Respondent is “commonly known” by the Domain Names. See Braun Corp. v. Loney (NAF 699652 Jul. 7, 2006) (concluding that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant refers to screen captures of the web page to which the disputed domain names each resolves, which are exhibited in evidence in an annex to the Complaint. Complainant alleges that the exhibits show that each of the disputed domain names resolve to a website with links to third-party websites in order to generate pay-per-click revenue from advertising links.
Complainant alleges that therefore Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial fair use of the disputed domain names.
Complainant next alleges that the disputed domain names were registered and are being used in bad faith, arguing that it is inconceivable that Respondent was not aware of Complainant’s marks and its own official domain names when Respondent registered the disputed domain names. Respondent clearly taken Complainant’s <beachbodyondemand.com> domain name and registered it with misspellings.
Given the well-known status of Complainant’s marks, and given the fact that Respondent was clearly aware of Complainant’s marks, Complainant’s ownership and trademark registrations for the marks, and its own domain names <beachbody.com> and <beachbodyondemand.com>, there is no reason for Respondent to have registered the domain names other than to trade off of the reputation and goodwill of Complainant’s marks. See Charles Jourdan Holding AG v. AAIM (WIPO D2000-0402 June 27, 2000) (finding that the domain name in question is “so obviously connected with Complainant suggesting opportunistic bad faith”).
Complainant alleges that Respondent is thereby trying to capitalize on Complainant’s reputation and the goodwill in Complainant’s marks in order to lure website visitors into a pay-per-click scheme. Complainant argues that such use of the disputed domain names is likely to cause consumers confusion as they will falsely believe that they are accessing Complainant’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is is a provider of fitness programs and related goods and services and is the owner of the BEACHBODY service mark and is the owner of a portfolio of United States trademark and service mark registrations which feature the term BEACHBODY including
· United States registered trademark and service mark BEACHBODY registration number 2,665,151, registered on the Principal Register on December 24, 2002, for goods and services in international classes 5, 9 and 41;
· United States registered trademark and service mark BEACHBODY registration number 2,862,904, registered on the Principal Register on July 13, 2004 for goods and services in international classes 5, 9 and 41;
· United States registered trademark and service mark BEACHBODY registration number 3.041,368 registered on the Principal Register on January 10, 2006 for goods and services in international classes 1,2, 3, 22, 39 and 41;
· United States registered service mark BEACHBODY, registration number 3,450, 708, registered on the Principal Register on June 17, 2008 for services in international classes 38, 31, and 44;
· United States registered trademark and service mark BEACHBODY registration number 3,767,380, registered on the Principal Register on March 30, 2010 for goods and services in international class 25;
· United States registered trademark BEACHBODY registration number 3,841,426, registered on the Principal Register on August 31, 2010 for goods and services in international class 25;
· United States registered trademark BEACHBODY registration number 3.991,249, registered on the Principal Register on July 5, 2011, for goods in international class 3;
· United States registered service mark BEACHBODY registration number 4,245,786, registered on the Principal Register on November 20, 2012, for services in international class 41;
· United States registered trademark BEACHBODY registration number 4,298560, registered on the Principal Register on March 5, 2013, for goods in international class 9;
· United States registered service mark BEACHBODY registration number 4,783,551, registered on the Principal Register on July 28, 2015 for services in international class 38;
· United States registered service mark BEACHBODY registration number 4,940, 861, registered on the Principal Register on April 19, 2016 for services in international class 35;
· BEACHBODY registration number 5,090,972, registered on the Principal Register on November 29, 2016 for goods in international class 21;
· United States registered trademark BEACHBODY registration number 5,210, 789, registered on the Principal Register on May 23, 2017 for goods in international classes 18 and 25;
· United States registered trademark BEACHBODY registration number 6,490, 214, registered on the Principal Register on September 21, 2021 for goods in international class 9.
Also of relevance to this Complaint and included in Complainant’s portfolio are the following trademarks and service marks that incorporate and feature the term BEACHBODY:
· United States registered trademark and service mark BEACHBODY ON DEMAND, registration number 6,028,457, registered on the Principal Register on April 7, 2020 for goods and services in international classes 9, 38 and 41;
· United States registered trademark and service mark BEACHBODY ON DEMAND INTERACTIVE, registration number 6,506, 292, registered on the Principal Register on October 5, 2021, for goods and services in international classes 9, 38 and 41;
· United States registered trademark and service mark BEACHBODY.COM, registration number 3,078,168, registered on the Principal Register on April 11, 2006 for goods and services in international classes 5, 9 and 41;
· United States registered trademark and service mark BEACHBODY (and letter “B” design) registration number 2,873,866, registered on the Principal Register on August 17, 2004,for goods and services in international classes 5, 9 and 41;
· United States registered trademark and service mark BEACHBODY (and letter “B” design) registration number 3.039,683, registered on the Principal Register on January 10, 2006 for goods and services in international classes 18, and 25.
United States registered trademark and service mark BEACHBODY (and circle design) registration number2,828,251, registered on the Principal Register on March 30, 2004, for goods and services in international classes 5, 9 and 41;
Complainant has an established Internet presence and maintains a website at <www.beachbody.com> and <beachbodyondemand.com>.
Each of the disputed domain names <beachbodykndemand.com> <beachbodyondemaend.com> and <beachbodyoneemand.com>, were registered on August 26, 2022 and resolve to websites with apparently pay-per-click links.
There is no information about Respondent, except for that which is contained in the Complaint, the Registrar’s WHOIS, and the information provided by the Registrar, in response to the request by the Forum for information relating to the registration of the disputed domain name in the course of this proceeding. Respondent availed of a privacy service to conceal his/her/their identity on the published WHOIS.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided convincing, uncontested evidence that it has rights in the BEACHBODY, BEACHBODY ON DEMAND, and BEACHBODY.COM trademarks and service marks, and a number of other marks with the term BEACHBODY as a prominent element, established by the ownership of the portfolio of registrations described above and the extensive use of the marks in its online fitness services as illustrated in the screen captures of Complainant’s own website which are annexed to the Complaint.
Each of the disputed domain names <beachbodykndemand.com> <beachbodyondemaend.com> and <beachbodyoneemand.com> consists of Complainant’s BEACHBODY mark in its entirety in combination with the terms “kndemand”, “ondemaend” and “oneemand” respectively, together with the gTLD <.com> extension.
Complainant’s BEACHBODY mark is the initial and dominant element in each of the disputed domain names.
In each case the additional elements “kndemand”, “ondemaend” and “oneemand” respectively have no apparent meaning other than a misspelling of the words “on demand”, which, in combination with Complainant’s BEACHBODY creates a misspelling of Complainant’s BEACHBODY ON DEMAND trademark and service mark.
The use of the mark in its entirety in this manner as the initial and dominant element in each of the disputed domain names, allows a finding that each of the disputed domain names is confusingly similar to Complainant’s BEACHBODY mark.
The misspelling of the element “on demand” in combination with the BEACHBODY mark in each case allows this Panel to make a finding that the disputed domain name is confusingly similar also to Complainant’s BEACHBODY ON DEMAND trademark and service mark.
In most circumstances, for the purposes of comparison, the gTLD <.com> would be considered by Internet users as a necessary technical element in a domain name, and while that remains true in this matter also, there is the additional likelihood that Internet users would associate the disputed domain names with Complainant’s BEACHBODY.COM registered mark.
This Panel finds therefore that each of the disputed domain names is confusingly similar to the BEACHBODY, BEACHBODY ON DEMAND, and BEACHBODY.COM trademarks and service marks in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· Complainant’s rights in the BEACHBODY or BEACHBODY ON DEMAND marks, long predate the registration of the disputed domain names
· Complainant’s BEACHBODY, BEACHBODY ON DEMAND, and BEACHBODY.COM trademarks and service mark trademarks and service marks are not descriptive marks in which Respondent might have an interest;
· The subject marks have acquired distinctiveness through their substantial and continuous use worldwide over the past twenty-three years in connection with Complainant’s goods and services;
· Complainant has not consented to Respondent’s use of the disputed domain names;
· Complainant has never granted Respondent any license or any other authorization to use its BEACHBODY or BEACHBODY ON DEMAND marks;
· the disputed domain names are not affiliated with Complainant in any way.
· upon information and belief, Respondent is not commonly known by the disputed domain names, either as a business, individual or other organization; the record shows that Respondent’s name is Zhi Chao Yang; and nothing in Respondent’s WHOIS information implies that Respondent is “commonly known” by the disputed domain names;
· the screen captures of the web page to which the disputed domain names each resolves, which are exhibited in evidence in an annex to the Complaint, illustrate that each of the disputed domain names is used as the address of a website with links to third-party websites in order to generate pay-per-click revenue from advertising links and Respondent is thereby trying to capitalize on Complainant’s reputation and the goodwill in Complainant’s marks in order to lure website visitors into a pay-per-click scheme;
· such use of the disputed domain names is likely to cause consumers confusion as they will falsely believe that they are accessing Complainant’s website; and
· therefore Respondent is not using the domain names in connection with a bona fide offering of goods or services or making a legitimate noncommercial fair use of the disputed domain names.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The evidence adduced shows that each of the disputed domain names <beachbodykndemand.com> <beachbodyondemaend.com> and <beachbodyoneemand.com>, were registered on August 26, 2022, long after Complainant first acquired its registered rights in the BEACHBODY mark on December 24, 2002, and has since build a global goodwill, reputation, and profile.
BEACHBODY is a distinctive mark, and it is improbable that the registrant of the disputed domain names was unaware of Complainant, its eponymous website, its the goodwill and reputation which Complainant had established when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with Complainant in mind, intending to take predatory advantage of Complainant, its goodwill and reputation in the BEACHBODY, BEACHBODY ON DEMAND, and BEACHBODY.COM trademarks and service marks.
The uncontested evidence adduced by Complainant also shows that each of the disputed domain names is being used as the address of the same or an identical webpage, which Complainant alleges are parked pages with sponsored pay-per-click links. The screen captures of the web pages to which the disputed domain name resolves, exhibited in the Complaint, show website to be a simple page with what appears to be three links, each respectively named “Beachbody Login”, “Beachbody on Demand Cost”, and “Beachbody on Demand”.
It is unfortunate that Complainant has not provided this Panel with more evidence of the alleged linkage from Respondent’s website, however, in the absence of any Response or explanation, this Panel must accept that the website does in fact contain pay-per-click links as alleged.
In the absence of contrary evidence, this Panel finds therefore that the disputed domain names are being used in bad faith to attract Internet users, to divert Internet traffic intended for Complainant to Respondent’s website from which Respondent is gaining pay-per-click revenue. Such use of each of the disputed domain names constitutes bad faith for the purposes of the Policy.
Noting that each of the disputed domain names is owned by the same registrant,each is a combination of Complainant’s BEACHBODY mark and a misspelling of the term “on demand”, and that each was registered with the same registrar on the same day, this Panel further finds that the registration and use of the disputed domain names by Respondent constitutes typosquatting which in itself constitutes bad faith registration and use for the purposes of the Policy.
As this Panel has found that the disputed domain name was registered and is being Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <beachbodykndemand.com>, <beachbodyondemaend.com>, and <beachbodyoneemand.com> domain names be TRANSFERRED from Respondent to Complainant.
______________________________________
James Bridgeman SC
Panelist
Dated: December 4, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page