The Complainant is Atlassian Pty Ltd of Sydney, Australia, represented by IPLA, United States of America ("United States").
The Respondent is Przemek Wysota of Warsaw, Poland. 2. The Domain Name and Registrar
The disputed 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 November 3, 2017. On November 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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.
On November 10 and November 11, 2017, the Center received email communications from the Respondent.
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").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. On December 28, 2017, the Center notified the Parties of the commencement of the panel appointment process.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on January 19, 2018. 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 is Atlassian Pty Ltd, a software development company from Australia.
The Complainant is the owner of the following trademarks, among others:
Trademark
Registration Number
Registration Date
Jurisdiction
ATLASSIAN
1228364
March 5, 2008
Australia
ATLASSIAN
983132
August 12, 2008
European Union, Switzerland, China, Israel, Japan, Republic of Korea, Norway, Russian Federation, Singapore
ATLASSIAN
1306601
March 24, 2016
European Union, Australia, Switzerland, Israel, India, Iceland, Japan, Republic of Korea, Mexico, Norway, New Zealand, Philippines, Russian Federation, Singapore, Turkey, Viet Nam
ATLASSIAN
775534
August 25, 2010
Canada
ATLASSIAN
840562969
July 12, 2016
Brazil
The Complainant is also the owner of the following domain name:
Domain name
Registration date
March 19, 2001
The Respondent, Przemek Wysota, registered the disputed domain name on December 13, 2016.
The disputed domain name currently resolves to a website referencing Complainant's products and business. 5. Parties' Contentions A. Complainant
The Complainant argues the following:
i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
That the Complainant is a well-known software development company.
That the Complainant has used the ATLASSIAN trademark in connection with its computer software goods and services for over fifteen years.
That the ATLASSIAN trademark became famous before the Respondent registered the disputed domain name.
That the disputed domain name is identical to the Complainant's ATLASSIAN trademark.
That the generic top-level domain ("gTLD") ".ninja" bears no weight in assessing the identity between the disputed domain name and the Complainant's trademark.
ii) The Respondent has no rights to or legitimate interests in the disputed domain name.
That the Respondent holds no trademark registrations for ATLASSIAN and has never used ATLASSIAN in connection with a bona fide offer of goods or services.
That the Respondent began operating the website to which the disputed domain name resolves on or around December 13, 2016, over fifteen years after the Complainant began using its ATLASSIAN trademark.
That the Respondent uses the disputed domain name and the website to which it resolves, in order to promote his own blog, as well as to offer his technical, administrative and consulting services, which are based entirely on the Complainant's software products.
That the Respondent's use of the disputed domain name is not a noncommercial or fair use of the disputed domain name.
That the website to which the disputed domain name resolves, displays and references other trademarks owned by the Complainant, claiming to offer Internet users to acquire mastery in the use of the Complainant's software products.
iii) The disputed domain name was registered and is being used in bad faith.
That the Respondent has registered and used the disputed domain name in bad faith by attempting to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's ATLASSIAN, JIRA, and CONFLUENCE trademarks, as to the source, sponsorship, affiliation, or endorsement of the Respondent's website and its content.
That in the past, the Complainant rejected the Respondent's application to become an ATLASSIAN partner.
That the Respondent was familiar with the Complainant's trademarks at the time of registration of the disputed domain name.
That the Complainant served the Respondent with a cease and desist letter on June 13, 2017. That the Respondent did not provide a response to the Complainant's letter.
That the Respondent's registration and use of the disputed domain name are clearly intended to profit fom, and capitalize on the Complainant's good will and reputation. B. Respondent
The Respondent did not reply to the Complainant's contentions.
On November 10, 2017, the Respondent sent an email communication to the Center, inquiring on the nature of the proceedings brought against him.
On November 11, 2017, the Respondent sent an email communication to the Center, concerning the identity of the Complainant. The body of the Respondent's email communication is transcribed below:
"I just wander who might be raising complaint. If this is Atlassian company, that would be understandable. And as I work closely with Atlassian, please be a I will verify that. If there is anyone else involved I assume claim would be invalid." 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
As the Respondent has failed to submit a formal Response to the Complainant's contentions, the Panel may choose to accept as true all (or some) of the Complainant's reasonable allegations (Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Identical or Confusingly Similar
The Complainant has proven to be the owner of several trademark registrations for ATLASSIAN throughout the world, including Poland, where the Respondent claims to be domiciled.
The disputed domain name is confusingly similar to the Complainant's trademark ATLASSIAN, as it entirely comprises said trademark.
In the website to which the disputed domain name resolves, the Respondent presents himself and his organization as "ATLASSIAN NINJA". The election of the gTLD ".ninja" is irrelevant for the confusing similarity analysis related to this case.
This set of precedents clearly applies to new gTLDs, such as "ninja". The dictionary meaning ascribed to a particular TLD would not necessarily impact an analysis of the first element (see section 1.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
The Complainant has met the threshold set forth in the first element of the Policy by providing evidence of exclusive rights to the trademark ATLASSIAN, which is entirely incorporated in the disputed domain name (see Slide Mountain Acquisition Company LLC v. Simon Nissim, lipstick boutique,WIPO Case No. D2014-0393).
The first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in a domain name:
(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 consumers or to tarnish the trademark or service mark at issue.
The Complainant argues that the Respondent has never used the trademark ATLASSIAN in connection with a bona fide offering of goods or services. According to the Complainant, the Respondent uses the disputed domain name and the website to which it resolves, in order to promote his own blog, as well as to offer his technical, administrative and consulting services, which are based entirely on the Complainant's software products.
As observed in Annexes 6 and 7 to the Complaint, the disputed domain name resolves to a website displaying the stylized term "ATLASSIAN NINJA", along with an offer of services closely related to the software products of the Complainant. Said website also displays the trademarks JIRA, CONFLUENCE, BITBUCKETT, BAMBOO, and HIPCHAT, which are likewise owned by the Complainant.
The evidence found on the record does not show any elements suggesting that the Respondent has any rights to or legitimate interests in the disputed domain name.
The November 11, 2017, email sent by the Respondent to the Center contains an affirmation that he works closely with the Complainant. However, according to the Complaint, the Respondent's application to become an ATLASSIAN Partner was rejected. The fact that the Complainant has sent a cease and desist letter to the Respondent confirms the Complainant's allegation. Additionally, the Respondent has posted a statement on the website to which the disputed domain name resolves, claiming to be "highly independent, and to not be limited nor bounded[sic]by any company"(see Annex 7 to the Complaint).
The Respondent had constructive notice of the Complainant's trademark registrations at the time of registration of the disputed domain name. For example, the Complainant owns a trademark registration obtained in the European Union in 2008, which precedes the registration of the disputed domain name by many years.
The Respondent's affirmations, and the content of the website to which the disputed domain name resolves, confirm that he has a thorough knowledge of the Complainant, its marks and its software. Given the technological sophistication of the Respondent and his website, and the focus that his site has on the products of the Complainant, it is plausible to infer that the Respondent had knowledge of the Complainant's trademarks at the time of registration of the disputed domain name (see section 3.2.2 of the WIPO Overview 3.0).
The mere rendering of services by the Respondent under the trademarks of the Complainant does not give the Respondent any right to register a domain name that entirely incorporates them (see AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA,WIPO Case No. D2002-0290; Ullfrottè AB v. Bollnas Imports,WIPO Case No. D2000-1176; Volvo Trademark Holding AB v. Peter Lambe,WIPO Case No. D2001-1292).
The Respondent's website does not feature a clear and sufficiently prominent disclaimer that unequivocally explains that the Respondent is not linked to, or associated with the Complainant, its trademark ATLASSIAN, or the software products covered by it. The statements made by the Respondent on being "highly independent and not limited or bound by any company" do not qualify as a disclaimer that may avoid the risk of confusion among users (see section 3.7 of the WIPO Overview 3.0).
The Complainant has made a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. This factor shifts the burden of production to the Respondent, imposing on him the obligation to produce relevant evidence showing actual rights to, or legitimate interests in the disputed domain name. No such evidence has been filed by the Respondent.
The second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(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 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 its website or location.
The Complainant asserts that the Respondent's intention towards the disputed domain name is to profit and capitalize on the Complainant's goodwill and reputation. The evidence filed by the Complainant in this case, showing extensive sales, advertising and unsolicited media coverage of the Complainant's ATLASSIAN mark demonstrate that said trademark is well known in the market segment to which the Complainant and its users belong.
As discussed above (see section 6.B, supra), it is reasonable to infer that the Respondent registered the disputed domain name knowing that it entirely comprised the trademark ATLASSIAN of the Complainant. A finding of bad faith may be made where the Respondent knew or should have known of the registration and use of a trademark prior to registering the domain name (see Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365; and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113).
Annexes 6 and 7 to the Complaint show that the Respondent has misappropriated the Complainant's ATLASSIAN trademark, by entirely incorporating it into the disputed domain name, and by conspicuously featuring it in the website to which said domain name resolves (see Philip Morris USA Inc. v. Xing Yize, WIPOCase No. D2016-1310 "In the circumstances, the Respondent's misappropriation of the Complainant's mark by the domain name registrations constitutes registration and use in bad faith").
The Respondent has created the impression among Internet users that the website to which the disputed domain name resolves is related to the Complainant, for profit (see LeSportsac, Inc. v. Yang Zhi,WIPO Case No. D2013-0482; and trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014-0365). This attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark ATLASSIAN, as to the source, sponsorship, affiliation or endorsement of the Respondent's website and its content constitutes bad faith under section 4(b)(iv) of the Policy.
The third element of the Policy is fulfilled. 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 disputed domain name, be transferred to the Complainant.
Kiyoshi Tsuru
Sole Panelist
Date: February 4, 2018
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