Complainant is CrossFit, Inc. of Scotts Valley, California, United States of America, represented internally.
Respondent is James Medrano of San Antonio, Texas, United States of America.
The disputed domain name <crossfithuebner.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2015. On May 27, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 4, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 25, 2015.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 29, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant offers fitness training and related services. Complainant has offered such services under the mark CROSSFIT since 1985, and it holds several trademark registrations for the CROSSFIT mark, including United States Patent and Trademark Office registration 3007458 in October 2005.
The Domain Name was registered on May 3, 2014. The Domain Name does not resolve to an active website.
At some point in the past several months, Complainant licensed the use of the name CrossFitHuebner to a new affiliate. According to Complainant, Respondent had registered the Domain Name “as part of an agreement with a former investor in CrossFitHuebner” pursuant to which Respondent would create a website for the CrossFitHuebner business. Complainant was not aware of Respondent’s registration of the Domain Name. In any event, the putative investor pulled out of the business venture shortly thereafter. Complainant then found a new investor for the CrossFitHuebner venture, at which point it was discovered that Respondent was the registrant of the Domain Name.
Between December 2014 and April 2015, Complainant and the CrossFitHuebner investor sent several emails and letters to Respondent, who responded to some of them. At one point, Respondent stated that he had paid USD 200 for the Domain Name and had done some work to develop a website. He stated that he would transfer the Domain Name to Complainant or Complainant’s new affiliate for USD 500. The last letter, dated April 16, 2015, was sent by Complainant. It set forth Complainant’s trademark rights and demanded that the Domain Name be surrendered. Complainant also stated that, with the Domain Name registration set to expire on May 3, 2015, Respondent had no right to renew the registration, and if he did so Complainant would “take further legal action” against him. Respondent did not reply to this letter.
Complainant’s main legal contentions are set forth above in the Factual Background section. Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
There is no doubt that Complainant holds trademark rights in the CROSSFIT mark, through registration and lengthy use. The Domain Name incorporates the CROSSFIT mark in its entirety and adds the word “Huebner”. The Panel concludes that the additional word does not sufficiently distinguish the Domain Name from the CROSSFIT mark.
The Panel concludes that Policy paragraph 4(a)(i) has been satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent never received permission from Complainant to register the Domain Name or use Complainant’s mark. Respondent did not make any attempt, either before or during this proceeding, to articulate and prove his bona fides vis-à-vis the Domain Name.
The Panel concludes that Policy paragraph 4(a)(ii) has been satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
On the limited record in this case, and without the benefit of a Response, the Panel concludes that the Domain Name was registered and used the Domain Name in bad faith. There is no evidence that Complainant ever authorized Respondent, purportedly acting for a former investor, to register the Domain Name, which completely incorporates Complainant’s CROSSFIT mark. Respondent has made no effort to explain himself in this proceeding.
This case is somewhat akin to the panel’s decision in E. Tjellesen ApS v. Gosh Cosmetics Americas, WIPO Case No. D2011-0068, wherein the respondent had been a local distributor of the complainant’s GOSH products and had registered a domain name incorporating the GOSH mark without the complainant’s authorization. After a few years, the distributorship agreement between the parties terminated. The panel in the Tjellesen case held that the respondent had registered the domain name in bad faith. In the instant case, the reasoning of the Tjellesen decision is even more forceful, as Complainant here had no agreement of any type at any time with Respondent.
Further, on the record here, i.e., without the benefit of a precise explanation of Respondent’s purported costs sought from Complainant, the Panel finds support in Policy paragraph 4(b)(i).
The Panel finds that Policy paragraph 4(a)(iii) has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <crossfithuebner.com> be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: July 21, 2015