{
    "case_number": "CAC-UDRP-104234",
    "time_of_filling": "2021-12-16 10:27:59",
    "domain_names": [
        "customwritings.co"
    ],
    "case_administrator": "Denisa Bilík (CAC) (Case admin)",
    "complainant": [
        "Writera Limited"
    ],
    "complainant_representative": null,
    "respondent": [
        "Baklan Iaroslav"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant, through its website <customwritings.com> provides services consisting primarily of custom writing services for various purposes including academic writing, admission writing, calculations, and programming among others. The Complainant asserts, and the Respondent does not dispute, that the Complainant has provided these services since 2006. The Complainant is the assignee holder on record of the US (class 41) trademark CUSTOMWRITINGS.COM, with a priority filing date of 1 August 2018.\r\n\r\nThe disputed domain name <customwritings.co> was registered on 30 December 2016 and is held by the Respondent. The website associated with the disputed domain name is currently used by the Respondent for promoting and offering services similar to those of the Complainant, i.e. custom on-demand writing for various purposes including academic writings, speeches, admission essays etc.\r\n\r\nAccording to amended Complaint as filed, the Complainant seeks transfer of the disputed domain name from One Freelance Limited (Reg. number 06547172) domiciled in London, England (“One Freelance”). However, the Registrar Verification confirmed that the domain is not registered to One Freelance, but rather to the Respondent. Because One Freelance is not the registrant of the disputed domain name, the Panel concludes that the reference to One Freelance was included in error, and Complainant sought for the disputed domain name to be transferred to it from the Respondent.",
    "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\nIDENTICAL OR CONFUSING SIMILARITY\r\n\r\nComplainant asserts:\r\n\r\n- The \"CUSTOMWRITINGS.COM\" denomination has acquired distinctiveness and reputation through long public use since 2006 and it has acquired secondary meaning attributable to the Complainant as an unregistered trademark;\r\n\r\n- Complainant's rights to the \"CUSTOMWRITINGS.COM\" denomination (as an unregistered trademark) predates registration of the disputed domain name despite the fact that the Complainant's registered trademark was applied for only after the registration of the disputed domain name;\r\n\r\n- The disputed domain name contains the “CUSTOMWRITINGS.COM” word elements, but without the letter “m” in the “.com” part, and it is thus insufficient, not of a distinctive nature and does not serve to alter the overall impression of the disputed domain name with respect to Complainant’s trademark rights;\r\n\r\n- The modification of the TLD from “.com” to “co” is not sufficient to escape confusing similarity between the disputed domain name and the Complainant’s trademark, because there is a high level of optical, phonetic and conceptual similarity between the terms; and\r\n\r\n- The website associated with the disputed domain name improperly includes the denomination “Custom Writings”, in which Complainant asserts rights.\r\n\r\nNO RIGHTS OR LEGITIMATE INTERESTS\r\n\r\nThe Complainant asserts:\r\n\r\n- The Respondent has not been commonly known by the disputed domain name;\r\n\r\n- The Respondent has no connection or affiliation with the Complainant;\r\n\r\n- Respondent’s use of the disputed domain name is neither a bona fide offering of services nor legitimate non-commercial fair use;\r\n\r\n- The disputed domain name was used for attracting internet users to services provided by the Respondent which are similar to Complainant’s services and members of the public would assume an association between the businesses; and\r\n\r\n- The website associated with the disputed domain name has an appearance very similar to Complainant’s website.\r\n\r\nBAD FAITH REGISTRATION AND USE\r\n\r\nThe Complainant asserts:\r\n\r\n- Seniority of the Complainant's rights to the \"CUSTOMWRITINGS.COM\" denomination due to its unregistered rights predating the registration of the disputed domain name;\r\n\r\n- There is a strong likelihood that Respondent purposely targeted Complainant’s mark to attract, for commercial gain, internet users by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website;\r\n\r\n- Lack of contact details on Respondent’s website and Respondent’s failure to respond to either the Complainant’s DMCA letter or its request to the Registrar of the disputed domain name is a further indication of bad faith; and\r\n\r\n- “CustomWritings” is a made-up collocation of words with an intentional mistake (“s” at the end).\r\n\r\nThe Complainant included the following supporting evidence with its Complaint:\r\n\r\n- Brief background information about the Complainant and its business, its history and reviews concerning the services provided by the Complainant;\r\n- Excerpt from a trademark database, including the original trademark registration and evidence of the recordal of assignment of the trademark to Complainant;\r\n- Excerpt from a WHOIS database regarding Complainant’s domain name and the disputed domain name;\r\n- Screenshots of relevant websites; and\r\n- Copy of Complainant's DMCA Notice requesting registrant contact details.\r\n\r\nRESPONDENT:\r\n\r\nIDENTICAL OR CONFUSING SIMILARITY\r\n\r\nThe Respondent asserts:\r\n- The disputed domain name should not be treated as identical or confusingly similar to Complainant’s trademark;\r\n- The denomination “CUSTOM WRITINGS” is non-distinctive and refers to the services but not the service provider;\r\n- The word “CUSTOM” has a meaning of ‘made to order’, and “WRITINGS” refers to any writing work such as books or other textual publications etc and therefore the denomination is descriptive for the services for which the trademark and the domain names are used;\r\n- The denomination “CUSTOM WRITINGS” is not attributable or connected solely to Complainant’s business but is commonly used on the Internet, including before Complainant registered its trademark or the customwritings.com domain name; and\r\n- The term “Custom Writings” would be used not only for searching for the Complainant but also by internet users describing their needs.\r\n\r\nNO RIGHTS OR LEGITIMATE INTERESTS\r\n\r\nThe Respondent asserts:\r\n- An internet search for the term “custom writings” shows several service providers use the same term within the business name and\/or description of services;\r\n- The words “custom writings” have been widely used by different service providers and in different publications and discussions about online essays and other textual services for many years, including prior to Complainant’s use of the denomination;\r\n- Respondent registered the disputed domain name prior to Complainant’s registered trademark priority date; and\r\n- Because the term “custom writings” is strongly associated with the relevant services but not with a particular service provider, Respondent did not use the denomination in the disputed domain name for the purpose of indicating an association with Complainant.\r\n\r\nBAD FAITH REGISTRATION AND USE\r\n\r\nRespondent asserts:\r\n- No attempt has been made to sell the disputed domain name to Complainant;\r\n- The disputed domain name was registered to offer services associated with “custom writings”, but not for the purpose of disrupting any competitor;\r\n- The design of the website associated with the disputed domain name is entirely different from the Complainant’s website design, and there is no likelihood of confusion for the Internet user;\r\n- Respondent registered the domain name before the priority date of Complainant’s registered trademark; and\r\n- Because Complainant used a denomination which could not be recognized as inherently distinctive in its customwritings.com domain, it cannot assert unregistered trademark protection in the term.\r\n\r\nRespondent included the following supporting evidence with its Response:\r\n\r\n- Recent Google search of the term “custom writings” ;\r\n- Google search limited to results before 1 January 2005 of the term “custom writings”.",
    "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": "This element was not considered by the Panel.\r\n\r\nSince the three elements of paragraph 4(a) of the Policy are conjunctive and because the Complainant did not satisfy the requirement of paragraph 4 (a) (iii) of the Policy discussed below, it was not necessary for the Panel to consider whether the Complainant satisfactorily established this second element. \r\n",
    "bad_faith": "The Complainant has not, 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": "Rejected",
    "panelists": [
        "Claire Kowarsky, LL.M"
    ],
    "date_of_panel_decision": "2022-01-30 00:00:00",
    "informal_english_translation": "The Complainant provided a recorded assignment document indicating it is the assignee on record of the trademark containing the word element \"CUSTOMWRITINGS.COM”:\r\n\r\n(i) CUSTOMWRITINGS.COM (word), US Trademark, priority (filing) date 1 August 2018, registration date 14 May 2019, trademark registration no. 5749163, registered for services in the international class 41;\r\n\r\n(hereinafter \"Complainant's registered trademark\").\r\n\r\nThe Complainant is the owner of the domain name <customwritings.com> registered on 10 October, 2005, from which the Complainant claims unregistered trademark rights to the \"CUSTOMWRITINGS.COM\" denomination prior to the priority date of the Complainant's registered trademark.",
    "decision_domains": {
        "CUSTOMWRITINGS.CO": "REJECTED"
    },
    "panelist": null,
    "panellists_text": null
}