{
    "case_number": "CAC-UDRP-104522",
    "time_of_filling": "2022-09-16 09:50:37",
    "domain_names": [
        "upworksolutions.com"
    ],
    "case_administrator": "Denisa Bilík (CAC) (Case admin)",
    "complainant": [
        "Upwork Inc."
    ],
    "complainant_representative": "Microsoft Corporation",
    "respondent": [
        "www.dynamowes.com"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant 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 startups to over 30% of the Fortune 100, earned over $3.3 billion on [the Complainant’s service] Upwork in 2021. TIME, the global media brand reaching a combined audience of more than 100 million around the world, selected the Complainant, 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\nThe disputed domain name was registered on 1 June 2021.\r\n\r\nThe Registrar confirmed that the Respondent is the current registrant of the disputed domain name and that the language of the registration agreement is English.",
    "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": "The Complainant made the following contentions:\r\n \r\nRegarding confusing similarity with its trademarks, the Complainant argues that the disputed domain is confusingly similar to the Complainant’s trademarks as well as domain <upwork.com> except for appending the descriptive term “solutions”. The relevant trademark is recognizable within the disputed domain name and the addition of descriptive terms, especially relevant to the Complainant's business, certainly would not prevent a finding of confusing similarity under the first element. Accordingly, the Complainant concludes that the requirement of paragraph 4(a)(i) of the Policy is satisfied in both establishing rights in the “UPWORK” name and demonstrating that the disputed domain is confusingly similar to its trademark in which it has established rights. The Complainant supports its conclusion by reference to other UDRP Panel decisions, in particular the Czech Arbitration Court, the World Intellectual Property Organization, as well as the National Internet Exchange of India.\r\n\r\nRegarding the Respondent’s lack of rights or legitimate interests, the Complainant contends that the Complainant's “UPWORK” registration covers a variety of computer services and software, including specifically in Class 41, \"consultation, design and development of computer software programs for use by others\". The Complainant argues that the Respondent's use of the Complainant’s mark to offer substantially the same services as covered by the “UPWORK” registration, specifically custom software development, is evidence that the Respondent is trying to exploit the registered mark by incorporating it in the disputed domain name to confuse people visiting the site. The Complainant points to earlier decisions of UDRP panels that have found that domain names identical to a complainant’s trademark \"carry a high risk of implied affiliation\". In this instance, according to the Complainant, not only is the Respondent not commonly known by the disputed domain as evidenced by the registrar verification response, but the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the mark for a competitive site or the disputed domain name. \r\n\r\nThe Complainant then comes to a conclusion that the use of a domain confusingly similar to the Complainant's registered mark to sell products and\/or services protected by the registration without permission or approval from the trademark owner cannot constitute a bona fide offering of goods or services.\r\n\r\nTurning to the bad faith argument, the Complainant submits that bad faith registration and use has often been found where a respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. \r\n\r\nThe Respondent presumably at least did a cursory search related to the term 'Upwork' on the Internet before selecting it and therefore, had actual knowledge of the Complainant. Based on search results prior to the disputed domain name registration, the Respondent was likely aware of the Complainant when the Respondent registered and used the disputed domain.\r\n\r\nThe Respondent has by using the disputed domain, intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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, in contravention of paragraph 4(b) of the Policy.\r\n\r\nThe disputed domain name was created on 1 June 2021. By 2016, a Panel before the Czech Arbitration Court recognized that even at that time, the extent of the use of the “UPWORK” mark by the Complainant could \"only be described as overwhelming\" and was \"already being used in relation to the provision of services to users numbering in the multi-millions\" (CAC Case No. 101370). By 2019, the Complainant was already within the top 500 most popular global websites on all of the Internet, according to Alexa.com traffic statistics. The Complainant had appeared in CNBC, in The New York Times, BBC News World Service, The Wall Street Journal, Forbes.com, TechCrunch, Bloomberg.com, FastCompany.com, Barrons.com, and many other publications archived under the 'press recognition' section of its website on <upwork.com>; all as follows from evidence submitted by the Complainant.\r\n\r\nTherefore, the Respondent likely registered the disputed domain name with full knowledge of the Complainant’s rights and shows bad faith under paragraph 4(a)(iii) of the Policy. By using the Domain, the Respondent has likely intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website hosted on the disputed domain name.\r\n\r\nIn addition, the Respondent did not respond to a request to turn over the disputed domain name prior to the submission of the complaint. Specifically, the Complainant contacted the Respondent by email at the email address on the site to amicably resolve the matter and the Respondent did not respond. Failure to respond to a cease and desist notification may be considered further evidence of bad faith registration and use pursuant to paragraph 4(a)(iii) of the Policy. \r\n\r\nFinally, the Complainant argues that the Respondent registered the disputed domain name according to the registrar verification response using a URL as the name of the registrant organization. It appears likely that the proxy service masking this false information is in the context of this specific case further evidence of bad faith registration and use.\r\n\r\nFor all of the foregoing reasons, the Complainant concludes that it has satisfied all three elements of the Policy and requests that the disputed domain name is transferred to the Complainant.\r\n\r\nThe Respondent made the following contentions: \r\n\r\nThe Respondent claims that it is not “manipulating any information” regarding the Complainant’s trade mark.  The Respondent points to the fact that the Complainant operates a platform with a freelance market under the “upwork” trade name, and that there is no such service on the Respondent’s platform offered that would mismatch or misguide any user landed on the disputed domain name. The Respondent argues that users will not be confused because the Complainant’s business model and the Respondent’s content are unique and not conflicting with each other. The Respondent then offers to apply measures such as taking down all necessary pages and links and displaying warning messages or popup banners to inform users that the relevant website is not related to the Complainant, if there is any misleading information or infringement of copyright on its website.\r\n\r\nThe Respondent also mentions that there are different domains available on behalf of major companies that have similar short names, such as fb.com owned by Facebook and fb.net representing another business entity different from Facebook. The Respondent makes an analogy to the present case to say that <upwork.com> has no similarity over <upworksolutions.com>. In particular, the Respondent contends that both websites' logos, contents and graphics are different.",
    "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": [
        "Mgr. Vojtěch Chloupek"
    ],
    "date_of_panel_decision": "2022-11-07 00:00:00",
    "informal_english_translation": "The Complainant submitted evidence that it is the registered owner of the following trademarks:\r\n-\tthe Australian trademark No. 1676473 for the word “UPWORK” registered in classes 9, 35, 36, 38, 41 and 42, and having protection since 26 August 2014;\r\n-\tthe Benelux trademark No. 974795 for the word “UPWORK” registered in classes 9, 35 and 42, and having protection since 26 August 2014;\r\n-\tthe Hong Kong trademark No. 303312396 for the word “UPWORK” registered in classes 9, 35, 36, 38 and 42, and having protection partially since 26 August 2014 and partially since 25 February 2015;\r\n-\tthe Icelandic trademark No. V0093956 for the word “UPWORK” registered in classes 9, 35, 36, 38, 41 and 42, and having protection since 26 August 2014;\r\n-\tthe Israeli trademark No. 272529 for the word “UPWORK” registered in classes 9, 35, 38 and 42, and having protection since 22 February 2015;\r\n-\tthe Kazakh trademark No. 51512 for the word “UPWORK” registered in classes 9, 35 and 42, and having protection since 16 March 2016;\r\n-\tthe Mexican trademarks Nos. 1650070 and 1655485 for the word “UPWORK” registered in classes 35 and 42, and having protection since 26 August 2014;\r\n-\tthe Norwegian trademark No. 282322 for the word “UPWORK” registered in classes 9, 35 and 42, and having protection since 26 August 2014;\r\n-\tthe Pakistani trademark No. 381888 for the word “UPWORK” registered in class 9, and having protection since 23 February 2015;\r\n-\tthe Chinese trademarks Nos. 16413729, 16413728, 16413727 for the word “UPWORK” registered in classes 35, 38 and 42, and having protection since 21 May 2016;\r\n-\tthe Russian trademark No. 578187 for the word “UPWORK” registered in classes 9, 35, 36, 38, 41 and 42, and having protection since 26 August 2014;\r\n-\tthe Korean trademark No. 45-0061860 for the word “UPWORK” registered in classes 9, 35, 38 and 42, and having protection since 26 August 2014;\r\n-\tthe UAE trademarks Nos. 229783, 229784 and 229785 for the word “UPWORK” registered in classes 9, 35 and 42, and having protection since 26 March 2015; and\r\n-\tthe US trademark No. 5,237,481 for the word “UPWORK” registered in classes 9, 35, 36, 38, 41 and 42, and having protection since 26 August 2014.",
    "decision_domains": {
        "UPWORKSOLUTIONS.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}