CrossFit, Inc. v. Lindsay Livingston
Claim Number: FA1806001793146
Complainant is CrossFit, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Lindsay Livingston (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crossfithome.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 June 21, 2018; the Forum received payment on June 21, 2018.
On June 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crossfithome.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 June 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 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@crossfithome.com. Also on June 27, 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.
A timely Response was received and determined to be complete on July 17, 2018.
Complainant's Additional Submission was received on July 20, 2018, and it was timely.
On July 23, 2018, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Since 1985, Complainant and its predecessor in interest have used the CROSSFIT mark extensively for a variety of goods and services, including fitness training, educational services, retail store services, clothing, and shoes. Complainant has rights in the CROSSFIT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,007,458, registered Oct. 18, 2005). See Compl. Annex 4. Respondent’s <crossfithome.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic term “home” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent has no rights or legitimate interests in the <crossfithome.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent does not make any use of the domain name, as the resolving domain displays the message “website coming soon! Please check back soon to see if the site is available.” See Compl. Annex 11.
iii) Respondent registered and uses the <crossfithome.com> domain name in bad faith. Respondent offered to sell the domain name to Complainant for $20,000.00. See Compl. Annexes 13-14. Further, Respondent fails to make any use of the resolving webpage for the disputed domain name. See Compl. Annex 11. Finally, Respondent had actual knowledge of Complainant’s rights in the CROSSFIT mark when it registered the infringing domain name given Complainant’s well-known mark and longstanding use of the unique mark, and given Respondent’s previous participation in Complainant’s CROSSFIT activities. See Compl. Annex 12.
B. Respondent
i) Complainant’s trademarks are generic, because CROSSFIT and the public use those marks to refer to a broad array of products, rather than a single producer. The mark is extremely broad and unspecific, and is a combination of two existing terms/words: “cross-training” and “fitness.” Thus, the domain name is not confusingly similar to Complainant’s mark.
ii) Respondent has rights and legitimate interests in the domain name. Complainant omitted one portion of the analysis, that is, Respondent is making a legitimate noncommercial or fair use of the domain name. Respondent currently does not make any commercial gain through use of the domain name, and doesn’t use the domain name at all.
iii) Respondent never intended to exploit the commercial value of a domain affiliated with the CROSSFIT brand, as its original intention was to use the domain to market her CROSSFIT gym, which is a bona fide offering of goods or services. Further, Complainant was the one who first approached Respondent with the offer to purchase the domain name, and Respondent never had any intentions of selling the domain name. See Compl. Annex 14.
C. Complainant's Additional Submissions
i) Respondent's argument that the domain name consists of generic terms is completely contrary to existing UDRP case law, as the Forum declines to recognize that generic terms be included in the confusingly similar analysis.
ii) Respondent's argument that failing to use a domain name for any purpose confers rights and legitimate interests in the domain name is without merit. Further, even if Respondent’s self-serving statement were probative of its intent, Respondent intends to make a commercial use of the domain, which would not be for any bona fide offering of goods or services.
iii) Respondent registered the domain name in bad faith. The record clearly shows that Respondent registered the infringing domain name without Complainant’s authorization and with full knowledge of Complainant’s rights in the CROSSFIT mark. Further, Respondent clearly attempted to sell the domain name for costs well in excess of out-of-pocket expenses, and even stated so in email communications. See Compl. Annex 14.
1. Respondent registered the <crossfithome.com> domain name on June 2, 2015.
2. Complainant has established rights in the CROSSFIT mark with the USPTO (e.g. Reg. No. 3,007,458, registered Oct. 18, 2005).
3. Complainant has used the CROSSFIT mark for over 30 years and enjoys the goodwill and fame of the mark as well as strong rights in this mark for goods and services, including fitness training, clothing, and footwear.
4. The website of the resolving disputed domain name contains the message “website coming soon! Please check back soon to see if the site is available.”
5. A copy of the email exchange between Complainant and Respondent shows that Complainant approached Respondent with the offer to purchase the disputed domain name so as to reimburse Respondent for any registration and renewal costs Respondent to get this domain, and Respondent did offer to sell the disputed domain name to Complainant for $20,000.00.
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.
Complainant claims rights in the CROSSFIT mark with the USPTO (e.g. Reg. No. 3,007,458, registered Oct. 18, 2005). See Compl. Annex 4. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). 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).”). Accordingly, the Panel finds that Complainant has established rights in the CROSSFIT mark.
Complainant next argues that Respondent’s <crossfithome.com> domain name is identical or confusingly similar to Complainant’s mark as it merely adds the generic term “home” and the “.com” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <crossfithome.com> domain name is confusingly similar to the CROSSFIT mark under Policy ¶4(a)(i).
While Respondent contends that the <crossfithome.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent has no rights or legitimate interests in the <crossfithome.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Lindsay Livingston” as the registrant. See Compl. Annex 10. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CROSSFIT mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. 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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <crossfithome.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant contends that the <crossfithome.com> domain name resolves in a website that lacks any content. Failure to make active use of a confusingly similar domain name can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the resolving domain, which contains the message “website coming soon! Please check back soon to see if the site is available.” See Compl. Annex 11. Accordingly, the Panel finds that Respondent fails to actively use the disputed domain name and thus fails to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that it has rights and legitimate interests in the domain name. Complainant omitted one portion of the analysis, that is, Respondent is making a legitimate noncommercial or fair use of the domain name. Respondent currently does not make any commercial gain through use of the domain name, and doesn’t use the domain name at all. Respondent further argues that Complainant’s trademarks are generic, because CROSSFIT and the public use those marks to refer to a broad array of products, rather than a single producer. The mark is extremely broad and unspecific, and is a combination of two existing terms/words: “cross-training” and “fitness.”
Against Respondent's contentions, Complainant rebuts to the effect that Respondent's argument that failing to use a domain name for any purpose confers rights and legitimate interests in the domain name is without merit. Further, even if Respondent’s self-serving statement were probative of its intent, Respondent intends to make a commercial use of the domain, which would not be for any bona fide offering of goods or services.
Complainant further rebuts: Respondent's contention that CROSSFIT is a generic term because it is the combination of two existing terms (“cross-training” and “fitness”) lacks any legal merit. First, the registered mark is CROSSFIT, not Cross-training Fitness. And second, some of the most well-known trademarks in the world are coined terms made up of two already-existing words, for example, American Express, Facebook, Federal Express, Land Rover, PayPal, and SalesForce, or coined terms from clippings of words, for example, Microsoft and Netflix. Moreover, Respondent’s argument that “it is well-known within the public and CrossFit, Inc. community that the majority of affiliates have the word ‘CrossFit’ in their name, including domain name” is completely irrelevant to Respondent’s claim that CROSSFIT is generic. CrossFit, Inc. affiliates receive a license to use the CROSSFIT mark in their name and domain name. The existence of over 10,000 paying trademark licensees reinforces that CROSSFIT is absolutely a brand.
As the Panel agrees with Complainant and finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent offered to sell the <crossfithome.com> domain name to Complainant for an amount in excess of out of pocket expenses. Offering a confusingly similar domain name for sale can evince bad faith registration. See Campmor, Inc. v. GearPro.com, FA 197972 (Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). Complainant provides a copy of the email exchange between itself and Respondent, which shows that Respondent did offer to sell the domain name to Complainant for $20,000.00. See Compl. Annexes 13-14.
Respondent counter-contends that it never intended to exploit the commercial value of a domain affiliated with the CROSSFIT brand, as its original intention was to use the domain to market her CROSSFIT gym, which is a bona fide offering of goods or services. Further, Complainant was the one who first approached Respondent with the offer to purchase the domain name, and Respondent never had any intentions of selling the domain name. See Compl. Annex 14.
Complainant rebuts: Respondent clearly attempted to sell the domain name for costs well in excess of out-of-pocket expenses, and even stated so in email communications. See Compl. Annex 14. Twice (not once), Respondent demanded more than her costs to transfer the disputed domain name to CrossFit, Inc. The first time, it was a thinly- veiled demand – “it will be at a cost, and that cost will be above the registration and renewal costs that were paid.” The second time was more obvious – “Ms. Livingston will agree to transfer the domain to CrossFit, Inc. in exchange for payment in the amount of $20,000.” Under the Policy, both offers to sell were bad-faith acts. See HomeVestors of America, Inc. v. DOMAIN ADMINISTRATOR / DOMAINVEST B.V., FA 1769273 (Forum March 9, 2018) (“A counteroffer to a complainant to sell a domain name for an amount in excess of estimated out-of- pocket costs can indicate bad faith registration and use per Policy ¶ 4(b)(i)”); LEGO Juris A/S v. Elizer Besnard, FA 1423428 (Forum Feb. 22, 2012) (“Complainant argues that Respondent’s bad faith registration and use of the <legoshop.us> domain name is clear by Respondent’s willingness to sell the disputed domain name. Following Complainant’s offer to reimburse Respondent for its registration costs for the <legoshop.us> domain name, Respondent countered that selling the disputed domain name for an amount equal to its registration costs would be a big loss for Respondent. The panels in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003), found that the willingness to sell a disputed domain name for an amount in excess of out-of- pocket costs demonstrates bad faith. Therefore the Panel finds that Respondent’s registration and use of the <legoshop.us> domain name was done in bad faith pursuant to Policy ¶ 4(b)(i)”). Complainant concludes that Respondent’s apparent claim of entrapment is completely disingenuous and without merit.
The Panel agrees with Complainant and finds that Respondent’s offering of the domain name for sale directly to the Complainant for an amount in excess of out-of- pocket costs demonstrates bad faith even though Complainant was the one who first approached Respondent with the offer to purchase the disputed domain name.
Next, Complainant claims that Respondent inactively holds the domain name, as Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use 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 noted above, Complainant provides a screenshot of the resolving domain, which contains the message “website coming soon! Please check back soon to see if the site is available.” See Compl. Annex 11. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) As a result of Complainant's use of the CROSSFIT mark for over 30 years and registration of the CROSSFIT mark for over a decade, it enjoys the goodwill and fame of the mark as well as strong rights in this mark for goods and services, including fitness training, clothing, and footwear, and
ii) Respondent has provided no evidence whatsoever of any actual or plausible contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the CROSSFIT mark at the time of registering the <crossfithome.com> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent had actual knowledge of Complainant’s rights in the CROSSFIT mark when it registered the infringing domain name given Complainant’s well-known mark and longstanding use of the unique mark, and given Respondent’s previous participation in Complainant’s CROSSFIT activities. See Compl. Annex 12.
The Panel agrees with Complainant and infers that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under 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 <crossfithome.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 30, 2018
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