WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CrossFit, Inc. v. Whois Agent, Domain Whois Privacy Protection Service / James Chang

Case No. D2016-1893

1. The Parties

Complainant is CrossFit, Inc. of Scotts Valley, California, United States of America ("USA"), represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA.

Respondent is Whois Agent, Domain Whois Privacy Protection Service of Shanghai, China / James Chang of Qingdao, Shandong, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <crossfitinchina.com> is registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on September 16, 2016. On September 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 22, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on the same day. On September 22, 2016, the Center also transmitted by email in both English and Chinese to the Parties an email regarding the language of the proceeding. Complainant confirmed its request that English be the language of the proceeding on the same day. On September 23, 2016, Respondent submitted an email inquiring how to proceed with the proceeding and requested that Chinese be the language of the proceeding.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 29, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2016. Respondent submitted two informal responses by email on September 30, 2016 and October 1, 2016. Respondent filed a formal Response on October 10, 2016. On October 12, 2016, Respondent submitted a further Response by email.

The Center appointed Yijun Tian as the sole panelist in this matter on October 26, 2016. 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.

4. Factual Background

Complainant, CrossFit, Inc. is a company incorporated in Scotts Valley, California, USA. Founded in 1985, it is one of the world's leading companies providing fitness training and education. It also offers certification services as well as a range of apparel and other products. Complainant now has over 7,000 licensed CROSSFIT affiliates throughout the USA and over 13,000 worldwide, including a substantial affiliate network across China (See Exhibit 4 to the Complaint).

Complainant is the exclusive owner of the registered CrossFit mark since 2005, including a trademark in the USA registered since October 18, 2005 (registration number 3,007,458; asserting a first-use date of January 1, 1985) and in China registered since October 7, 2010 (registration number 6962397) (Exhibit 10 to the Complaint) (the "CROSSFIT Mark"). Complainant also owns numerous domain names which contain the CROSSFIT Mark, such as <crossfit.com> and <crossfitsydney.com.au> (See Exhibit 4 to the Complaint).

The disputed domain name <crossfitinchina.com> was registered on July 25, 2012. The registration date of the disputed domain name is long after the CrossFit Mark was registered. The disputed domain name resolved to a website where Respondent holds itself out as being an affiliate of Complainant, including content copied directly from Complainant's official website, and purporting to offer fitness equipment being offered by Complainant.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to the CROSSFIT Marks in which Complainant has rights. The only difference is the additions of the generic word "in", the geographic term "China" and the non-distinguishing generic Top-Level Domain ("gTLD") ".com."

Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <crossfitinchina.com> be transferred to it.

B. Respondent

Respondent contends that the international prevailing principle for domain name registration is "first-come, first-served".

Respondent contends that the disputed domain name's registration is not in bad faith, and it is not for market disruption. It does not have the intention to sell the disputed domain name at a high price.

Respondent contends it has registered the disputed domain name for many years, and has obtained certain reputation in China.

Respondent contends the disputed domain name has been registered as a whole and does not have any interval between all letters.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Complainant's working language is English. The use of Chinese would impose a significant burden on Complainant by forcing it to incur substantial translation costs inordinate to the cost of normal proceedings. This would not be in accord with the interests of speed and low cost of proceedings under the UDRP.

(b) In previous UDRP decisions, where a respondent's disputed domain name incorporates a well-known English-language mark, panels have concluded that the proceedings may be conducted in English.

(c) The language of the website at the disputed domain name is offered entirely in English. (See Exhibit 3 to the Complaint). Respondent therefore seeks to avail itself of an English-speaking market by using the disputed domain name to promote its website.

(d) Complainant asserts that the balance of hardships and fairness weighs strongly in Complainant's favor and respectfully requests that the proceeding be conducted in English.

Respondent made submissions with respect to the language of the proceeding. It objects to the use of English as the language of the proceeding, and has requested that Chinese be the language of the proceeding for the following reasons:

(a) Respondent does not understand the email and relevant documents.

(b) Respondent contends there are too many professional terms in the email.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further provides:

"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement" (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name <crossfitinchina.com> includes the English words "cross", "fit", "in" and "china" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <crossfitinchina.com> was registered in Latin characters and is composed of words in the English language, rather than Chinese script; (b) the website resolved from the disputed domain name <crossfitinchina.com> is in English, and Respondent is apparently doing business in English through the website (although it also contains a link to the Chinese version of the website); (c) the website appears to have been directed to users worldwide (particularly English) rather than Chinese speakers (because the default language of the website is English); (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese; (f) Respondent respond in Chinese to the extent that it appears that Respondent was able to understand the substantive aspects of the Complaint.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the CROSSFIT Marks acquired through registration. The CROSSFIT Marks have been registered worldwide since 2005, and Complainant has a widespread reputation one of the world's leading companies providing fitness training and education.

The disputed domain name <crossfitinchina.com> comprises the CROSSFIT Mark in its entirety. The disputed domain name simply connects the CROSSFIT Mark with the additional phrase "in China". This does not eliminate the identity or the confusing similarity between Complainant's registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The addition of the words "in" and "China" to Complainant's mark fails to distinguish the disputed domain name from Complainant's trademark. By contrast, it may increase the confusing similarity. Complainant is one of the world's leading companies providing fitness training and education (as mentioned above). The disputed domain name may lead to confusion on the part of Internet users who may falsely believe that the disputed domain name is operated by Complainant for providing CROSSFIT-branded products or services in China.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the CROSSFIT Marks.

The Panel therefore holds that the Complaint fulfils the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; see also WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has rights in the CROSSFIT Mark since 2005. According to Complainant, it is one of the world's leading companies providing fitness training and education, and has registered trademark rights in China since 2010. It has over 7,000 licensed CROSSFIT affiliates throughout the USA and over 13,000 worldwide, including a substantial affiliate network across China. (See Exhibit 4 to the Complaint at 12-13).

Moreover, Respondent is not an authorized dealer of CROSSFIT-branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Respondent contends that international prevailing principle for domain name registration is "first-come, first-served". Respondent further contends it has registered the disputed domain name for many years, and has obtained certain reputation in China. Although as a general rule the registration of domain names is a "first-come, first-served" system, in this particular case the Panel concludes that Respondent was conducting the practice of cybersquatting.

As the WIPO noted, "domain name disputes arise largely from the practice of cybersquatting, which involves the pre-emptive registration of trademarks by third parties as domain names. Cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection… they can keep the registration and use the name of the person or business associated with that domain name to attract business for their own sites."¹

The disputed domain name in this proceeding resolved to a website where Respondent holds itself out as being an affiliate of Complainant, including content copied directly from Complainant's official website, and purporting to offer fitness equipment being offered by Complainant (as introduced above). Respondent has arguably conducted the practice of cybersquatting.

More specifically, based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the element "crossfit" in its domain name and business operation or the use of the CROSSFIT Marks and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the CROSSFIT Mark or to apply for or use any domain name incorporating the CROSSFIT Mark.

(b) There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Rather, as detailed below, Respondent appears to be trading off the goodwill associated with Complainant's CROSSFIT Mark by holding itself out as Complainant or one of its affiliates.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds, also taking into consideration the Panel's findings below, that Complainant has established the second element of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online 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.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, the Panel concludes that Respondent has registered and used the disputed domain name in bad faith.

Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the CROSSFIT Marks with regard to its products or services. Complainant has registered its CROSSFIT Marks internationally, including in China. Moreover, according to the information provided by Complainant, the website at the disputed domain name advertised for sale various purported CROSSFIT products or services.

Respondent would likely not have advertised products or services purporting to be CROSSFIT products or services on this website if it was unaware of CROSSFIT's reputation. In other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark rights at the time of the registration of the disputed domain name.

The Panel therefore finds that the CROSSFIT Mark is not a mark that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's CROSSFIT-branded products or services.

Use in Bad Faith

Complainant has adduced evidence to prove that by using the disputed domain name, Respondent has "intentionally attempted to attract, for commercial gain, Internet users to Respondent's website" purportedly offering Complainant's CROSSFIT-branded products and services without authorization.

To establish an "intention for commercial gain" for the purpose of this Policy, evidence is required to indicate that it is "more likely than not" that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).

Given the widespread reputation of the CROSSFIT Marks (as well as the content on Respondent's website at the disputed domain name <crossfitinchina.com> mentioned above), the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the CROSSFIT Marks. Noting also that apparently no clarification as to Respondent's relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at the disputed domain name <crossfitinchina.com> is either Complainant's site or the site of an official authorized agent of Complainant, which is not the case.

The Panel therefore concludes that the disputed domain name <crossfitinchina.com> is being used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainant's trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant and/or to disrupt the business of Complainant. The choice of the disputed domain name and the conduct of Respondent as far as the use of the disputed domain name is concerned indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <crossfitinchina.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: November 9, 2016

¹ https://www.wipo.int/amc/en/center/faq/domains.html