CrossFit, Inc. v. Jessica Sanchez
Claim Number: FA1707001742061
Complainant is CrossFit, Inc. (“Complainant”), represented by Yuo-Fong C. Amato of Gordon Rees Scully Mansukhani LLP, California, USA. Respondent is Jessica Sanchez (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adaptivecrossfit.com>, registered with GoDaddy.com, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 28, 2017; the Forum received payment on July 28, 2017.
On July 31, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adaptivecrossfit.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2017 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@adaptivecrossfit.com. Also on July 31, 2017, 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 August 22, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant uses the CROSSFIT mark on many products and services, but primarily for licensing the use of the mark to gym businesses around the world. Complainant’s CROSSFIT mark is used in the fields of fitness, nutrition, sports, exercise, competitions, footwear, clothing, and fundraising activities. Complainant has protected its interests in the CROSSFIT mark by registering the mark with the USPTO (Reg. No. 3,007,458 registered Oct. 18, 2005; Reg. No. 3,826,111 registered July 27, 2010). Respondent’s <adaptivecrossfit.com> is confusingly similar to the CROSSFIT mark because the mark is included entirely with the mere additions of the term “adaptive” and generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in <adaptivecrossfit.com>. Respondent has not been commonly known by “Crossfit.” In addition, Respondent has simply parked the domain name’s resolving website, which is not an indication of any bona fide offering of goods or services or any legitimate noncommercial or fair use.
iii) Respondent registered and used <adaptivecrossfit.com> in bad faith. Respondent has failed to make any legitimate use, imputing bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent did not submit a Response to the Complaint. Respondent has stated the following in email correspondence: “I am willing to forfeit the domain name as it was not purchased with any malice. I purchased the domain name to try and help a friend who is an adaptive athlete and competes in CROSSFIT competitions.” Correspondence—Respondent, July 31, 2017. The Panel notes that <adaptivecrossfit.com> was registered on March 7, 2015.
Complainant has rights in the CROSSFIT mark as evidenced by its registration of such mark with the USPTO.
The domain name at issue is confusingly similar to Complainant’s CROSSFIT trademark.
Respondent unequivocally consents to transferring the disputed domain name to Complainant.
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.
Preliminary Issue: Consent to Transfer
The Forum was copied on documentation submitted from Respondent to Complainant, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent purports to consent to the transfer of <adaptivecrossfit.com>. Respondent consents to transfer <adaptivecrossfit.com> to Complainant. However, after the initiation of this proceeding, GoDaddy.com, LLC placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
As discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the domain name at issue. Complainant asserts that it has established rights in the CROSSFIT mark. Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Thus, the Panel finds that Complainant has established its rights in the mark based on its registration of that mark with the USPTO.
Complainant contends Respondent’s <adaptivecrossfit.com> is confusingly similar to the CROSSFIT mark because the mark is included entirely with the mere additions of the term “adaptive” and gTLD “.com.” Generic/descriptive terms and gTLDs may not be distinguishing features under the Policy. See Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel agrees that Respondent’s <adaptivecrossfit.com> is confusingly similar to the CROSSFIT mark.
In light of the foregoing, Respondent’s express consent to transfer the confusingly similar domain name at issue in response to the Complaint compels the Panel to order that Respondent’s <adaptivecrossfit.com> domain name be transferred to Complainant. Furthermore, the Panel finds no reason to provide further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy.
Having concluded that Respondent impliedly consents to Complainant’s request that the domain name be transferred to Complainant, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adaptivecrossfit.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 31, 2017
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