The Complainant is Uplers Solutions Pvt Ltd, India, represented by Rishit Bhatt & Co., India.
The Respondent is Domain Protection Services, Inc, United States of America / Hatem Haddad, Intelligent Vision Information Technology & Systems, Jordan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 26, 2021. On November 26, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 11, 2021.
The Center verified that the Complaint together with the amended 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2022.
The Center appointed Nicholas Smith as the sole panelist in this matter on January 28, 2022. 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.
The Complainant is an Indian company, founded in 2019 (following a merger of three existing marketing and technology companies), that provides web development and marketing services under the word mark UPLERS (the “UPLERS Mark”). Since 2019 the Complainant has completed over 50,000 projects for over 7,000 clients in jurisdictions across the world, including the United States of America (“United States”), India, Singapore, and the European Union. The Complainant operates a website at “www.uplers.com” (the “Complainant’s Website”) that promotes the Complainant’s services.
The Complainant holds trademark registrations for the UPLERS Mark in various jurisdictions including India (registration number No. 2403362 for goods in class 9 as of September 9, 2019) and the United States (registration No. 6,214,245 for goods and services in classes 9, 35, 41 and 42 with a registration date of December 8, 2020 and a filing date of September 19, 2019, and a priority date of September 9, 2019).
The Domain Name was registered on December 8, 2020, the same date the Complainant’s United States trademark was registered. The Domain Name presently resolves to a pay-per-click website but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that offered web development and marketing services in direct competition with the Complainant. The Respondent’s Website reproduces the overall design, much of the wording and copyrighted images owned by the Complainant and displayed on the Complainant’s Website.
5. Parties’ Contentions A. ComplainantThe Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s UPLERS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the UPLERS Mark, having registered the UPLERS Mark in many jurisdictions, including the United States and India. The Domain Name is confusingly similar to the UPLERS Mark as it consists of a minor misspelling of the UPLERS Mark, simply replacing the “e” with an “a”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that, without permission of the Complainant, offers services in direct competition with the Complainant as well as reproducing much of the content of the Complainant’s Website. These activities do not amount to a bona fide offering of goods and services.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that offers competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarTo prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the UPLERS Mark, having a registration for the UPLERS Mark as a trademark in various jurisdictions, including the United States and India.
Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the UPLERS Mark since it consists of a minor misspelling of the UPLERS Mark, replacing the “e” with an “a”. The Domain Name contains sufficiently recognizable aspects of the UPLERS Mark. Moreover, such a misspelling would be easy for an Internet user to overlook.
Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsTo succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the UPLERS Mark or a mark similar to the UPLERS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Respondent’s present use of the Domain Name for a pay-per-click website does not, by itself, provide the Respondent with rights and legitimate interests. Prior to the commencement of the proceeding the Respondent used the Domain Name to operate a website that purported to offer competing web design services. Given the lack of any connection between the Complainant and the Respondent, the fact that there is no evidence that the Respondent operates a legitimate business and the manner in which the Respondent’s Website impersonated the Complainant’s Website, the Panel finds that the Respondent’s use of the Domain Name is not a bona fide offering of goods or services since it is impersonating the Complainant, most likely in the commission of some form of fraud on customers who are misled into thinking they are dealing with the Complainant.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests Policy. in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithFor the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its 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 trade mark 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 the respondent’s website or location (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the UPLERS Mark at the time the Domain Name was registered. The UPLERS Mark is a coined word and the Domain Name was registered on the date the UPLERS Mark was registered in the United States. The Respondent’s Website purports to offer services in direct competition with the Complainant and impersonates the Complainant, including through copying copyrighted photos from the Complainant’s Website. The registration of the Domain Name in awareness of the UPLERS Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Respondent has used the Domain Name, which consists of a misspelling of the UPLERS Mark, to purportedly offer web design services, in competition with the Complainant, by impersonating the Complainant. The Domain Name presently resolves to a pay-per-click website. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s UPLERS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(iv)).
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Nicholas Smith
Sole Panelist
Date: February 11, 2022