CrossFit, Inc. v. Dale Grant
Claim Number: FA1803001778365
Complainant is CrossFit, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Dale Grant (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crossfitlaunch.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2018; the Forum received payment on March 22, 2018.
On March 23, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <crossfitlaunch.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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@crossfitlaunch.com. Also on March 23, 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 April 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant uses the CROSSFIT mark in connection to a variety of goods and services, including fitness training, educational services, retail store services, clothing, and shoes. Complainant has rights in the CROSSFIT mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,007,458 registered Oct. 18, 2005).
2. Respondent’s <crossfitlaunch.com>[i] domain name is confusingly similar to Complainant’s mark as Respondent merely adds the non-distinct term “launch,” and the “.com” generic top-level domain (“gTLD”) to the mark.
3. Respondent has no rights or legitimate interests in the <crossfitlaunch.com> domain name, as Respondent is not permitted to use Complainant’s CROSSFIT mark and is not commonly known by the domain name based on the WHOIS information of record.
4. Additionally, Respondent is not using the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Instead, Respondent uses the domain to divert internet users to a website which sells branded shoes in competition with Complainant’s business.
5. Respondent registered and used the <crossfitlaunch.com> domain name in bad faith as Respondent disrupts Complainant’s business and diverts users to the resolving website, which offers competing goods and services. Further, Respondent’s failure to respond to Complainant’s cease-and-desist letter is evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CROSSFIT mark. Respondent’s domain name is confusingly similar to Complainant’s CROSSFIT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <crossfitlaunch.com> mark domain name and that Respondent registered and uses the domain name in bad faith.
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 has rights to its CROSSFIT mark through registrations with the USPTO (e.g., Reg. No. 3,007,458 registered Oct. 18, 2005). Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provides TESS printouts of its CROSSFIT marks (e.g., Reg. No. 3,007,458 finds that Complainant has sufficiently demonstrated its rights in the CROSSFIT mark per Policy ¶ 4(a)(i).
Complainant contends Respondent’s <crossfitlaunch.com> domain name is confusingly similar to the CROSSFIT mark as Respondent merely adds a generic and/or descriptive term and gTLD to the mark. Such changes to a mark in a domain name do not negate any confusing similarity with the mark itself under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain). Respondent’s domain name incorporates the entire CROSSFIT mark, while adding the term “launch,” and the “.com” gTLD. Consequently, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <crossfitlaunch.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <crossfitlaunch.com> domain name, as Respondent is not permitted to use the CROSSFIT mark, and is not commonly known by the domain name. In the event a respondent fails to submit a response to a UDRP proceeding, relevant WHOIS information may be used to determine whether respondent is commonly known by the domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Complainant provides WHOIS information which identifies Respondent as “Dale Grant.” Complainant has not given Respondent any permission to use the CROSSFIT mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Therefore, the Panel finds Respondent is not commonly known by the <crossfitlaunch.com> domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues Respondent is not using the <crossfitlaunch.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use as Respondent offers competing goods and services at the resolving website. Using a domain name containing a mark to which a complainant has rights to compete with the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving website that offers sneakers and other sports-related apparel. Thus, Respondent’s use of the <crossfitlaunch.com> domain name to compete with Complainant’s business does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and is using the <crossfitlaunch.com> domain name in bad faith as Respondent disrupts Complainant’s business and diverts users to its own competitive website. Using a a domain name to compete with a mark holder demonstrates a respondent’s bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (finding bad faith where respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from complainant’s website to respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the resolving website which offers sneakers and sports-related apparel, in competition with that offered by Complainant. Therefore, the Panel holds that Respondent’s competing use of the <crossfitlaunch.com> domain name is evidence of bad faith registration and use per Policy ¶¶ 4(b)(iii) and/or (iv).
The Panel finds Complainant has satisfied 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 <crossfitlaunch.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 25, 2018
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