Upwork Global Inc. v. Shoaib Malik
Claim Number: FA1512001654759
Complainant is Upwork Global Inc. (“Complainant”), represented by Jonathan Matkowsky of Matkowsky Law PC, New York, USA. Respondent is Shoaib Malik (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newelance.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 31, 2015; the Forum received payment on December 31, 2015.
On December 31, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <newelance.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 20, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@newelance.com. Also on December 31, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant uses the ELANCE mark for a computer software in connection with Complainant’s business as an online freelance talent marketplace. Complainant has registered the ELANCE trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,900,142, Nov. 2, 2004). Respondent’s <newelance.com> domain name is confusingly similar to the ELANCE mark as it incorporates the mark in its entirety while adding the descriptive word “new” and the general top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <newelance.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate or fair use through the <newelance.com> domain name. Rather, the domain name resolves to a website containing competing services to those of Complainant.
iii) Respondent is using the <newelance.com> domain name in bad faith. Respondent’s use of the website serves as a disruption of Complainant’s legitimate business purposes by diverting Complainant’s clients to Respondent’s site. Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent’s use of the <newelance.com> domain name to harvest personal user information from Complainant’s users is a form of phishing, which is evidence of bad faith registration and use.
B. Respondent
Respondent did not submit a response. The Panel notes that the <newelance.com> domain name was registered on November 11, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registered the ELANCE trademark with the USPTO (Reg. No. 2,900,142, registered Nov. 2, 2004), which demonstrates rights in the mark. The mark is used in connection with the sale of computer software for Complainant’s freelance marketplace. The Panel notes that registration with the USPTO is sufficient to establish rights in a trademark, even where Respondent operates in a different country. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Next, Complainant argues that Respondent’s <newelance.com> domain name is confusingly similar to the ELANCE mark as it incorporates the mark entirely and adds the “.com” gTLD and the descriptive word “new.” Panels have found that such alterations to a mark are insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <newelance.com> domain name is confusingly similar to the ELANCE mark under Policy ¶ 4(a)(i).
Complainant
must first make a prima facie case that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and
then the burden shifts to Respondent to show it does have rights or legitimate interests.
See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat.
Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima
facie case that the respondent lacks rights and legitimate interests in the
disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the
respondent to show that it does have rights or legitimate interests in a domain
name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25,
2006) (“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant satisfies its burden, then the burden shifts to
Respondent to show that it does have rights or legitimate interests in the
subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <newelance.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Shoaib Malik” as registrant. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Further, Complainant argues that Respondent is neither making a bona fide offering of goods or services nor a legitimate noncommercial or fair use through the <newelance.com> domain name. Complainant provides a freelance talent marketplace. Complainant contends that Respondent’s domain name resolves to a website that describes itself as an “online platform for remote work, where freelancers and project owners meet to get the job done.” Complainant contends that Respondent “harvests” the personal information of ELANCE users by misleading them to believe that the domain is a new ELANCE site and misleads them to believe that in exchange for providing personal information such as email addresses, they will receive “perks” such as obtaining their “old freelancing history and reputation” from ELANCE, which Complainant contends to be false. See id., at BN006, BN007. Complainant also argues that Respondent’s use of the domain name competes with Complainant’s business, as the domain name resolves to a webpage that promotes freelance talent services. Previous panels have found such use by a respondent, whether to run a phishing scheme or to run a competing website, is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use) [DEFAULT]; see also Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, this Panel declines to grant Respondent rights under Policy ¶¶4(c)(i) and (iii).
Complainant argues that Respondent’s use of the <newelance.com> domain name serves as a disruption of Complainant’s legitimate business purposes pursuant to Policy ¶ 4(b)(iii) because the Domain offers competing products and services under the confusingly similar mark. Respondent contended himself that, “Our domain is similar to elance.com because we are focusing on the those elance users who are not happy that elance is going to shut down.” Panels have agreed that a respondent’s diversion of a complainant’s customers to respondent’s competing business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel establishes bad faith under Policy ¶ 4(b)(iii).
Further,
Complainant argues that Respondent has attempted to attract Internet users to
its site for commercial gain by creating confusion as to the source,
sponsorship, affiliation, or endorsement of the website. Complainant contends
that Respondent’s site is deliberately misleading in claiming that by providing
personal information, they will receive “perks” such as their freelancing
history from ELANCE. Complainant contends that this claim is false and that the
personal information provided by potential users is intended for Complainant
and mistakenly given to Respondent. Complainant also contends that Respondent
misused a registration notice symbol “®” adjacent to the ELANCE mark on Instagram
in relation to advertising Respondent’s website. See Anne of Green Gable
Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000)
(finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent
admittedly used the complainant’s well-known mark to attract users to the
respondent's website); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain name
is evidence of bad faith.”). Therefore, the Panel finds that Respondent is
profiting from a likelihood of confusion, and establishes bad faith under Policy ¶ 4(b)(iv).
Complainant further contends that Respondent’s use of the Domain to harvest personal user information such as email addresses constitutes phishing. Past panels have found phishing to be evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (concluding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use). The Panel agrees with Complainant and holds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark in order to acquire personal information from Complainant’s client constitutes phishing and is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <newelance.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: February 3, 2016
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