{
    "case_number": "CAC-UDRP-104521",
    "time_of_filling": "2022-07-26 10:00:16",
    "domain_names": [
        "upworkflow.com"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Upwork Inc."
    ],
    "complainant_representative": "Microsoft Corporation",
    "respondent": [
        "Community Devs LLC"
    ],
    "respondent_representative": null,
    "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nThe 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 start-ups 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 <upworkflow.com> was registered on 2 July 2021 and resolves to a parking page with pay-per-click (“PPC”) links.\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.\r\n\r\nThe Respondent has not filed a Response.",
    "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\nThe 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 “flow”. The term 'flow' in the context of work is descriptive of a workflow. 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.\r\n\r\nRegarding the Respondent’s lack of rights or legitimate interests, the Complainant contends that already by 2016, a Panel before the Czech Arbitration Court recognized in CAC Case No. 101370 that even at that time, the extent of the use of the “UPWORK” mark by the Complainant \"can only be described as overwhelming\" and was \"already being used in relation to the provision of services to users numbering in the multi-millions.\" The Complaint then claims to have further increased its online popularity and press recognition.\r\n\r\nThe Complainant states that the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorized the Respondent to use or apply for any domain name incorporating the Complainant’s trademark. The Respondent does not make any legitimate use of the disputed domain name for non-commercial activities.\r\n\r\nFurthermore, applying paragraph 4(c) of the Policy, the Complainant argues that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering because the domain name is not an actual dictionary word or phrase and hosts no PPC links genuinely related to the dictionary meaning of the words or phrase comprising the domain.\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. This applies, as well, to the use of links to third-party websites (CAC Case No. 101835).\r\n\r\nThe disputed domain resolves to a parking page which contains monetized (pay-per-click) links to third-party websites, including even to the Complainant's direct competitors and specifically related to freelance hiring. The website is thus clearly of a commercial nature and being used in bad faith by targeting the trademark in the disputed domain and using it to display ads linking to direct competitors.\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\nAs the owner of the disputed domain, entirely and solely responsible for the content of the website and the functioning of the disputed domain regardless of whether the pay-per-click links on the site are selected by the Respondent or by another entity. Bad faith may be found so long as commercial gain is sought by another person or entity who benefits from the function of the disputed domain name (WIPO Case No. D2000-0923).\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 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, in contravention of paragraph 4(b) 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": [
        "Mgr. Vojtěch Chloupek"
    ],
    "date_of_panel_decision": "2022-08-29 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": {
        "UPWORKFLOW.COM": "TRANSFERRED"
    },
    "panelist": null,
    "panellists_text": null
}