In the recent domain name dispute of Beachbody, LLC v. Gregg Gillies (WIPO Case No. D2011-0358, April 21, 2011) a single member panel was faced with a dispute over the domain www.p90xworkoutschedule.com. The disputed domain was registered on June 11, 2009 and Respondent provided a brief response which included the following statement:
There is no confusion or misrepresentation on the site as to whether it’s the original p90x site or owned by Beach Body, LLC. It clearly gives a review of the product (p90x), which I own, and in fact, even gives a positive review, so I clearly not trying to harm Beach Body or alter sales of p90x in a negative way. I use the site to share my experiences with p90x and to specifically talk about its workout schedule. I don’t pretend to be an official site, nor do I try and confuse anyone about that fact.
Complainant owns multiple trademark registrations in the U.S. and internationally related to its P90X mark. Complainant maintains a website at www.beachbody.com and also owns the domain www.p90x.com, which is forward to its main site.
Paragraph 4(a) of the UDRP ICANN Policy requires that the Complainant must prove each of the following three elements to obtain an order that Disputed Domain Name should be cancelled or transferred. (i) The Disputed Domain Name is identical or is 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 Disputed Domain Name; (iii) The Disputed Domain Name has been registered and is being used in bad faith.
In addressing the first element the Panel noted that the “addition of a generic or highly descriptive term does not serve to distinguish between the mark of the complainant and the disputed domain name.” The Panel ultimately found that the domain was confusingly similar to Complainant’s mark. In addressing the second element, the Panel explained that Respondent’s name has no correlation to the disputed domain and there is no evidence of authorization or a license. However, the Panel refrained from making its decision on this prong, noting that the third prong would address concerns of the case.
The third prong, registration and use in bad faith, resulted in the most detailed analysis for this Panel. The Panel made the following observation about Complainant’s pleadings:
The heart of the Complainant’s claim in these proceedings is that, under paragraph 4(b)(iv) of the Policy, the Respondent is using the Disputed Domain Name to draw people to its site for the purpose of the promoting the e-book “Truth About Six Pack Abs.” However, the Complainant has not provided any explicit evidentiary support for this claim, other than to refer generally to Respondent’s website accessible through the Disputed Domain Name. The Complaint does not set out where on the website the Respondent has been promoting the e-book “Truth About Six Pack Abs.” Review by the Panel of the exhibits and other materials provided by the Complainant in the Complaint did not disclose any explicit reference to the promotion and sale of the e-book “Truth About Six Pack Abs.”
As a result, the Panel issued an Administrative Procedural Order seeking additional evidence and information, to which Complainant simply restated its prior allegations and failed to provide additional evidence. The Panel also noted that Respondent provided a disclaimer on the disputed domain as the lack of affiliation. In light of that disclaimer the Panel explained:
However, when there is a disclaimer on the Respondent’s website where there is a colorable argument of legitimate use, and the Complainant has provided no convincing evidence to support its claim of bad faith by the Respondent, such a disclaimer may serve to buttress Respondent’s claim that it has not acted in bad faith. The Panel finds that is the situation here. The Panel further takes note of a number of “Ads by Google” apparently present on the website, amidst Respondent’s described work-out schedule. However, even if these might in some way be indicative of use by the Respondent in bad faith, the Complainant has made no contention or submission whatsoever on this issue. As such, based on the record of the Complaint, the Panel does not find it sufficient to carry the balance in the Complainant’s favor.
Ultimately, the Panel found that Complainant failed to satisfy all three prongs and DENIED the request for transfer.