{
    "case_number": "CAC-UDRP-103379",
    "time_of_filling": "2020-11-03 14:55:58",
    "domain_names": [
        "upworksolution.com"
    ],
    "case_administrator": "Denisa Bilík (CAC) (Case admin)",
    "complainant": [
        "Upwork Inc."
    ],
    "complainant_representative": "RiskIQ, Inc. -  Incident, Investigation and Intelligence (i3), Jonathan Matkowsky",
    "respondent": [
        "upworkSolution"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a leading online provider of talent solutions to transform traditional staffing. It empowers businesses with more flexible access to quality talent, on demand. For the year ended December 31, 2019, the Complainant’s gross services volume was $2.1 billion, with more than 30% of Fortune 500 companies using its services across more than 180 countries. ",
    "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": "PARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant claims that the disputed domain name is confusingly similar to the Complainant’s registered trademark;  that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name;  and that the Respondent registered and is using the disputed domain name in bad faith.  \r\n\r\nThe Complainant’s claims for each point are here below reported: \r\n(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights\r\n\r\nThe disputed domain name <upworksolution.com> reproduces the Complainant's UPWORK trademark in its entirety with the sole addition of the generic term “solution”, thus the Complainant’s UPWORK trademark is undoubtedly recognizable within the disputed domain name, and the addition of the descriptive term “solution”, which is particularly relevant to the Complainant’s business, does not prevent a finding of confusing similarity under the first element.\r\n\r\nThe Complainant concludes that the disputed domain name is confusingly similar to the prior registered trademark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.\r\n\r\n(2) The Respondent has no rights or legitimate interests in respect of the domain name;\r\n\r\nThe Respondent has no rights or legitimate interests in respect of the disputed domain name because it was registered and is being used for the sole purpose of a fraudulent scheme masquerading as Upwork (i.e. the Complainant).\r\n\r\nIn support of this assertion the Complainant has argued that a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner, and that the Respondent’s use of the Complainant’s brand, stylized logos, and color scheme at the resolving website is overwhelming evidence that the Respondent is seeking to fraudulently masquerade as the Complainant to deceive people visiting the site for the Respondent’s illegitimate gain. \r\n\r\nThe Respondent’s registration and use of the disputed domain name to profit from Internet user confusion is evidence of bad faith registration and use pursuant to Policy paragraph 4(b)(iv).\r\n\r\nThe mere registration of a domain name does not establish rights or legitimate interests in a disputed domain name.\r\n\r\nThe Respondent is not an authorized dealer of the Complainant’s nor has it ever been authorized by the Complainant to use the UPWORK trademark in the disputed domain name.\r\n\r\nThe Respondent registered the disputed domain name in December 2019, several years after the UPWORK trademark became widely known.\r\n\r\nFor all of the foregoing reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of thedisputed domain name pursuant to paragraph 4(a)(ii) of the Policy.\r\n\r\n(3) Holder of the disputed domain name registers and uses the disputed domain name in bad faith.\r\n\r\nThe Respondent is certainly aware of the Complainant’s rights because the stylized Upwork logo displayed on the Respondent’s website is taken from the Complainant's brand assets, literally right down to the color scheme. \r\n\r\nThe Respondent registered and is using the disputed domain name in bad faith, masquerading as the Complainant, which disrupts the Complainant’s business and creates a threat that Internet users will divulge their personal data to the Respondent in the mistaken belief that  they are communicating with the Complainant.\r\n\r\nThe Respondent was aware of the trademark use guidelines for Upwork and accepted them as part of registering and continuing to use the Complainant’s platform at the time that it registered the disputed domain name, in direct contravention of such guidelines it accepted.\r\n\r\nThe Complainant's representative was not able to find any actual entity called “Upwork”, “Upwork Solution”, or “UpworkSolution” when searching licenses issued in the UAE either in the Unified Commercial Registration System - Ministry of Economy by business name, or by trade name search in the Department of Economic Development - Abu Dhabi. This supports the argument that no entity exists at the false address provided in the registrar verification response.\r\n\r\nThe Respondent’s use of a proxy to register the disputed domain name, masking the identity of a non-existent entity, supports the argument of bad-faith registration and use.\r\n\r\nIn light of the above, the Complainant concluded that the disputed domain name was registered and is being used in bad faith in full satisfaction of paragraphs 4(a)(iii) and 4(b) of the Policy.\r\n\r\nRESPONDENT:\r\nIn a very short response the Respondent contends that:\r\n\r\n•\tThe disputed domain name is its own property and any resemblance with the UPWORK mark is not prohibited; \r\n•\tIt has removed the UPWORK  logo from its website; and \r\n•\tIt is willing to sell the disputed domain name for a good offer.",
    "rights": "The Complainant has, 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 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 name (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 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": [
        "Dr.  Fabrizio Bedarida"
    ],
    "date_of_panel_decision": "2020-12-23 00:00:00",
    "informal_english_translation": "The Complainant has documented  to be the owner of numerous registrations for the UPWORK mark.\r\nThe Complainant is, inter alia, the owner of the following trademarks: \r\n•\tUnited States trademark registration no. 5237481 “UPWORK” registered on July 4, 2017;\r\n•\tUnited Arab Emirates trademark registration no. 229783 “UPWORK” registered on September 3, 2015.\r\nThe Complainant is also the holder of the domain <upwork.com>.\r\n",
    "decision_domains": {
        "UPWORKSOLUTION.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}