Cross Creek Advisors, LLC v. CROSS CREEK VENTURES PRIVATE REGISTRATION CROSSCREEKVENTURES.COM
Claim Number: FA1801001769715
Complainant is Cross Creek Advisors, LLC (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is CROSS CREEK VENTURES PRIVATE REGISTRATION CROSSCREEKVENTURES.COM / CROSS CREEK VENTURES PRIVATE REGISTRATION (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crosscreekventures.com>, registered with eNom, LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2018; the Forum received payment on January 30, 2018.
On January 31, 2018, eNom, LLC confirmed by e-mail to the Forum that the <crosscreekventures.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 February 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2018 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@crosscreekventures.com. Also on February 8, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a venture capital firm founded in 2006 with expertise in private equity markets. Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for CROSS CREEK CAPITAL (Reg. No. 3,336,397, registered Nov. 13, 2007), CROSS CREEK ADVISORS (Reg. No. 4,573,024, registered Jul. 22, 2014), and CROSS CREEK PARTNERS (Reg. No. 5,223,731, registered Jun. 13, 2017). Additionally, Complainant filed a registration for CROSS CREEK with the USPTO (Ser. No. 87709302, filed Dec. 5, 2017), first using the mark in commerce as early as July 1, 2013. Respondent’s mark is identical or confusingly similar to the at issue domain name since the domain name contains the entire CROSS CREEK mark, adds a generic top-level domain (“gTLD”), and adds a generic term or descriptive term. Additionally, Respondent merely replaces the general terms “ADVISORS,” “CAPITAL,” and “PARTNERS” of Complainant’s mark with the term “ventures.”
Respondent has no rights or legitimates interests in the disputed domain name. Respondent is neither licensed, or authorized to use Complainant’s CROSS CREEK marks or any of Complainant’s other marks. In addition, Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Rather, Respondent’s domain name merely resolves to an inactive webpage.
Respondent registered and is using the at issue domain name in bad faith, shown by Respondent’s failure to make an active use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Cross Creek Advisors, LLC (“Complainant”), of Salt Lake City, Utah, USA. Complainant is the owner of the domestic registration for the marks CROSS CREEK CAPITAL, CROSS CREEK ADVISORS, and CROSS CREEK PARTNERS. Complainant has continuously used these marks and related variations thereof since 2006, in connection with its provision of financial investment, mutual fund investment and investment management services.
Respondent is Cross Creek Ventures Private Registration, Cross Creek Ventures.com Cross Creek Private Registration, Plano, Texas, USA. The Panel notes Respondent registered the domain name on or about January 5, 2016.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights to its CROSS CREEK CAPITAL (Reg. No. 3,336,397, registered Nov. 13, 2007), CROSS CREEK ADVISORS (Reg. No. 4,573,024, registered Jul. 22, 2014), and CROSS CREEK PARTNERS (Reg. No. 5,223,731, registered Jun. 13, 2017) marks through registration with the USPTO. Additionally, Complainant claims to have filed a registration for CROSS CREEK with the USPTO (Ser. No. 87,709,302, filed Dec. 5, 2017), first using the mark in commerce as early as July 1, 2013. Registration with the USPTO has been found by Panels to demonstrate sufficient rights to a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel here finds that Complainant has demonstrated sufficient rights to its marks.
Complainant argues Respondent’s <crosscreekventures.com> domain name is identical or confusingly similar to its marks. Prior Panels have found incorporation of an entire mark, adding a gTLD, and adding a generic or descriptive term does not negate a finding of confusing similarity. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”). The removal of generic terms from a complainant’s mark also does not negate a finding of confusing similarity. See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Here, Complainant asserts Respondent incorporates CROSS CREEK entirely, adds the gTLD “.com,” and adds the generic or descriptive term “venture.” Further, Complainant claims Respondent merely replaces the general terms “ADVISORS,” “CAPITAL,” and “PARTNERS” from its other marks with “ventures.” The Panel here finds that Respondent’s domain name is confusingly similar to Complainant’s marks for the purposes of Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has made a prima facie case.
Complainant contends Respondent has no rights or legitimate interests in the <crosscreekventures.com> domain name, as Respondent is not commonly known by the <crosscreekventures.com> domain name because Respondent is neither licensed, or authorized to use Complainant’s CROSS CREEK marks or any of Complainant’s other marks. A lack of authorization or license to use a mark in a domain name along with the WHOIS registration information can indicate a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information indicates that Respondent is “CROSS CREEK VENTURES PRIVATE REGISTRATION CROSSCREEKVENTURES.COM / CROSS CREEK VENTURES PRIVATE REGISTRATION.” The Panel here finds that Respondent is not commonly known by the domain name at issue.
Complainant asserts Respondent is not using the <crosscreekventures.com> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use as Respondent’s domain name merely resolves to an inactive webpage. Domain names resolving to inactive webpages can indicate of a lack of rights under Policy ¶¶ 4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides a screenshot of the resolving webpage, which displays the message “This site can’t be reached.” The Panel here finds Respondent’s inactive use of the at-issue domain name is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use.
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
Complainant has proven this element.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which bad faith may be found. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). As Complainant has not made any arguments that specifically fit within the bounds of Policy ¶ 4(b) elements, the Panel therefore considers Respondent’s actions under a nonexclusive inquiry of Policy ¶ 4(a)(iii).
Here, Complainant argues Respondent’s failure to make an active use of the <crosscreekventures.com> domain name demonstrates Respondent’s bad faith. Failure to use a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). As previously noted, Complainant provides a screenshot of the resolving webpage, which contains the message “This site can’t be reached.” The Panel here finds that Respondent’s failure to make an active use of the disputed domain name demonstrates bad faith registration and use per Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <crosscreekventures.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: March 19, 2018
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