CrossFit, Inc. won a UDRP decision this week for 113 domains which include the CROSSFIT mark. The case is interesting in that there is simultaneously a lawsuit in the Southern District of California Federal Court that is proceeding over the very same domain names but concerns issues of trademark infringement, dilution and unfair competition. The panel could have suspended the UDRP until the litigation has been resolved, but decided to move forward and render a decision. CrossFit is the Plaintiff in that case and is asking for damages in excess of $9,000,000.
We had reported on the filing of this action a few weeks ago, and had noted that CrossFit had filed a lawsuit against a company in Arizona that was using the CrossFit mark. With the new litigation in California it appears that CrossFit is starting to step up its brand protection efforts in a very major way.
The Respondent’s counter arguments, most of which were pretty run-of-the-mill, included one item based on a theory of quasi-contributory liability that I have never seen before in a UDRP decision:
“Respondent registered these domain names only after discussing his intentions with GoDaddy.com, LLC. Respondent concluded, based on these conversations, that it was acceptable for him to register the domain names in hopes of later selling them off. Respondent believed when registering these domain names that what he was doing was completely acceptable.”
Further, although many of the domain names actually had content on them that could be looked at as legitimate “gripe sites” (albeit over the top in terms of the scope of complaints), even those sites had advertising and directed users to Resondent’s business:
“The Panel acknowledges that although the website reads like a run-of-the-mill gripe-site or free-speech site, there are prominent advertisements that make the strong inference that Respondent’s business and products are a better alternative to Complainant’s CROSSFIT business. The Panel agrees that the negative appropriation of the CROSSFIT mark for the ultimate purpose of ruining the CROSSFIT mark in the eyes of Internet users so as to redirect them to the competing “Results Plus” business owned by Respondent does not rise to the level of a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.”
It will be interesting to keep an eye on the pending litigation to see how it is ultimately resolved, and the UDRP decision is definitely worth a read.