{
    "case_number": "CAC-UDRP-104523",
    "time_of_filling": "2022-05-24 09:11:42",
    "domain_names": [
        "upworkrh.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Upwork Global Inc."
    ],
    "complainant_representative": "Microsoft Corporation",
    "respondent": [
        "UpWork Rh"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nUpwork operates the world’s largest work marketplace at <upwork.com> that connects businesses, with independent talent, as measured by gross services volume. Its talent community, including everyone from one-person start-ups to over 30% of the Fortune 100, earned over $3.3 billion on Upwork in 2021 across more than ten thousand skills in over ninety categories. TIME, the global media brand reaching a combined audience of more than 100 million around the world, selected Upwork, from nominations in every sector, and from industry experts around the world, for its annual TIME100 Most Influential Companies list highlighting businesses making an extraordinary impact.\r\n\r\nComplainant Upwork Global Inc. is a wholly-owned U.S. subsidiary of Upwork Inc., the owner of the below trademarks which predate the registration of the Disputed Domain name. Between the parent company, Upwork Inc. and the complainant Upwork Global Inc there is in place a license according to which the Complainant Upwork Global, which operates with 'Upwork' in its trade name, has the right to conduct this proceeding and any proceeding relating to the UPWORK registered mark. \r\n\r\nThe Disputed Domain Name < upworkrh.com> has been registered on March 26, 2021. \r\n\r\nThe Disputed Domain Name resolve to an active website that relate to human resources services. ",
    "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\nPARTIES' CONTENTIONS:\r\n\r\nCOMPLAINANT:\r\n\r\nThe Complainant's contentions are the following:\r\n\r\nThe Disputed Domain name is confusingly similar to the trademarks in which the Complainant has rights, as such incorporates the entirety of the UPWORK trademark, and is therefore, in the Complainant’s view, generally considered confusingly similar to that mark for purposes of UDRP standing. \r\n\r\nThe Complainant further asserts that the Disputed Domain Name only appends the descriptive letters \"RH\" to the mark UPWORK, being used as an abbreviation in Spanish for \"Recursos Humanos,\" meaning \"Human Resources.\" In the Complainant’s view, this broader context, if anything, increases confusion because it is closely related to the Complainant's services covered by the Upwork registration. For example, in Class 35, the Complainant contends that the UPWORK trademark registration expressly mentions human resources in a wide variety of contexts from \"consulting services in the field of human resources\" to the \"administration, management, implementation and coordination of human resources\" to \"business management of human resources\" and even \"providing information in the field of human resources for others...\".\r\n\r\nTherefore, the Complainant asserts that the Disputed Domain Name is confusingly similar to the mark UPWORK in which Complainant has rights. To this end, the Complainant is a wholly-owned U.S. subsidiary of Upwork Inc., the owner of the invoked UPWORK trademarks, between these two entities being in place a license according to which the Complainant, which operates with ‘Upwork’ in its trade name, has the right to conduct this proceeding and any proceeding relating to the UPWORK registered marks.\r\n\r\nFurther, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.\r\n\r\nTo this end, the Complainant asserts that the UPWORK trademark registrations are covering human resources and recruitment since at least 2015 and such were issued well before Respondent registered the Disputed Domain Name in March 2021. The Complainant further contends that, according to Respondent's website's terms and conditions, its corporate name does not include \"UPWORK\" but is \"AR & CS MANAGMENT AND HUMAN RESOURCES, S.C.\", and it has never received permission or approval from UPWORK to offer services that would be perceived as related bearing a substantially indistinguishable UPWORK trademark, or to register an UPWORK-domain name for competitive services. In the Complainant’s view, the use of a substantially indistinguishable mark for closely related services on a competing site does not support a claim to rights or legitimate interests in the Complainant’s view. \r\n\r\nLastly, the Complainant contends that the Disputed Domain Name was registered and is being used in bad-faith. In the Complainant’s view, circumstances indicating bad-faith registration and use include the nature of the Disputed Domain Name, which wholly incorporates the relevant distinctive mark plus a descriptive term specifically related to the Complainant's area of commercial activity. Also, the Complainant asserts that the Disputed Domain Name was put to use for services specifically covered by the registration certificates, which indicates that Respondent's aim was to profit from or exploit the UPWORK trademark. \r\n\r\nFurthermore, the Complainant asserts that the Respondent was clearly aware of UPWORK when it selected the Disputed Domain Name and this is due, in the Complainant’s view, to the fact that, when the Complainant offered to reimburse the documented out-of-pocket registration costs and give Respondent time to transition to a different domain name that is not confusingly similar, according to the correspondence attached to the file, the Respondent presented no credible evidence-backed rationale for how it came up with the mark independent of its trademark significance, and instead simply offered to sell the Disputed Domain Name for a profit clearly in excess of what was spent to register it in the first place. The Complainant further asserts that, while Respondent preferred to speak in Spanish, a translation was provided in Spanish as a courtesy, and from several responses received leading up to the submission of the Complaint, it is likely in his view that , the Respondent understood, especially given that he was presumably able to comprehend the English registration agreement that he agreed to when registering the Disputed Domain Name in English according to the registrar's verification response in this case. The Complainant contends that after the exchange and demand for a profit in excess of the registration costs, the Respondent then claimed it did not understand. In the Complainant’s view, this is not likely especially given that he was presumably able to comprehend the English registration agreement that he agreed to when registering the Disputed Domain Name in English.\r\n\r\nFurthermore, the Complainant asserts that, beneath the proxy registration, the Respondent chose to register the Disputed Domain Name in the name of \"UpWork RH\" instead of in the name of the beneficial owner of the Disputed Domain that controls it according to the Respondent's website. The Complainant contends that the Respondent has not provided any fictitious business name filing for the company purported to be the owner, specifically \"AR & CS MANAGMENT AND HUMAN RESOURCES, S.C.\". Therefore, in the Complainant’s view, it is likely that the Respondent registered the Disputed Domain Name using a false and fictitious identification for the Respondent's organization according to the Registrar's verification response.\r\n\r\nIn any case, in the Complainant’s view, with UPWORK appearing in all the top results of major search engines prior to when the Respondent registered the Disputed Domain Name, including Google search, the Respondent would have observed that UPWORK is being used in relation to human resources or recruitment. The Complainant further asserts that, it is difficult to accept that Respondent at the very least, did not even do a cursory search related to the term 'UPWORK' before selecting it and therefore, had actual knowledge of Complainant--the world’s largest work marketplace as measured by gross services volume for recruitment and human resources-related activities--and Complainant’s rights, before selecting to incorporate it into the Disputed Domain Name. \r\n\r\nTherefore, the Complainant contends that Respondent has by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. Furthermore, the Complainant asserts that there are also circumstances indicating that the Respondent has likely registered the Disputed Domain Name primarily for the purpose of selling it to the owner of the trademark, for valuable consideration in excess of the Respondent’s documented out-of-pocket registration costs for the Disputed Domain Name because even after protest, Respondent demanded at least a thousand dollars and had no credible explanation for how it came up with the name other than claiming UpworkRH is \"totally different\" than Upwork. The Complainant further asserts that, it is much more likely that RH was intended to be a non-distinctive acronym for \"Recursos Humanos\" (meaning \"Human Resources.\") as Respondent even when out of its way to display \"RH\" in capital letters and to differentiate it from \"UpWork\" in the logo on its homepage. \r\n\r\nFor all of the foregoing reasons, the Complainant contends that it has satisfied all three elements of the Policy.",
    "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": [
        "Delia-Mihaela Belciu"
    ],
    "date_of_panel_decision": "2022-07-10 00:00:00",
    "informal_english_translation": "The Complainant bases its Complaint on several UPWORK trademark registrations, namely:\r\n\r\n- AUSTRALIA, Reg. No. 1676473; priority filing date 26 August 2014 ICELAND 2303\/2014; Issuance Date: January 15, 2016; International Classes 9, 35, 36, 38, 41 & 42. \r\n\r\n- BENELUX, Reg. No. 974795; priority filing date August 2014 ICELAND 2303\/2014; Issuance Date: May 18, 2015; International Classes 9, 35 & 42. \r\n\r\n- HONG KONG; Reg No. 303312396; priority filing date: January 28, 2016; International Classes 9, 35, 36, 38, 42. \r\n\r\n- ICELAND, Reg. No. V0093956; priority filing date August 26, 2014; Issuance Date: May 29, 2015; International Classes 9, 35, 36, 38, 41 & 42. \r\n\r\n- ISRAEL, Reg. No. 272529;priority filing date February 22, 2015; Issuance Date: January 2, 2017; International Classes 9, 35, 38, 42. \r\n\r\n- KAZAKHSTAN, Reg No. 51512; priority filing date: March 16, 2016; International Classes 9, 35, 42. \r\n\r\n- MEXICO, Reg Nos. 1539995, 1650070, 1655485; priority filing date: 23\/03\/2014 ICELAND AUGUST 26, 2014; Issuance dates: May 22, 2015, July 1, 2016, July 13, 2016; International Classes 9, 35, 42. \r\n\r\n- NORWAY; Reg. No. 282322; priority filing date 26 August 2014 ICELAND 2303\/2014; Issuance Date: June 19, 2015; International Classes 9, 35 & 42. \r\n\r\n- PAKISTAN,  Reg. No. 381888; International class 9; Dates 23\/2\/2015.\r\n\r\n- PRC, Reg. Nos. 16413729, 16413728, 16413727, priority filing date May 21, 2016; International Classes 35, 38, 42. \r\n\r\n- RUSSIAN FEDERATION, Reg No. 578187; priority filing date: June 17, 2016; International Classes 9, 35, 36, 38, 41, 42.\r\n\r\n- S. KOREA,  Reg. No. 450061860; priority filing date February 26, 2015; Issuance Date: January 11, 2016; International Classes 9, 35 & 42. \r\n\r\n- UAE,  Reg. Nos. 229783-85; priority filing date March 26, 2015; Issuance Dates: September 3, 2015; September 30, 2015; International Classes 9, 35, 42. \r\n\r\n- UNITED STATES,  U.S. Reg. No. 5,237,481; Issuance date: May 29, 2015; priority filing date August 26, 2014 based on its Icelandic registration No. 426\/2015 International Classes 9, 35, 36, 38, 41, and 42. \r\n\r\n\r\nAccording to the Complainant’s allegations, Upwork Global Inc. is a wholly-owned U.S. subsidiary of Upwork Inc., the owner of the above trademarks. Both entities are part of the same common corporate structure. According to the Complainant, since May 2015, Upwork Global owns and runs the platform bearing the UPWORK mark, located at www.upwork.com, and is a licensee of Upwork Inc. \r\n\r\nThe parent company, Upwork Inc., has expressly acknowledged that Complainant Upwork Global, which operates with 'Upwork' in its trade name, has the right to conduct this proceeding and any proceeding relating to the UPWORK registered mark. The acknowledgement also includes the right to decide, in Complainant Upwork Global's sole discretion what action if any to take in respect of any infringement or alleged infringement of its marks in any medium or passing off. ",
    "decision_domains": {
        "UPWORKRH.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}