Paragraph 15(a) of the Rules for Uniform Domain Name Resolution Policy (“the Rules”) instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Uniform Domain Name Resolution Policy (“the Policy”), these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
In the opinion of the Panel the Disputed domain names are confusingly similar to the Complainant's UPWORK Benelux trademark (Policy, paragraph 4 (a)(i)). Many decisions under the Policy have found that a disputed domain name is identical or confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark or the principal part thereof in its entirety. The Disputed domain name <getupworks.com> contains the UPWORK trademark in its entirety, with the addition of the generic, descriptive and non-distinctive word “get” and the addition of the non-distinctive letter “s”. The Disputed domain name <iupwork.com> contains the UPWORK trademark in its entirety, with the addition of the non-distinctive letter “i”.
The submission by the Respondent that there are many other domain names which include similar dictionary words is irrelevant as the only relevance for this procedure is the confusing similarity between the trademark of the Complainant and the Disputed domain names. In addition, paragraph 4 (a)(i) of the Policy is basically a standing requirement. Finally, the addition of the generic Top-Level Domain (“gTLD") “.com” may be disregarded for purposes of paragraph 4 (a)(i) of the Policy.
In the opinion of the Panel the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the Disputed domain names. Based on the evidence provided by the Complainant, the Disputed domain names resolve to parking websites on which it was first stated “Domain name for sale” and later “is coming soon”. Such use cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Disputed domain name. The Respondent is also not commonly known by the Disputed domain names nor has he acquired any trademark rights.
Under these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed domain names (Policy, paragraph 4 (a)(ii)).
The Panel finds that the Disputed domain names have been registered and are being used in bad faith (Policy, Par. 4(b)(iv)). The evidence submitted by the Claimant verify that the trademark of the Complainant has been existing before the registration of the Disputed domain names; in addition the Complainant's website <upwork.com> which incorporates the trademark of the Complainant was operational before the registration of the Disputed domain names. The Respondent knew or should have known that the Disputed domain names included The Complainant’s trademark. The Panel notes that there are currently no active websites at the Disputed domain names. However, such passive holding of the websites does not prevent the Panel from finding registration and use in bad faith. The Panel also notes that the Respondent’s undeveloped use of the websites at the Disputed domain names which incorporate the Complainant’s trademark in its entirety indicates that the Respondent possibly registered the Disputed domain names with the intention to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademarks of the Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location.
In addition, bad faith registration and use is further indicated by the fact that the Respondent offered the Disputed domain names for sale; in his mail of 5 December 2016 to the Complainant, the Respondent asked for a “reasonable and fair offer” which indicates that the Respondent registered the Disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the Disputed domain names to the Complainant (the owner of the trademark) for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed domain names.
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