WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
CrossFit, Inc. v. Carolina Samper
Case No. D2014-0519
1. The Parties
The Complainant is CrossFit, Inc. of Scotts Valley, California, United States of America (“United States”), represented by Beck Greener, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Carolina Samper of Valencia, Spain.
2. The Domain Name and Registrar
The disputed domain name <crossfitspain.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2014. On April 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2014, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 25, 2014.
On May 1, 2014 the Center received a communication from the Complainant requesting the suspension of the proceedings. The proceedings were suspended as from May 1, 2014 until June 1, 2014. On May 16, 2014 the Center received a communication from the Complainant requesting the re-institution of the proceedings. The Center notified the re-institution of the proceedings on the same date.
On May 19, 2014 the Center received an informal communication from the Respondent attaching a contract of sale of the disputed domain name. The Center replied to such communication on May 20, 2014 indicating that the communication would be transmitted to the Panel upon appointment. On May 20, 2014, the Center requested the Registrar to confirm the registrant name and contact details and the locked status of the disputed domain name. The Registrar replied on the same date to the Center confirming that “the domain name ‘crossfitspain.com’ has been locked at the registrar level (since our initial registrar verification response) and the current registrant is Carolina Samper. This lock has not and will not be removed during the course of the dispute.”
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 20, 2014. 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
The Complainant is the owner of the following trademarks, among others:
9, 38 and 41
The disputed domain name was registered by the Respondent on April 9, 2012.
5. Parties’ Contentions
The Complainant argues the following:
That the Complainant owns substantial goodwill in the United States, the European Union and Spain in its business comprising the licensing of “Crossfit” branded exercise programs to gyms, and the publication of exercise techniques, as well as the supply of sports clothing.
That the above-referred goodwill is associated by the consuming public with the CROSSFIT trademark.
That since 2010, the Complainant has licensed at least 80 “Crossfit” gyms in Spain, the country where the Respondent is apparently located.
That licensees are given the right to use the name “Crossfit” in relation with the provision of exercise and fitness services.
That the Complainant provides fitness advice and notices of fitness courses organized under the “Crossfit” name and other information provided by its licensees.
a) Identical or confusingly similar
That the disputed domain name is confusingly similar to Complainant’s trademarks because it comprises in its entirety the CROSSFIT trademark with the sole addition of the geographical term “Spain”, which addition does not alter the underlying meaning of the disputed domain name so as to avoid confusing similarity.
That Internet users are likely to assume that the disputed domain name is registered by the Complainant, and that the advertisement found on the website at the disputed domain name is offered by the Complainant or its Spanish licensees.
b) Legitimate rights or interests
That the use of the disputed domain name infringes the Complainant’s registered and unregistered rights in the CROSSFIT mark.
That the Respondent used to own the Spanish trademark No. 2868892 for CROSS FIT SPAIN, but after being approached by the Complainant’s lawyers the Respondent surrendered said Spanish trademark registration.
That the Respondent had filed a Spanish trademark application for CROSSFITNESS under number 3047585, but after this application was opposed by the Complainant, the Respondent withdrew it.
That the Respondent has never substantively contested or challenged the Complainant’s rights in the CROSSFIT mark. Therefore the Complainant states that it can be inferred that the Respondent understands that it has no rights in the disputed domain name.
That the Respondent has used the disputed domain name to promote gym services, which is the core business area of the Complainant.
That the links found on the website at the disputed domain name do not work, except for the link labeled “Más Informacion”, which enables the user to contact the Respondent, which is a clear attempt to drive up the price of the disputed domain name.
That the Respondent is using the disputed domain name to divert consumers or to tarnish the Complainant´s trademarks.
c) Registered and used in bad faith
That the Complainant’s CROSSFIT trademarks are well known and recognized within the European markets, and that therefore, it is not credible that the registration of the disputed domain name was made in good faith because the Respondent was fully aware of the Complainant and its reputation in the fitness field.
That by registering the disputed domain name, the Respondent sought to secure for itself a website that would be assumed by third party users to belong to the Complainant.
That the Respondent registered the disputed domain name with the aim of selling said domain name to the Complainant or to third parties at a significant profit.
That the Respondent has also engaged in a pattern of registering domain names because it has also registered the domain name <crossfitspain.es>
That the Respondent intended to attract Internet users to the web page to which the disputed domain name resolves by creating a likelihood of confusion with the Complainant CROSSFIT mark so as to suggest that the services offered on said page are related to, or were licensed by the Complainant.
The Respondent did not timely reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is requested to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The 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.
As the Respondent has failed to submit a timely Response to the Complainant’s contentions, the Panel may choose to accept as true all of the Complainant’s reasonable allegations (See Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).
A. Identical or Confusingly Similar
The disputed domain name <crossfitspain.com> is confusingly similar to the Complainant’s trademark CROSSFIT, because said domain name entirely incorporates the trademark CROSSFIT, with the addition of the geographically descriptive term “Spain”, and the generic Top-Level Domain (gTLD) “.com”.
The addition of a geographically descriptive term such as “Spain” does not confer a distinctive character to the disputed domain name, in relation to the Complainant’s trademark CROSSFIT, and could lead to confusion among Internet users, since it could be interpreted that this disputed domain name refers to the Complainant, or any of its Spanish licensees who render fitness and sports services.
The addition of the gTLD “.com” may be immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the gTLD “.com”, because such gTLD has no legal significance (see, mutatis mutandis, Antena 3 de Televisión S.A. c/ D. Javier García Quintas, WIPO Case No. D2002-0537, CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859).
The Panel is satisfied that the first requirement of the Policy has been met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent has not filed any evidence showing bona fide use of the disputed domain name. The Complainant submitted evidence, not challenged by the Respondent, showing that the disputed domain name resolved to a web page on which fitness services were offered. In this Panel’s view, this cannot be considered in good faith use in the circumstances of this case.
The Respondent did not provide any evidence showing that it has been commonly known as <crossfitspain.com>. According to the materials filed by the Complainant, the web page to which the disputed domain name resolves is linked to the Instituto de Ciencias de la Salud y la Actividad Física (ISAF). This evidence is supported by the autoreply messages that were originated in the Respondent’s e-mail, and sent to the Center during this proceeding, linking the Respondent to ISAF. Thus, the Respondent seems to be commonly known as ISAF, and not <crossfitspain.com>.
In accordance with the materials filed by the Complainant, the use that the Respondent was making of the disputed domain name, shows an intent to misleadingly divert consumers to the disputed domain name, and the website to which it resolves. The page seems to have offered fitness services that compete with those of the Complainant. In this Panel’s opinion, this use cannot be deemed legitimate.
The Panel is satisfied that the second element of the Policy has been met.
C. Registered and Used in Bad Faith
According to Paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The website at the disputed domain name currently displays a parked site, in Spanish, stating “El dominio se encuentra en parking en los servidores de abansys.com”. Notwithstanding the above, the evidence filed by the Complainant, undisputed by the Respondent, shows that the Respondent has used the disputed domain name to publish fitness services that compete with those of the Complainant, thus intentionally attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website (see, e.g., Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, supra; Asian World of Martial Arts Inc. v. Texas International Property Associates, supra; Owens Corning v. NA, WIPO Case No. D2007-1143).
Considering that there are approximately 80 licensees who run gyms in Spain bearing the Complainant’s trademark, it is likely that Internet users are led to error when encountering the disputed domain name, and think that there is some association between said domain name, its holder, the website, and the Complainant or its licensees.
The Panel is satisfied that the third element of the Policy has been met.
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 <crossfitspain.com> be transferred to the Complainant.
Date: June 4, 2014