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.

 In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel noted that there are serious questions regarding the first element. As noted above, there were multiple companies referred to in Complainants filing. As a result, the Panel explained “More seriously there is no evidence at all that any of these companies is connected with the Complainant, Prime Pictures LLC, or that Prime Pictures LLC has any right in this mark on any other basis.” The Panel chose not to seek additional proof or information from Complainant in light of its findings under the other prongs.

The Panel then reviewed the second element, and found that Respondent did not have any rights or legitimate interests in the domain. However, as many of you know, all three of the elements must be found in favor of the Complainant. In moving onto the third element, the Panel made the following findings:

In this case the Complaint contains no evidence of any use of “Cinema City” as a mark or company name prior to September 2005. The Domain Name was registered by the Respondent in September 1998. There is no evidence whatsoever that the Domain Name was registered in bad faith. The third requirement of the UDRP has not been satisfied and the Complaint must therefore be rejected.

Normally the Panels stop their analysis at this point, making findings for Respondent. However, in this case the Respondent claimed Reverse Domain Name Hijacking. Panels have ben very reluctant to make such a finding. This Panel made the following findings:

In the present case, the Complaint correctly identified that the Domain Name was registered in 1998. Given that the earliest date of any registration or use of the mark relied upon in the Complaint was in 2005, the registration of the Domain Name could not have been in bad faith on any interpretation of the facts and cases cited in the Complaint….the Panel considers it unlikely that this deficiency was overlooked by the Complainant’s counsel and more probable that it was deliberately ignored in framing the Complaint. In all the circumstances, the Panel finds that the Complaint was brought in bad faith, in an attempt at Reverse Domain Name Hijacking.

Ultimately, the Panel DENIED the request for transfer and made a finding that Complainant engaged in Reverse Domain Name Hijacking.

The domains at issues included <aboutgrupobimbo.com>, <arnoldfillems.com>, <bagelthin.com>, <bagelthins.com>, <bimbobrands.com>, <bimbobreads.com>, <bobolipizza.com>, <bobolipizzacrust.com>, <bobolisauce.com>, <brownberrybreads.com>, <brownberryjr.com>, <coronadocandy.com>, <entenmannscakes.com>, <entenmannscookies.com>, <entenmannsdonuts.com>, <fillems.com>, <franciscobreads.com>, <freihofersbread.com>, <laracookies.com>, <oldcountrybreads.com>, <oroweatbread.com>, <sandwichthin.com>, <stroehmannbread.com>, <tiarosatortilla.com> and <tiarosatortillas.com>.

The Panel explained that Grupo Bimbo is a large and internationally known baking company. and that the other Complainants appeared to be subsidiaries. Each of the Complainants individually owned trademark registrations and rights in one or more trademarks. The marks being claimed included GRUPO BIMBO, BIMBO, TIA ROSA, CORONADO, LARA, SANDWICH THINS, BROWNBERRY, FILL `EMS, BOBOLI, ENTENMANN’S, FREIHOFER’S, STROEHMANN, FRANCISCO, OLD COUNTRY, and OROWEAT.

Respondent filed a response which did not address the merits of the case, but the Panel explained that Respondent instead asserts that the process provided for under the UDRP is corrupt and inherently unfair in that “it favors the haves and unfairly penalizes and punishes the have nots”. The Respondent states that he does not recognize “the authority of WIPO or any other would be ‘World Policing Organization’”, and that he is certain his domain names “will be stolen” by the Complainants and their attorneys.

The remainder of the decision focused on the singular procedural issue of whether or not multiple complainants in this case was appropriate. The Panel explained:

The Policy and the Rules do not expressly contemplate the consolidation of multiple complainants (or respondents) in a unitary administrative proceeding, and generally speak in singular terms of a “complainant” when referring to proceedings under the Policy. This Panel, along with a number of WIPO Panels, nonetheless has concluded that the use of the singular “complainant” in the Policy and Rules was not meant to preclude multiple legal persons in appropriate circumstances from jointly seeking relief in a single administrative proceeding under the Policy.

The Panel recognized that prior Panels have allowed consolidation and that a “test” has been created for the determination of whether it is appropriate. The factors to be analyzed for consolidation are as follows:

(1) Number of complainants; (2) Number of domain names; (3) Voluminous filings; (4) Novel, difficult or largely untested issues; and (5) Potential for different outcomes for domain name disputes depending on nature of rights asserted.

The Panel reviewed these factors and found that there were too many overriding procedural issues to efficiently decide the case on its merits. For instance the Panel explained:

As a result, there appear to be different issues to be addressed under the first element of the Policy involving the disputed domain names <bagelthins.com> and <bagelthin.com> arising from the differing nature of the rights asserted by the Complainants in BAGEL THINS. In addition the descriptiveness question referred to above may also create the potential for different outcomes with respect to these disputed domain names under the second or third elements of the Policy. And, as noted earlier, <bagelthins.com> initially was used by the Respondent in a way that it appears the other disputed domain names have not been used. For all of the foregoing reasons, the Panel after careful consideration is not persuaded that the Complainants have made a sufficient showing to permit consolidation of the multiple complainants involved here. The Panel is concerned among other things that a multiplicity of issues could render the summary and expedited dispute resolution process envisioned by the Policy inefficient or ineffective, or even raise issues concerning fairness and equity.

Ultimately the Panel DENIED the request for transfer, but did so without prejudice, permitting the Complainants to re-file individually.

According to paragraph 4(a) of the ICANN UDRP Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) The Domain Name was registered and is being used in bad faith.

The Panel quickly addressed the first element, noting that the domain was identical to Complainant’s mark. The case turned on the second prong. The Panel noted that Complainant failed to present evidence demonstrating business in the U.S. prior to the Respondent’s registration of the domain. Additionally the Panel notes there was nothing in the record to indicate that Respondent’s intention to target Complainant’s brand. The Panel further rejected any contention that there has been confusion based upon a lack of evidence presented.

The Panel did not address the third prong in light of finding that Respondent established rights or legitimate interests in the domain. Ultimately the Panel DENIED the request for transfer.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

The Panel found that Complainant established the first prong, since the essence of the registred mark was incorporated into the domain. In addressing the second prong the Panel noted that Respondent alleged the domain was generic or at least descriptive. The Panel found that the word “xpand” was descriptive as a short hand for the word “expand.” The Panel recognized the commercial value of descriptive words, which when such domains are offered for sale can be considered a bona fide offering of goods or services.

The case ultimately seemed to weigh heavily on the third prong, wherein the Panel explained:

The Respondent acquired the disputed domain name in 2003. The Complainant did not use the XpanD Mark until September 2006, more than three years after the Respondent registered the disputed domain name. The Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name.

After making a finding that Complainant failed to prove all three elements, the Panel moved its attention to Respondent’s request for a finding of Reverse Domain Name Hijacking. The Panel explained:

In the present case, the Complainant did not provide any explanation as to how the Respondent could possibly have been aware of the Complainant and the Complainant’s mark when registering the disputed domain name, which occurred more than three years before the Complainant started using its XpanD Mark. The Panel therefore accepts the Respondent’s allegation that the Complainant is using the UDRP as an alternative purchase strategy after the acquisition of the disputed domain name failed. Therefore, the Panel finds that the Complaint was brought in bad faith, in an attempt of reverse domain name hijacking: The Complainant knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered in bad faith.

Ultimately the Panel DENIED the request for Transfer.

In the recent domain name dispute of Red Bull GmbH v. Roy Kenneth Nabben (WIPO Case No. D2010-1358, September 30, 2010) a single member Panel was faced with a dispute over the domain www.redbullnorge.com. RED BULL is the well known energy drink which does not need much of in introduction. RED BULL maintains a website at www.redbull.com. Respondent filed a response noting that the domain was registered in order for Respondent to sell Red Bull to residents of Norway. “Norge” means Normway, thus the domain name was aptly chosen in light of the proposed usage. The decision explained that the sale of the drink in Norway was not legal, and the parties would work toward getting the product legalized for sale in Norway. The decision notes that the relationship between the parties was done by agreement, and that RED BULL knew and approved of Respondents registration and use of the domain.

In accordance with paragraph 4(a) of the ICANN UDRP Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.

The Panel quickly found that the first prong of confusingly similar was met. Then the Panel also quickly dispensed of the second prong, noting that under 4(a)(ii) of the UDRP the registrant can satisfy this prong by showing that it once had such rights but no longer retains a right to use the disputed domain name.

The crux of the case came down to the third element, bad faith registration and use. The Panel explained:

[T]he Panel considers that, to satisfy the third requirement of the UDRP, a complainant must show that the domain name was both registered in bad faith and is being used in bad faith, and that a registration originally made in good faith cannot turn into a registration in bad faith because the registrant subsequently uses it in bad faith. Bad faith use can be evidence of bad faith registration but cannot convert a registration which was in fact made in good faith into a registration made in bad faith…But where a company consents to the registration by a trading partner of a domain name incorporating its mark, the company can readily protect itself by securing a clear written agreement specifying that it will own the domain name after the trading relationship comes to an end; and the agreement can further specify a cost effective means of dispute resolution. At all events this situation is a long way from the mischief which the UDRP was devised and adopted to address, namely the abusive registration of domain names which are identical or confusingly similar to the marks of other parties without their consent. In any case, the Panel is obliged to apply the UDRP as it is, rather than as it could or should be.

Ultimately the Panel found that RED BULL failed to satisfy all three elements and DENIED the request for transfer.

In the recent cybersquatting case of Pamela Anderson v. Alberta Hot Rods Case No. D2010-1144 (WIPO September 8, 2010) a three member panel was faced with a dispute over the domain www.pamanderson.com. Pamela Anderson is well known for her acting and modeling. She has multiple trademark registration for the mark PAMELA ANDERSON. She maintains a website at www.pamelaanderson.com. Respondent registered the disputed domain on March 1, 1997 and filed a Response to the Complaint. The parties have been involved in an earlier UDRP proceeding concerning the domain names <pamelaanderson.com>, <pamelaanderson.net> and <pamelalee.com>, which resulted in the transfer of those domain names (see Pamela Anderson v. Alberta Hot Rods, WIPO Case No. D2002-1104).

Under paragraph 4(a) of the ICANN UDRP Policy, the Complainant must prove that each of the following three elements is present: (i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In addressing the first element, the Panel explained that it must view Anderson’s rights in the mark based on common law, since the Federal trademark rights do not predate the registration of the domain. A discussion of common law rights extending to an abbreviation of Anderson’s first name from PAMELA to PAM, concluded in a finding that it could be found to be confusingly similar. The Panel was satisfied that the domain was confusingly similar to the mark.

Moving on to the second element, the Panel noted that Anderson claims the Respondent is not commonly known by the disputed domain and does not have authorization to use the domain or mark. The Panel noted the following arguments presented by Respondent:

The Respondent claims to have, as a respected publisher of a wealth of information, including biographical data, used the disputed domain name in connection with various websites in the past, all featuring biographical information about various famous personalities, dead or alive. However, the Respondent did not provide any evidence of any contemplated good faith use and therefore failed to prove rights or legitimate interests in the disputed domain name under the Policy.

The Panel found this element also favored Complainant. Moving onto the final element, bad faith registration and use, the Panel made the following observations regarding Respondent knowledge and actions.

Given the Complainant’s broad media coverage and the fact that the Respondent registered the disputed domain name in a chronological sequence with the domain names disputed in Pamela Anderson v. Alberta Hot Rods, supra, (<pamelaanderson.com> registered on November 6, 1996; <pamanderson.com> registered on March 1, 1997; <pamelalee.com> registered on March 27, 1997; <pamelaanderson.net> registered on February 25, 1998), it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is further supported by the fact that the Complainant seems drawn towards registering well-known people’s names as domain names and therefore seems to be familiar with or at least interested in celebrities. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.

The Panel also applied the consensus view regarding lack of active use of a domain, and explained “In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith. The Panel is therefore convinced that, even though the disputed domain name has not yet been actively used, the Respondent’s non-use of the disputed domain name amounts to use in bad faith.”

Ultimately, the Panel found that all elements were satisfied and ordered the domain be Transferred. This decision was not unanimous though as one of the Panelists provided a dissenting opinion. Additionally, The Panel dismissed the request for Reverse Domain Name Highjacking presented by Respondent.

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

In this case the Panel cited to some of the prior decisions, both for and against RAPIDSHARE, and noted that in the prior denial cases, such as RapidShare AG, Christian Schmid v. N/A Maxim Tvortsov, WIPO Case No. D2010-0696, that Panel found that www.rapidbay.net was not able to be transferred under the policy. This Panel adopted many of the same arguments, however did not get past the first element of whether or not the domain was identical or confusingly similar to the RAPIDSHARE mark. The Panel chose not to review the remaining elements.

In the recent domain name dispute decision of RapidShare AG and Christian Schmid v. Ilya, Ilya Efimov WIPO Case No. D2010-1105 (August 17, 2010) a single member Panel was faced with a dispute over the domain www.rapid.org. As we previously posted on July 13, 2010, RAPID SHARE tried to claim rights to the word RAPID when seeking to get the “rapidbay.net” domain. (See post here) Complaint, Rapid Share is the well known file-hosting website which maintains a website at www.rapidshare.com. The Respondent did file a reply to the Complaint, and cited to the previous decision regarding RAPIDSHARE’s lack of rights to the word RAPID. Complainant owns a Community Trademark for RAPIDSHARE with a priority date of 2005.

Under Paragraph 4(a) of the ICANN UDRP Policy, a complainant has the burden of proving the following: (i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) That the disputed domain name has been registered and is being used in bad faith.

The Panel in this case made similar findings to the previous rapidbay.net decision. The Panel noted that no evidence was put forth by RAPIDSHARE to show that it was frequently referred to as “RAPID.” The Panel found this to be fatal to Complainant’s case. Ultimately, the Panel found that Complainant failed to establish identical or confusingly similar elements as required under the policy. The Panel DENIED the request for transfer.