CrossFit, Inc. v. Ivan Wong
Claim Number: FA1705001730815
Complainant is CrossFit, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, U.S.A. Respondent is Ivan Wong (“Respondent”), California, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <crossfit.co>, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2017; the Forum received payment on May 9, 2017.
On May 10, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <crossfit.co> 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 May 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@crossfit.co. Also on May 10, 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 June 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 provider of fitness training and fitness related goods and services. Complainant has registered the CROSSFIT mark with the United States Patent and Trademark Office (“USPTO”) in furtherance of its business. Respondent’s <crossfit.co> is identical to Complainant’s CROSSFIT mark because it incorporates the mark in its entirety except for the addition of a country-code top-level domain (“ccTLD”) “.co”.
Respondent has neither rights nor legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its CROSSFIT mark. The disputed domain name resolves to a website displaying an error message which indicates that Respondent is not using the domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent is both passively holding the disputed domain name and attempting to sell the domain name, as indicated by Respondent’s website. Respondent also failed to respond to Complainant’s cease and desist letters. Finally, Respondent had actual knowledge of Complainant’s rights in the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <crossfit.co> domain name.
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 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 argues that Respondent’s <crossfit.co> is identical to Complainant’s mark because it incorporates that mark in its entirety except for the addition of a gTLD “.co”. The addition of a gTLD to a mark is not sufficient to distinguish a domain name from that mark. See SCOLA v. Wick, FA 1115109 (Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”). Therefore, the Panel finds that Respondent’s disputed domain name is identical to the CROSSFIT mark in which Complainant has established rights.
Complainant has proved this element.
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), 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name and that Complainant has not authorized Respondent to use Complainant’s CROSSFIT mark. Where a respondent fails to submit a response, the Panel may look to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “Ivan Wong” as the registrant’s name. Furthermore, lack of evidence in the record showing that Complainant authorized Respondent to use the CROSSFIT mark can also support a finding that Respondent does not have rights or legitimate interests in the disputed domain name. 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 concludes that Respondent is not commonly known by the <crossfit.co> domain name.
Complainant argues that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use because the domain name resolves to a website displaying an error message. When a Respondent makes no indication that it is using the disputed domain name, then the panel may conclude that respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use. Franzus Co. v. Cotner, FA 125365 (Forum Nov. 7, 2002) (determining that after the respondent’s passive holding of the disputed domain name for five years, its “unsupported, self-serving allegations alone are insufficient to establish that Respondent has rights or legitimate interests in respect of the domain name at issue”). The Panel finds that the disputed domain name resolves to a page displaying an error message and that the domain was registered in 2010. The Panel infers that Respondent has not actively used the disputed domain name for several years and therefore is not using it for a bona fide offering of goods or services or a legitimate non-commercial fair use.
Complainant has proved this element.
Complainant contends that Respondent is passively holding the disputed domain name in order to sell it. When there is a lack of legitimate use of the disputed domain name combined with a general offer for sale of the domain name, the Panel may conclude that Respondent registered the disputed domain name in bad faith. See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). The Panel finds that the disputed domain name resolves to a website displaying an error message as well as an offer for sale of the domain name. The Panel infers that Respondent has only registered the domain name for the purpose of selling it and therefore that Respondent has registered and is using the disputed domain name in bad faith.
Finally, Complainant argues that Respondent failed to respond to cease and desist letters and therefore that Respondent has registered and is using the disputed domain name in bad faith. Respondent’s failure to respond to cease and desist letters from Complainant may support a finding of bad faith. See Seiko Epson Corporation v. Asish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a demand letter has been found to constitute bad faith). Complainant supports its contention with reference to an email sent from Complainant to Respondent dated March 29, 2017. The Panel finds that Respondent did not respond to the cease and desist notice as Complainant claims and finds that Respondent has registered and is using the disputed domain name in bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <crossfit.co> domain name be TRANSFERRED from Respondent to Complainant .
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 9, 2017
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