The Complainant is ClassPass, Inc., United States of America, represented by Brand Enforcement Team 101 Domain, United States of America (“United States”).
The Registrant is Michael Melleney, Body Blast Fitness Limited, Ireland. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2020, via email. On September 22, 2020, the Center transmitted by email to IEDR a request for registrar verification in connection with the disputed domain name. On September 23, 2020, IEDR transmitted by email to the Center its verification response confirming the registrant and contact information for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the .IE Dispute Resolution Policy (the “IEDR Policy”), the WIPO Dispute Resolution Rules of Procedure for .IE Domain Name Registrations (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2.1 and 4.1, the Center formally notified the Registrant of the Complaint, and the proceeding commenced on September 25, 2020. In accordance with the Rules, paragraph 5.1, the due date for Response was October 23, 2020. On October 20, 2020, the Registrant requested for an extension of the response due date due to exceptional circumstances. The Complainant assented to a ten-day extension and therefore, the Center granted the Registrant a ten-day extension to submit a response in line with the Rules, paragraph 5.1. The Response was filed with the Center on November 2, 2020, and the Center informed the Parties that it would proceed with Panel appointment pursuant to paragraph 6 of the Rules. The Center appointed Adam Taylor as the sole panelist in this matter on November 9, 2020. 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. Following communications from the Complainant on November 26, 2020, and the Registrant on December 3, 2020, the Panel issued a Procedural Order on December 7, 2020, extending the decision due date to January 8, 2021, to enable the parties to explore the possibility of settlement. Neither party sent any further communication and, accordingly, the Panel issued a further Procedural Order on January 8, 2021, re-instituting the proceedings and setting a new decision date of January 15, 2021. 4. Factual Background The Complainant operates a business branded “ClassPass” that helps customers find, book and review fitness classes, principally via a website at “www.classpass.com”. The site enables monthly membership of some 20,000 fitness studios and gyms in many countries including Ireland and the United Kingdom. The Complainant owns a number of registered trade marks for CLASSPASS including: - United States trade mark no. 5,121,700, filed on August 22, 2014, registered on January 17, 2017, in class 41 – and claiming a first use date of December 2, 2014; and Since 2010, the Registrant has operated a number of gyms in Ireland under the brand “Women’s Fitness”. On June 4, 2015, the Registrant filed an application for an Irish trade mark for “Class Pass”, which was subsequently registered under no. 253128 in class 41. The Registrant registered the disputed domain name on June 26, 2015. The disputed domain name has only ever resolved to a holding page. 5. Parties’ Contentions A. Complainant The following is a summary of the Complainant’s contentions: The Complainant has operated its business since 2014, when it published its website. The Complainant has since established a global presence and reputation. The Complainant owns over 30 active country-specific domain names. The disputed domain name incorporates the Complainant’s trade mark in its entirety and is likely to confuse the Complainant’s customers, given the Complainant’s extensive use of its mark. The Registrant lacks rights in law or legitimate interests in the disputed domain name. The Complainant has not licensed the Registrant to use its trade mark. The Registrant owns no relevant registered trade marks. The Registrant has not used the disputed domain name in connection with a bona fide offering of goods or services. The disputed domain name was registered or used in bad faith. The Registrant registered the disputed domain name in 2015 after the Complainant had issued several press releases relating to its business in 2014. The Registrant has been consistently and consecutively using the brand “Classpass” since its first use in 2010, five years prior to registration of the disputed domain name. The Registrant is a competitor of the Complainant and operates websites at “www.womensgym.ie” and “www.womensfitness.ie”, offering similar services to those of the Complainant. The Registrant registered the disputed domain name to block the Complainant from reflecting its trade mark in the disputed domain name and to disrupt the business of the Complainant, its competitor. The Registrant is misleadingly diverting current and prospective customers of the Complainant to a domain name that has no association with the Complainant. B. Registrant The following is a summary of the Registrant’s contentions: The Registrant’s registered trade mark constitutes rights and legitimate interests in the disputed domain name, which it registered in good faith. Since 2010, the Registrant has offered its customers a flexible form membership called a “Class Pass”, promoted as an “any class, anytime” flexible membership option, and this term has become synonymous with the Registrant. The Registrant has sold over 20,000 such membership plans over the last 10 years and continues to actively advertise this type of membership. The disputed domain name reflects the products and services offered by the Registrant and was registered in good faith following the filing of the Registrant’s application for a trade mark. The Registrant has a clear connection with Ireland that justifies its use of the disputed domain name. The Registrant is preparing to launch a website at the disputed domain name that will expand its offering to a wider customer base in Ireland. The Complainant had no connection with Ireland before it began operating there in July 2019, some four years after the Registrant applied for its trade mark and registered the disputed domain name. The Complainant lacked a sufficient connection with Ireland to justify registering a “.ie” domain name in accordance with the IEDR naming requirements. The Complainant only started using the name ClassPass in 2014, several years after the Registrant started using the term in 2010. The Complainant has provided no evidence in support of its claim to have first used the name in 2010 and which is contradicted by the Complainant’s own evidence. The Complainant owned no European Union trade marks, other than in Germany, as at the time that the Registrant registered the disputed domain name. The Registrant has never attempted to sell the disputed domain name to the Complainant or anyone else. The parties are not competitors. The Registrant operates physical fitness classes and gym memberships whereas the Complainant markets itself as a partner to fitness studios and gyms. The Complainant set out to mislead the Panel by: 1. omitting any reference to the Registrant’s Class Pass service, which must have come to the Complainant’s attention when it reviewed the Registrant’s websites; 2. claiming that the Registrant possessed no relevant registered trade mark, when a simple search would have shown that it did; 3. making deliberately exaggerated claims that the Registrant was a competitor of the Complainant; and 4. claiming that it has used its name since 2010. 6. Discussion and Findings Under paragraph 1.1 of the IEDR Policy, the Complainant is required to prove that: - the disputed domain name is identical or misleadingly similar to a protected identifier in which the Complainant has rights; - the Registrant has no rights in law or legitimate interests in respect of the disputed domain name; and - the disputed domain name has been registered or is being used in bad faith. A. Identical or Misleadingly Similar Under paragraph 1.3.1 of the IEDR Policy, “protected identifiers” include “trade and service marks protected in the island of Ireland”. The Complainant owns a European Union trade mark for CLASSPASS. This has effect within Ireland and therefore constitutes a protected identifier. The disputed domain name is identical to this protected identifier excluding the country code Top-Level Domain (“ccTLD”) “.ie”, which is disregarded for the purpose of this comparison. The Panel therefore finds that the Complainant has established the first element of paragraph 1.1 of the IEDR Policy. B. Rights in Law or Legitimate Interests It is unnecessary to consider this element in view of the Panel’s conclusion under the third element below. C. Registered or Used in Bad Faith Because the timeline is important in this case, it is necessary to identify the earliest possible date when the Complainant acquired trade mark rights in its name. The Complainant filed its first trade mark application for CLASSPASS in 2014. As regards unregistered rights, the Complainant initially states that it commenced its business and published its website in 2014. The Complainant then goes on to apparently contradict itself by claiming that it started using its name in 2010, but cross-referring to an annex that contains a series of articles from 2014. The first of these, dated February 12, 2014, states that “Classtivity.com ... is rebranding itself as ClassPass.com”. The Panel also notes that the Complainant’s United States trade mark refers to a “first use date” of 2014 and that there is no evidence from the Complainant indicating any use of its name before 2014. In these circumstances, the Panel finds that, on the balance of probabilities, the Complainant first acquired trade mark rights in 2014. Whereas the Registrant has produced evidence of its use of the term “Class Pass” since at least as early as 2011, including a marketing email sent on December 7, 2011, that invited recipients to “treat someone to a 5 Class Pass” and another email, dated April 3, 2012, that included the heading “Class Pass” and promoted “our great fitness class passes”. In view of the Registrant’s prior use of the term “Class Pass”, as well as the lack of any evidence as to the scale of the Complainant’s reputation as of 2015, when the disputed domain name was registered, the Panel accepts the Registrant’s explanation that it acquired the domain name in good faith independently of the Complainant and with reference to its own longstanding use of this relatively descriptive term. The Panel also considers that the Registrant possesses rights or legitimate interests in the disputed domain name deriving from its own trade mark filed shortly before it registered the disputed domain name. There is no evidence that the Registrant subsequently used the disputed the main name in bad faith. The disputed domain name has never been used for an active website; and this is not a case where the principles of “passive holding” in bad faith arise. See section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)1 . The Panel therefore finds that the Complainant has failed to establish the third element of paragraph 1.1 of the IEDR Policy. D. Abuse of Proceeding Paragraph 14.6 of the Rules provides that “[i]f after considering the submissions the Panel finds that the complaint was brought in bad faith, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Registrant maintains that the Complainant set out to mislead the Panel in a number of respects. Certainly, the Panel is mystified by the Complainant’s assertion that it began using its name in 2010 and it is possible that this may have been a clumsy attempt to backdate the Complainant’s rights to the year when the Registrant started trading. However, there was never a serious risk that the Panel would be misled because, as explained above, the 2010 claim is contradicted by other parts of the Complaint itself as well as by the Complainant’s own supporting documents, all of which clearly indicate a start date of 2014. The Registrant also draws attention to the Complainant’s failure to mention either the references to “Class Pass” on the Registrant’s own websites or the existence of the Registrant’s Irish registered trade mark but the Panel cannot be sure that the Complainant was aware of such matters, even if it ought to have been. Finally, the Registrant asserts that the Complainant made deliberately exaggerated claims that the Registrant was a competitor of the Complainant. However, while the parties may not be direct competitors, they are arguably competitors in a looser sense in that they operate in the same industry. Ultimately, the Panel has decided not to make a finding that the Complaint was brought in bad faith, although the decision is a marginal one. 7. Decision For the foregoing reasons, the Complaint is denied. Adam Taylor 1 Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), panels in IEDR Policy cases have previously considered it appropriate to have regard to these principles except to the extent that the IEDR Policy diverges from the UDRP. See, e.g., MAPFRE Assistance Agency Ireland v. Jason Evans, Car Protect Warranties, Ltd.,WIPO Case No. DIE2018-0002, and Mr. Rooter LLC v. David Doherty and Unbeatable Drain Cleaning Limited,WIPO Case No. DIE2018-0006.
- European Union Trade Mark no. 014357495, filed on July 14, 2015, registered on January 21, 2016, in classes 35, 41, and 44.
Sole Panelist
Dated: January 22, 2021
Full & Egal Universal Law Academy