CrossFit, Inc. v. Yen Nguyen / CrossFit AVA
Claim Number: FA1806001789786
Complainant is CrossFit, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon & Rees, LLP, California. Respondent is YEN NGUYEN / CROSSFIT AVA (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crossfitava.com>, registered with Fastdomain Inc..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2018; the Forum received payment on June 1, 2018.
On June 11, 2018, Fastdomain Inc. confirmed by e-mail to the Forum that the <crossfitava.com> domain name is registered with Fastdomain Inc. and that Respondent is the current registrant of the name. Fastdomain Inc. has verified that Respondent is bound by the Fastdomain Inc. 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 June 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 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@crossfitava.com. Also on June 11, 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 July 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Crossfit, Inc. is the creator of an elite fitness program and operates thousands of gyms across the country. Complainant uses the CROSSFIT mark in connection with its services and related products.
Complainant has rights in the CROSSFIT mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <crossfitava.com> domain name is confusingly similar to Complainant’s CROSSFIT mark because it contains Complainant’s entire mark.
Respondent lacks rights and legitimate interests in the <crossfitava.com> domain name because Respondent began using the CROSSFIT mark as part of a prior licensing agreement with Complainant. Respondent continues to use the domain name besides the fact that the licensing agreement has expired.
Respondent registered and uses the <crossfitava.com> domain name in bad faith because Complainant informed Respondent it needs to enter into a new affiliate agreement to continue using the domain name, which Respondent failed to do. Additionally, Respondent failed to respond to cease-and-desist letter sent by Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for CROSSFIT.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in CROSSFIT.
Respondent uses the <crossfitava.com> domain name notwithstanding that the affiliation agreement allowing Respondent to use Complainant’s CROSSFIT trademark in <crossfitava.com> is no longer in force.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s trademark registration of the CROSSFIT mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”).
Respondent’s <crossfitava.com> domain name incorporates Complainant’s entire CROSSFIT mark. The mark is followed by the characters/term “ava,” and the top level domain name “.com.” The resulting differences between the at-issue domain name and Complainant’s mark are insufficient to distinguish the one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <crossfitava.com> domain name is confusingly similar to Complainant’s CROSSFIT mark under Policy ¶4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond Complainant’s prima facie showing acts conclusively.
The parties’ affiliation agreement, which allowed Respondent to use Complainant’s CROSSFIT trademark per the terms of such agreement, is no longer in force. Continuing to use the confusingly similar <crossfitava.com> domain name after the related trademark license has lapsed suggests that Respondent’s lacks rights and legitimate interests in <crossfitava.com> under Policy ¶ 4(a)(ii). See Tristar Products, Inc. v. Eli Cohen, Canadian Gift Concept, FA 1592318 (Forum Jan. 9, 2015) (finding that complainant had made out a prima facie case that respondent lacks rights and legitimate interests where respondent was once, but is no longer, an affiliate of Complainant’s in the sale of the COPPER WEAR goods).
In light of the foregoing and Respondent’s failure to counter Complainant’s assertions, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶4(a)(ii).
As mentioned above regarding rights and legitimate interests, Complainant demonstrates that the parties affiliate agreement, which inter alia conditionally licensed Respondent to use the CROSSFIT trademark, lapsed because of Respondent’s failure to comply with the terms of the agreement. Respondent’s continued use of Complainant’s trademark after Respondent’s license to use such mark lapsed indicates Respondent’s bad faith registration and use of the <crossfitava.com> domain name. See Labrada Bodybuilding Nutrition, Inc. v. Garrett, FA 94293 (Forum Apr. 27, 2000) (finding bad faith where the respondent registered the domain names six months after the respondent’s distributor agreement with the complainant was terminated).
Bad faith registration may be inferred given that the affiliate agreement was effectively terminated yet Respondent nevertheless continued to use the confusingly similar at-issue domain name. Given Respondent’s behavior after its license to use the domain name lapsed, it is reasonable to find that Respondent had no intention of respecting Complainant’s trademark rights at the time Respondent registered the at-issue domain name but rather intended to use the domain name whether or not it had a license to do so. The Panel notes that this finding is consistent with Respondent’s failure to respond to Complainant’s email informing Respondent that Respondent’s obligations, per the affiliation agreement, were past due; Complainant allowing Respondent time to cure; and Respondent’s subsequent failure to do so while continuing to control the at-issue domain name without license to do so.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <crossfitava.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 9, 2018
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