Cross Creek Advisors, LLC v. Cross Creek Ventures Private Registration / Cross Creek Ventures Private Registration cross-creek-ventures.com@cross-creek-ventures.com
Claim Number: FA2102001930703
Complainant is Cross Creek Advisors, LLC (“Complainant”), represented by J. Dustin Howell of Workman Nydegger, Utah, USA. Respondent is Cross Creek Ventures Private Registration / Cross Creek Ventures Private Registration cross-creek-ventures.com@cross-creek-ventures.com (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cross-creek-ventures.com> (“Domain Name”), 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2021; the Forum received payment on February 2, 2021.
On February 3, 2021, eNom, LLC confirmed by e-mail to the Forum that the <cross-creek-ventures.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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2021 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@cross-creek-ventures.com. Also on February 5, 2021, 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 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 the private equity markets. Complainant has rights in the CROSS CREEK mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,513,085, registered July 10, 2018). Complainant also has common law trademark rights in the CROSS CREEK mark by virtue of Complainant’s use in commerce. Complainant also has registered various other trade marks containing the words CROSS CREEK with the USPTO including CROSS CREEK CAPITAL (e.g. Reg. No. 3,336,397, registered November 13, 2007 with a date of first use in commerce on 30 September 2006). Respondent’s <cross-creek-ventures.com> domain name is identical or confusingly similar to Complainant’s CROSS CREEK mark as it merely adds the generic top-level domain (“gTLD”) “.com,” the generic term “ventures,” and hyphens to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <cross-creek-ventures.com> domain name. Respondent is not commonly known by the Domain Name nor has Respondent been authorized by Complainant to use the CROSS CREEK mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services as Respondent uses it to compete with Complainant.
Respondent registered and uses the <cross-creek-ventures.com> domain name in bad faith. Respondent uses the Domain Name to compete with Complainant. Additionally, Respondent had actual knowledge of Complainant’s rights to the CROSS CREEK mark prior to registering the Domain Name based on Respondent’s Website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CROSS CREEK mark. The Domain Name is confusingly similar to Complainant’s CROSS CREEK mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the CROSS CREEK mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 5,513,085, registered July 10, 2018). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that the <cross-creek-ventures.com> domain name is confusingly similar to the CROSS CREEK mark as it fully incorporates the CROSS CREEK mark adding only the generic term “ventures,” two hyphens and the “.com” gTLD. The addition of a generic term, a hyphen, and a gTLD are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under 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 Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and 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) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CROSS CREEK mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The WHOIS lists “Cross Creek Ventures Private Registration / Cross Creek Ventures Private Registration cross-creek-ventures.com@cross-creek-ventures.com” as registrant of record. However there is no affirmative evidence that the Respondent is actually commonly known under those names as opposed to simply registering the Domain Name under a name for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”) Given the lack of evidence that the Respondent trades under any name corresponding to the Domain Name, and Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).[i]
Complainant alleges, and provides evidence to support its allegation, that while the Domain Name has been registered since 2006, since 2014 the Domain Name has redirected to a website with the title “Cross Creek Ventures… Early Stage Venture Capital” (“Respondent’s Website”). The Respondent’s Website simply consists of 3 pages being one title page, one page of limited contact information and one page appearing to allow visitors to pay invoices. The Respondent’s Website, aside from asserting that it offers “early stage venture capital” provides no information about itself and does not indicate (beyond the assertion) that it is a website of an active business. In the absence of any Response providing an explanation as to the purpose of the Respondent’s Website, the Respondent’s Website bears all the hallmarks of an inactive website, one that on first view looks like an official business website but on further examination does not appear connected to any form of economic activity.
In summary, if the Respondent’s Website is an actual functioning website then Respondent is using the Domain Name for the purpose of offering financial services in direct competition with Complainant under a similar name to Complainant’s and its registered trademarks. The use of a confusingly similar domain name to resolve to a webpage that directly compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”).
Alternatively, if the Respondent’s Website is simply an inactive website, being a website that does not appear to be connected to a functioning business, in the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
At the time of registration of the Domain Name, October 23, 2006, the Complainant had traded under the CROSS CREEK CAPITAL mark for approximately 3 weeks. The Complaint provides no evidence of any reputation it had in October 2006 or any reason why a prospective registrant would be aware of it at that time. Conversely the Respondent has not filed a Response and hence the Panel has no explanation as to why a party would register the Domain Name and then not use it or use it for an essentially inactive site (albeit one that purports to offer the same services as Complainant) for 14 years.
The Panel, in determining whether, at the time of registration of the Domain Name (October 23, 2006), Respondent had actual knowledge of Complainant’s CROSS CREEK CAPITAL mark must decide between two, quite improbable scenarios, namely:
a) Respondent registered the Domain Name in awareness of a three week old company with no apparent reputation and then chose not to use the Domain Name for 8 years and then used it for an essentially inactive website for the next 6 years; or
b) Respondent, without being aware of the Complainant, coincidently registered a Domain Name that is similar to Complainant’s CROSS CREEK CAPITAL mark within 3 weeks of Complainant’s first use, but never used the Domain Name for an active business, other than for a website that purports to offer services (venture capital services) that are directly competitive with Complainant’s services.
The Panel notes that each of these scenarios are unlikely but on the balance of probabilities decides that scenario a) is more likely and finds that Respondent was aware of Complainant at the time of registration. The Panel reaches this conclusion noting that it is entitled to accept all reasonable allegations set forth in a complaint, that Respondent has failed to deny the allegations that it registered the Domain Name in bad faith (or provide any explanation for why it registered the Domain Name) and because the Respondent’s Website (albeit a website launched 8 years after registration) purports to offer services in direct competition with Complainant’s venture capital services. Were the Respondent entirely unaware of the Complainant it is improbable that it would have used the Domain Name for a website that refers to the exact services offered by Complainant. In the absence of rights or legitimate interests of its own the Respondent’s registration of the Domain Name in awareness of the Complainant demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds on the balance of probabilities that Respondent registered and used the Domain Name in bad faith to create confusion with Complainant’s CROSS CREEK mark for commercial gain by using the confusingly similar Domain Name to resolve to a website, albeit an almost inactive website, that purports to offer venture capital services in in direct competition with the Complainant’s services.
In the absence of any explanation of its conduct, or evidence of rights or legitimate interests, using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See 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).”). See also See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
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 <cross-creek-ventures.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: March 2, 2021
[i] The Complaint suggests that the Respondent may be affiliated with an entity known as Cross Creek Ventures LLC located in Colorado (a different state to the location of the named Registrant). In the absence of any Response or any actual evidence liking the Respondent to the third party with a similar name, the Panel is not prepared to reach such a conclusion.
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