WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CrossFit, Inc. v. Nexperian Holding Limited / Tian Yu Yan

Case No. D2018-1401

1. The Parties

The Complainant is CrossFit, Inc. of Washington D.C., United States of America (“USA” or “United States”), represented by Swanson & Bratschun, LLC, USA.

The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Tian Yu Yan of Shandong, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <goodcrossfit.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2018. On June 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 26, 2018, 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 the Complainant on June 27, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 29, 2018.

On June 27, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Respondent submitted an informal email in Chinese on June 28, 2018, but did not comment on the language of the proceeding by the specified due date. The Complainant requested that English be the language of the proceeding on June 29, 2018.

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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2018. On July 5, 2018, July 7, 2018 and July 8, 2018, the Respondent submitted four further emails in Chinese. On July 23, 2018, the Respondent requested to extend the due date for Response for four days. Accordingly, the Center notified the Parties the due date for Response was extended to July 28, 2018. The informal Response was filed with the Center on July 28, 2018.

The Center appointed Jonathan Agmon as the sole panelist in this matter on August 2, 2018. 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, CrossFit, Inc., is a company incorporated in California, USA, that provides services for, and sells goods related to a fitness training program under the CROSSFIT registered trademark. The Complainant is a company active internationally in the fitness training sector. The Complainant has over 13,000 licensed affiliates throughout the world, including a substantial affiliate network across China, where the Respondent resides.

The Complainant claims it is the owner of numerous CROSSFIT trademarks worldwide, including:

- United States trademark registration no. 3007458, registered on October 18, 2005;

- China trademark registration no. 6962397, registered on October 7, 2010;

- China trademark registration no. 19471707, registered on May 7, 2017;

- United States trademark registration no. 5230799, registered on June 27, 2017;

- China trademark registration no. 20387413A, registered on September 21, 2017; and

- United States trademark registration no. 5355314, registered on December 12, 2017.

The disputed domain name <goodcrossfit.com> was registered on November 5, 2014, and resolves to a website selling goods in competition with those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered mark CROSSFIT as the disputed domain name incorporates entirely the CROSSFIT trademark and only differs from the CROSSFIT trademark by a descriptive word, “good”. The Complainant argues that it has rights in the CROSFIT mark dating from no later than the year 2006 through registration of the mark with the United States Patent and Trademark Office and has registered trademarks rights in China since 2010. The Complainant also argues that it has continuously used the CROSSFIT trademark and its domain name prior to the Respondent’s registration of the disputed domain name, therefore establishing common law rights in the mark.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent registered the disputed domain name on November 5, 2014, long after the Complainant registered the CROSSFIT trademark with the United States Patent and Trademark Office in 2005 and long after the Complainant began using its CROSSFIT trademark in 1985. The Complainant contends that the Respondent is not a licensee of the Complainant nor is the Respondent authorized to use the CROSSFIT trademark for any purpose. The Complainant further contends that the Respondent is not commonly known as “Good Crossfit” since the name at the top of the Respondent’s website is “Rizhao Good Fitness”.

The Complainant further argues that the disputed domain name was registered and is being used in bad faith. The Respondent has attempted to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with the CROSSFIT trademark as the source of the website or of a product or service on that website. The Complainant contends that the Respondent knowingly registered the disputed domain name containing the identical CROSSFIT trademark to capitalize on consumer recognition of the CROSSFIT trademark as it is well known and recognized in the global market, including China. The Complainant further contends that the designation CROSSFIT is unique and arbitrary therefore it is unlikely that the Respondent devised the term “good” CROSSFIT on its own. The Complainant also argues that the Respondent has made no clarification to the lack of relationship between the Complainant and the Respondent on any page of the disputed domain name, which further leads users to believe that the disputed domain name is authorized by or affiliated with the Complainant which is not the case.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not file a substantive reply to the Complainant’s contentions. It submitted an informal reply stating that the dispute domain name was legally registered in accordance with the laws of China and that it should not be party to this proceeding.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11 of the Rules provides that:

“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of the proceeding be English.

The Respondent did not comment on the language of the proceeding.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:

(i) The disputed domain name is composed of terms from the English language;

(ii) The contents of the website under the disputed domain name is automatically displayed in the English language;

(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;

(iv) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.

Upon considering the above, the Panel determines that English be the language of the proceeding.

6.2. Substantive Issues

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <goodcrossfit.com> integrates the Complainant’s CROSSFIT trademark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

Further, the addition of the descriptive word “good” to the Complainant’s CROSSFIT trademark does not avoid confusing similarity between the Complainant’s trademark and the disputed domain name. The addition of merely descriptive terms would not prevent a finding of confusing similarity under the first element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview 3.0, section 2.1.

The Complainant owns various trademark registrations long before the disputed domain name was registered. The Respondent is not known by the Complainant’s mark and the Complainant did not license or otherwise permitted the Respondent to use its trademark. The Respondent is also not commonly known as “Good Crossfit”. The name at the top of the Respondent’s website is “Rizhao Good Fitness”. The Panel finds that the Complainant has established a prima facie case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name. The Respondent has failed to assert any such rights or legitimate interests. The Respondent has not submitted any substantive Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant’s prima facie case. Furthermore, for reasons set out in more detail under bad faith below, the Panel does not consider the Respondent’s use of the disputed domain name to be bona fide.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence which shows that the Respondent has registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant owned a registration for the CROSSFIT trademark in the United States since October 18, 2005 and in China since October 7, 2010 respectively, whereas the Respondent only registered the disputed domain name long after on November 5, 2014. In addition, the evidence submitted by the Complainant indicates that the name Crossfit is associated with the Complainant. As such, the Respondent would likely not have registered the disputed domain name incorporating the Complainant’s CROSSFIT mark if it was unaware of the Complainant and its CROSSFIT trademark. In view of the evidence filed by the Complainant, that the trademark was registered long before the registration of the disputed domain name suggests the Respondent’s bad faith (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence showing that the Respondent is using the disputed domain name for a website offering goods align with those of the Complainant. In fact, some of the goods offered on the Respondent’s website comprise the Complainant’s trademark and seem to be specifically targeting Internet users wishing to buy goods to be used in connection with the Complainant’s CROSSFIT training. Internet users seeking to purchase goods used in connection with the services offered under the Complainant’s trademark would very likely led to believe that the Complainant is either connected to or associated with the Complainant. In reality, no such connection exists, and there is nothing on the website that would clarify that the Respondent is not affiliated with or endorsed by the Complainant. The Panel finds that under the particular circumstances of this case, using the disputed domain name in such a manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s 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 or location or of a product or service on the Respondent’s website or location.

The Panel notes that the Respondent stated in a general manner that it operates lawfully under the laws of China. Lacking any specificity or particularization, the Panel rejects this general argument as being vague, unclear and insufficient to provide any meaningful defense under the Policy.

Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s mark, the Respondent’s use of the disputed domain name, the Panel concludes that the disputed domain name was registered and is being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 <goodcrossfit.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: August 14, 2018