{
    "case_number": "CAC-UDRP-102511",
    "time_of_filling": "2019-06-06 09:34:41",
    "domain_names": [
        "upworkskills.com "
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Upwork Inc.",
        "Upwork Global Inc."
    ],
    "complainant_representative": "RiskIQ, Inc. c\/o Jonathan Matkowsky",
    "respondent": [
        "Anupam Kumar"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nTHE DISPUTED DOMAIN NAME IS IDENTICAL OR CONFUSINGLY SIMILAR TO A TRADEMARK OR SERVICE MARK IN WHICH THE COMPLAINANT HAS RIGHTS\r\n\r\nFounded in 2014 from the combination of Elance and oDesk, Upwork Inc. and its wholly-owned subsidiaries including Upwork Global Inc. (collectively, \"Upwork\") seeks to create economic opportunities, by operating the largest online global marketplace that enables businesses to find and work with highly-skilled freelancers. \r\n\r\nThe Complainants allege that as of the end of last year, the total dollar value transacted through the Upwork platform was $1.8 billion, Upwork users spanned across one hundred and eighty countries, and more than 30% of Fortune 500 companies were using Upwork. \r\n\r\nThe disputed domain name was created on November 7, 2017.\r\n\r\nAccording to the Complainants, as of at least a year before the disputed domain name was created, the Upwork site was already one of the top 250 most popular sites in India where the Respondent resides. In the month before the disputed domain name was created, Upwork appeared on \"Bloomberg Technology\" and in Barron's. By July 2017 (approximately four months before the creation of the disputed domain name), the UPWORK mark was already found to be \"distinctive and widely known, particularly through its popular \"www.upwork.com\" website,\" and was \"one of the top 500 most popular global websites on the Internet\" (as stated in Upwork Global Inc., Upwork Inc. v. Imran khan, All Education info. \/ Md Abdul Malek, 1Links.in \/ Aman Shah, BollyJoGot.com \/ Rubel SbS, Hostsbs, WIPO Case No. D2017-1104, <allupworktestanswers.com>).\r\n\r\nThe first Complainant (Upwork Inc.) relies on its various “UPWORK” trademark registrations, including word trademarks in the US and Benelux.\r\n\r\nPrevious UDRP panels recognized that Upwork has established rights in the UPWORK mark. \r\n\r\nThe Complainants state that the mere addition of descriptive terms such as “skills” does not adequately distinguish the disputed domain from the UPWORK marks.\r\n\r\nThe descriptive wording in the disputed domain name is within Upwork's field of commerce and indicative of Representative Upwork Skills Related Services, which supports a finding of confusing similarity under the Policy. \r\n\r\nThe UPWORK mark is recognizable within the disputed domain name, and the additional word does nothing to distinguish the disputed domain name from the UPWORK mark because it clearly relates to the business conducted by the Upwork under that mark. \r\n\r\n\r\nTHE RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DISPUTED DOMAIN NAME\r\n\r\nThe Complainants contend that the Respondent describes its services as providing clues and samples papers to help pass Upwork skills tests. Freelancers can receive recommendations and resources for passing Upwork skill tests from either Upwork under its UPWORK mark, or from the Respondent via the disputed domain name. The Complainants claim that in offering such highly related services under a confusingly similar mark, the Respondent also uses the disputed domain name to advertise a general offer to sell the disputed domain name. \r\n\r\nA general offer to sell the disputed domain name supports there is no rights or legitimate interest in this domain name.\r\n\r\nThe Respondent is not an authorized reseller or distributor of Upwork skill tests, and has no permission or approval from Upwork to use its trademarks in any manner.\r\n\r\nThe Respondent is not legitimately known by the disputed domain name, and has not likely registered personally to do business under the trade name \"Upwork Skills\". As part of Upwork's mark use guidelines, incorporated into its terms of service, it is prohibited to use Upwork's marks as part of a business name or a domain name.\r\n\r\nConsidering the disputed domain name is generally offered for sale in almost every post on the site, there is a page in the footer specifically appealing directly to potential advertisers, and an appeal to contribute funds to the Respondent's PayPal account, this site is by its very nature commercial.\r\n\r\nBesides, the Respondent did not go out of his way to make it clear to Internet users visiting his website that it is not affiliated with Upwork. \r\n\r\nThe only disclaimer on Respondent's site is generic.\r\n\r\nThe use of the disputed domain name cannot be considered to be in connection with a \"bona fide\" offering if the probability is that it was meant to confuse Internet users as to source or affiliation.\r\n\r\nNot only have the Complainants never authorized the Respondent to use the “UPWORK” mark, but its testing requirements prohibit, among other things, publishing, reproducing, or transmitting any part of Upwork Skill Tests, in any form, by any means, for any purpose without express written permission from Upwork. \r\n\r\nThe terms of service incorporating the brand usage guidelines cover both prohibited uses of the mark, and restrict use of copyrighted works by Upwork without its permission or approval in writing. \r\n\r\nThe Complainants emphasize that the Respondent's website does not accurately disclose its relationship with Upwork and state that the Respondent uses a copyright notice legend in the name of a fictitious (non-existent) trade name \"Upwork Skills\", which most people would likely believe, mistakenly, is affiliated with Upwork. \r\n\r\n\r\nTHE DISPUTED DOMAIN NAME WAS REGISTERED AND BEING USED IN BAD FAITH\r\n\r\nThe Complainants contend that Respondent's resources cause a likelihood of confusion, and disrupt Upwork's business by undermining the integrity of the testing requirements on Upwork. \r\n\r\nUpwork is also unable to maintain quality control over such resources being provided, and people will likely think that the disputed domain name is either being used with permission or approval from Upwork, or in violation of its rights — both of which are harmful to Upwork's reputation and brand. \r\n\r\nWhile most Internet users that land on the site and do not manage to dispel the initial interest confusion on their own will likely only think that the site is unofficially sanctioned as an Upwork resource for passing its skills tests - rather than a site officially from Upwork - the Policy covers likelihood of confusion as to sponsorship, affiliation or endorsement, and not only as to the source. \r\n\r\nAggravating circumstances include selecting the user name \"Upwork Skills\" rather than using his own name, displaying a colored logo and favicon on the site closely resembling the Upwork Logo Mark and displaying a copyright notice legend using a false trade name \"Upwork Skills\".\r\n\r\nAccording to the Complainants, the deliberate creation of initial interest confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on Respondent's part. \r\n\r\nAdditional evidence of bad faith registration and use includes the offer for sale with a link to advertising to reach new audiences and generate leads, a general offer to sell the Domain, and Respondent's failure to respond to Upwork's notice sent in January. \r\n\r\nAccording to the Complainants, it seems reasonable to infer that the Respondent registered the disputed domain name intending to use it in a manner calculated to create and exploit confusion with Upwork's mark for the purpose of selling the domain name, monetizing the content, and with the intent to disrupt Upwork’s business. \r\n\r\n\r\n",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.",
    "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n",
    "rights": "The Complainants have, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights (within the meaning of paragraph 4(a)(i) of the Policy).  ",
    "no_rights_or_legitimate_interests": "The Complainants have, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).  ",
    "bad_faith": "The Complainants have, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).  ",
    "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.  ",
    "decision": "Accepted",
    "panelists": [
        "Igor Motsnyi"
    ],
    "date_of_panel_decision": "2019-07-16 00:00:00",
    "informal_english_translation": "In this proceeding, the Complainants rely on a number of “UPWORK” trademark registrations, including:\r\n\r\n- BENELUX word trademark “UPWORK” No. 0974795, registered on May 18, 2015;\r\n\r\n- US word trademark “UPWORK” No. 5,237,481, registered on July 4, 2017.\r\n",
    "decision_domains": {
        "UPWORKSKILLS.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}