{ "case_number": "CAC-UDRP-102777", "time_of_filling": "2019-11-22 10:53:53", "domain_names": [ "newupwork.com", "newupwork.org", "newupwork.net", "newupwork.info " ], "case_administrator": "Šárka Glasslová (Case admin)", "complainant": [ "Upwork Inc.", "Upwork Global Inc." ], "complainant_representative": "RiskIQ, Inc. c\/o Jonathan Matkowsky", "respondent": [ "Md Alamin" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe Complainant is a major player in the field of online freelancing, linking companies and individuals. The Complainant is a company with its registered office located in Mountain View, California, USA. The Complainant uses the company name Upwork Inc., the domain name and the word trademark \"UPWORK\" registered before the Respondent registered the disputed domain name. Upwork Inc. (hereinafter referred to as Complainant) is the proprietor of the Upwork trademarks. The Complainant uses his domain name to connect to a website through which it informs potential customers about its UPWORK mark and its services.\r\n\r\nThe Respondent from Bangladesh registered the domain name in 2019. Then in the same year he registered the domain names , and . The disputed domain names currently resolves to a website which is a freelancing platform. The Respondent used a hidden name, organized by a provider in Panama (registrant).\r\n\r\nTo begin with, the Complainant contends that the first disputed domain name is confusingly similar to its UPWORK trademark as it incorporates the entirety of the said trademark, in association with the generic term “new” as prefix, which also describes the Complainant’s activity and therefore increases a likelihood of confusion.\r\nThe same arguments the Complainant presented concerning Respondents later registered disputed domain names , and .\r\n\r\nThe Complainant further alleges that the Respondent does not have any rights or legitimate interest in the disputed domain names as the Respondent offers directly competitive services on the website corresponding to the disputed domain names, which does not constitute a bona fide offering of goods and services or a noncommercial or fair use of the disputed domain names.\r\n\r\nThe Complainant also claims that the disputed domain names were registered and are being used in bad faith as the Respondent uses the disputed domain names to offer competitive services. Hence, the Complainant contends that the Respondent had actual knowledge of the Complainant’s trademark at the time of registration of the disputed domain names which in turn, led the Respondent to register the disputed domain names anonymously.\r\n\r\n\r\nSCHEDULE OF CITATIONS provided by the Complainant:\r\n\r\nFN1 E.g., Upwork Inc. and Upwork Global Inc. v. Anupam Kumar, CAC Case No. 102511 (transferring to Complainant Upwork Inc.) (July 16, 2019), archived at https:\/\/perma.cc\/ Upwork Global Inc., Upwork Inc. v. Imran khan, All Education info. et al., WIPO Case No. D2017-1104 (July 23, 2017) (ordering be transferred to Upwork Inc. in a joint complaint filed by Complainants), archived at https:\/\/perma.cc\/\r\n\r\n\r\n\r\nFN2 E.g., Bayer AG v. Cagri Savan, WIPO Case No. D2015-1573 (Oct. 26, 2015), https:\/\/perma.cc\/\r\n\r\n\r\n\r\nFN3 E.g., Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum, July 31, 2000), archived at https:\/\/perma.cc\/\r\n\r\n\r\n\r\nFN4 E.g., CAC Case No. 102511 (cited above); Upwork Inc. v. Anh Nguyen, CAC Case No. 101367 (Jan. 1, 2017), archived at https:\/\/perma.cc\/ Upwork Inc. \/ Upwork Global Inc. v. Brian Benedict, CAC Case No. 101370 (Jan. 27, 2017) (finding both registered trademark rights and common law rights in UPWORK by virtue of \"overwhelming\" extent of use of the mark as part of its re-branding, whereby by May 2015, the mark was already being used in relation to the provision of services to users numbering in the multi-millions), https:\/\/perma.cc\/ Upwork, Inc. v. Abwebtech c\/o Satish Kumar, INDRP\/899 (June 27, 2017) (ordering to be transferred to Upwork, Inc., (decision available from the .IN registry, automatically downloadable from https:\/\/perma.cc\/ WIPO Case No. D2017-1104, (\"The Complainant Upwork Inc. has registered trademark rights in UPWORK. Its wholly owned subsidiary, Upwork Global Inc. is licensed by its parent to use that mark. Accordingly, both Complainants have rights in the UPWORK mark.\"), available at https:\/\/perma.cc\/\r\n\r\n\r\n\r\nFN5 CAC Case Nos. 100832, Cephalon, Inc. v. Wuxi Yilian LLC a\/k\/a Gracia Elmandero et al. (Oct. 21, 2014) (), available at https:\/\/perma.cc\/ Teva Respiratory, LLC v. Health Matrix Direct, Inc. (2015-09-23) (proairdiscountcard.com), available at https:\/\/perma.cc\/\r\n\r\n\r\n\r\nFN6 Cf. Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc, WIPO Case No. D2017-0481 (May 8, 2017) (finding bad-faith, and on the same facts, rejecting claim to legitimate interests where the logical inference that the Domains were chosen for their value in suggesting an association with the complainant, or otherwise to attract persons seeking complainant), archived at https:\/\/perma.cc\/\r\n\r\n\r\n\r\n\r\n\r\nFN8 Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the domain name under Policy paragraph 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name)\r\n\r\nFN9 Pfizer Inc. v. Ubrokerage inc, WIPO Case No. D2015-1927, (cited by WIPO Overview 3.0, para. 2.5.3) (\"Use of the [Domain]in connection with a website addressing women's health issues (and containing advertising) would take unfair advantage of Complainant's...marks, which are used by Complainant in the women's health field in connection with a women's contraceptive product. Thus, Respondent's claimed purpose for the Domain..., which is identical to the name of Complainant's ...product, is either a pretext or would result in bad faith use.\")\r\n\r\nFN10 Segway Inc. v. Domains By Proxy, LLC \/ Arthur Andreasyan, NIM, WIPO Case No. D2016-0725 (June 23, 2016).\r\n\r\nFN11 E.g., CAC Case No. 102088\r\n\r\nFN12 CAC Case No. 102323 (finding that the disclaimer itself shows that the Respondent was well-aware of the Complainant's rights); CAC Case No. 101388 (finding that even if the disclaimer were seen and read, it is not clear that the product is not licensed or otherwise approved by the trademark holder).\r\n\r\nFN13 Google LLC v. Nidhi Rao, Claim No. FA1803001779544 (May 8, 2018) (internal citations omitted), available at https:\/\/perma.cc\/\r\n\r\n\r\n\r\nFN14 Avast Software s. r. o. v. Victor Chernyshov, CAC Case No. 101568 (internal citations omitted)\r\n\r\nFN15 Target Brands, Inc. v. Bobby Henderson, Claim No. FA1109001408381 (Oct. 24, 2011) (internal citations omitted), https:\/\/perma.cc\/", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which relate to the disputed domain name.", "no_response_filed": "NO ADMINISTRATIVELY COMPLAINT RESPONSE HAS BEEN FILED.\r\n\r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have 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": [ "Dr. jur. Harald von Herget" ], "date_of_panel_decision": "2020-01-22 00:00:00", "informal_english_translation": "The Complainant is owner of the Trademark Word \"UPWORK\", BX Reg. No. 0974795, since 25.05.2015, valid until 2025 and various (25) national Word-Trademarks and the international Trademark Word \"UPWORK\" IR 1383791. First Registration of the Word-Trademark \"UPWORK\" was in ICELAND 26.08.2014.\r\n\r\nFurther the Complainant is owner of domain name upwork.com", "decision_domains": { "NEWUPWORK.COM": "TRANSFERRED", "NEWUPWORK.ORG": "TRANSFERRED", "NEWUPWORK.NET": "TRANSFERRED", "NEWUPWORK.INFO": "TRANSFERRED" }, "panelist": null, "panellists_text": null }