The Complainants are Upwork Global Inc. and Upwork Inc. of Mountain View, California, United States of America, represented by RiskIQ, Inc., United States of America.
The Respondent is Imran khan, All Education info. / Md Abdul Malek, 1L / Aman Shah, BollyJoG of West Bengal 110007, India / Rubel SbS, Hostsbs of Tangail Sadar, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2017. That day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 7, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
The Panel is satisfied that, in accordance with the Rules, paragraphs 2(a) and 4, the Center discharged its responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint, and the proceedings commenced on June 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 29, 2017.
The Center appointed Alan L. Limbury as the sole panelist in this matter on July 13, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant Upwork Inc. (formerly Elance-oDesk Inc.) is the proprietor of several trademark registrations for the word UPWORK, including Benelux registration No. 0974795, registered on May 18, 2015 and Iceland registration No. 426/2015, registered on May 29, 2015. The Complainant Upwork Inc. licenses use of its UPWORK mark to its wholly-owned subsidiary Upwork Global Inc. (formerly Odesk Corporation), which operates a website at “”. That website is one of the top 500 most popular global websites on the Internet and one of the top 100 most popular websites in Bangladesh.
Upwork Global Inc. is the proprietor of United States trademark registrations No. 2772962 for ELANCE, registered on October 14, 2003 and No. 4696235 for ODESK, registered on March 3, 2105.
The services provided by the Complainants are designed to match the skills and capabilities of workers with the needs of those seeking workers with such skills and capabilities. To do so, the Complainants provide skills tests on the “” website, on terms requiring confidentiality and non-disclosure of any part of the tests without express written permission.
The Domain Name was registered on February 2, 2016 in the name Aman Shah, BollyJoG and is currently registered in the name Imran khan, All Education info. It resolves to a website offering “All Upwork (ODesk) Test Answers” and displaying the notice: “Copyright © 2017 All Upwork Test Answers 2017 / oDesk Test / Elance Test Answer All Rights Reserved”. The website also displays commercial advertisements, some of which are for services competitive with those of the Complainants. 5. Parties’ Contentions A. Complainants
The Complainants have a common interest in relevant rights affected by the Respondent’s conduct and the Respondent is not prejudiced by their proceeding jointly, since they seek the same relief, namely transfer of the Domain Name to Upwork Inc.
The Respondent Imran khan, All Education info is also known as Md Abdul Malek, 1L and Aman Shah, BollyJoG since they all use the same email address. The Respondent is also known as Rubel SbS, both because Rubel SbS is the CEO of HostSBS.com, which provided registration services for the Domain Name, and because Rubel SbS owns and operates another website which currently has a permanent re-direct to the Respondent’s website. Also, both websites previously displayed the same material.
The Domain Name is confusingly similar to the UPWORK trademark, in which the Complainants have rights, and the Respondent has no rights or legitimate interests with respect to the Domain Name, which was registered and is being used in bad faith.
As to legitimacy, the Complainants have never authorized the Respondent to use the UPWORK mark nor to monetize a website offering answers to their skills tests. The Respondent is not known legitimately by the Domain Name, is not making legitimate noncommercial or fair use of it and is not using it with a bona fide offering of goods or services.
As to bad faith, by the display of the Complainants’ UPWORK, ODESK and ELANCE trademarks, together with the stylized UPWORK logo, used prominently throughout the Respondent’s website, the Respondent is seeking to cause confusion with the Complainants, their website and their services, and registered the Domain Name precisely because it is confusingly similar to the Complainants’ mark. The Respondent is clearly trying to divert traffic related to the Complainants’ tests to the Respondent’s website for profit. By offering resources related to “” for freelancers, the Respondent is a competitor for the purposes of the Policy and is disruptive to the Complainants’ site and services. Even though the Respondent’s site is a “cheat” site, use of the Complainants’ trademarks and logo throughout the site will likely lead some Internet users to believe that the site is formally or informally sanctioned. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
The Panel considers it appropriate in this case that both Upwork Inc. and Upwork Global Inc. be joint Complainants in these proceedings, since, as noted below, each has rights in the UPWORK trademark.
Where a respondent does not participate in a proceeding under the Policy, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the complainant. See Reuters Limited v. Global Net 2000, Inc,WIPO Case No. D2000-0441. Accordingly, the Panel accepts the Complainants’ assertions that, under various aliases, there is one Respondent in these proceedings.
In accordance with paragraph 4(a) of the Policy, to obtain transfer of the Domain Name, the Complainants must prove the following three elements: (i) the Respondent’s Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent has registered the Domain Name and is using it in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar
The Complainant Upwork Inc. has registered trademark rights in UPWORK. Its wholly owned subsidiary, Upwork Global Inc. is licensed by its parent to use that mark. Accordingly both Complainants have rights in the UPWORK mark.
In finding confusing similarity, many Panels have found that the mere addition of descriptive terms to a complainant’s mark does not adequately distinguish the disputed domain name from the mark pursuant to the Policy, paragraph 4(a)(i). See Wal-Mart Stores, Inc. v. Gerry Senker,WIPO Case No. D2006-0211; The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer 2440314,WIPO Case No. D2016-1671; and see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
The specific top-level of the Domain Name, “.com”, is generally regarded as irrelevant for the purpose of determining whether the Domain Name is identical or confusingly similar. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel finds that the Complainants’ trademark UPWORK is recognizable within the Domain Name and that the additional words do nothing to distinguish the Domain Name from the UPWORK mark because they relate to the business conducted by the Complainants under that mark. Accordingly, the Panel finds the Domain Name to be confusingly similar to the UPWORK mark.
The Complainants have established this element. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by the Respondent, shall demonstrate rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,
(i) before any notice to the Respondent of the dispute, the use by the Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Panel finds that the UPWORK mark is distinctive and widely known, particularly through its use in the extremely popular “” website. The Complainants’ assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Domain Name on the part of the Respondent. The burden of production therefore shifts to the Respondent to show that it does have rights or legitimate interests in the Domain Name. See Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited,WIPO Case No. D2004-0753. The Respondent has made no attempt to do so.
In the circumstances of this case, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainants have established this element. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The Complainants invoke paragraphs 4(b)(iii) and (iv), i.e.,
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has 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 its website or location.
It is unnecessary to determine whether the Respondent is a competitor of the Complainants because, given the formulation of the Domain Name itself and the content of the website to which it resolves, the Panel is satisfied that the Respondent must have had the Complainants’ UPWORK trademark in mind when registering the Domain Name and that the Respondent has used the Domain Name to attract Internet users already familiar with the Complainants’ services. The use on the website to which the Domain Name resolves of the Complainants’ UPWORK trademark and the ELANCE and ODESK marks of Upwork Global Inc., together with commercial advertisements, including those of competitors of the Complainants, satisfies the Panel that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered on its website.
Accordingly the Panel finds that the Domain Name was registered and is being used by the Respondent in bad faith.
The Complainants have established this element. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, be transferred to the Complainant Upwork Inc.
Alan L. Limbury
Sole Panelist
Date: July 23, 2017
Full & Egal Universal Law Academy