DECISION

 

Upwork Inc. v. Mulya Admin / Frister Jlala / MPerkecet

Claim Number: FA2308002058494

PARTIES

Complainant is Upwork Inc. ("Complainant"), represented by Jonathan Matkowsky of Microsoft Corporation – Microsoft Security, Washington, USA. Respondent is Mulya Admin / Frister Jlala / MPerkecet ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <upworkpayments.com> and <upwork-payments.com> (collectively "Domain Names"), registered with NameCheap, Inc. and Hosting Concepts B.V. d/b/a Registrar.eu.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 22, 2023; Forum received payment on August 28, 2023.

 

On August 23, 2023, NameCheap, Inc. and Hosting Concepts B.V. d/b/a Registrar.eu confirmed by e-mail to Forum that the <upworkpayments.com> and <upwork-payments.com> domain names are registered with NameCheap, Inc. and Hosting Concepts B.V. d/b/a Registrar.eu and that Respondent is the current registrant of the names. NameCheap, Inc. and Hosting Concepts B.V. d/b/a Registrar.eu have verified that Respondent is bound by the NameCheap, Inc. and Hosting Concepts B.V. d/b/a Registrar.eu 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 September 1, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2023 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@upworkpayments.com, postmaster@upwork-payments.com. Also on September 1, 2023, 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.

 

A timely Response was received and determined to be complete on September 20, 2023.

 

On September 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Names be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: MULTIPLE RESPONDENTS

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") provides that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder." 

 

Complainant contends that the registrants for the Domain Names are related because the Domain Names are similar, each containing the Complainant's UPWORK mark and the word "payments".  Both Domain Names were registered with the same Registrar within sixty days of each other and resolve to websites ("Respondent's Websites") that either resolve directly to Complainant's website or fetch resources from the Complainant's website. Both Domain Names use the same name server, which would not be the case if they were simply registered by separate entities using the default name server of each of the Registrars.

 

Respondent Mulya Admin, the named registrant of <upworkpayments.com>, in its Response, denies any connection between the registrants however does not provide any support for its denials or any explanation for how two otherwise unrelated entities would register almost identical domain names and use identical name servers. The evidence in the Complaint, in the Panel's opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register two almost identical domain names targeted at the same entity with websites that access identical material from Complainant's website.  Notwithstanding Respondent Mulya Admin's denials, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases.  Hereafter the single Respondent will be referred to as "Respondent" in this Decision.

 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates a freelancing platform in the United States and around the world from its website at www.upwork.com.  Complainant has rights in the UPWORK mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 5,237,481, registered July 4, 2017).  Respondent's <upworkpayments.com> and <upwork-payments.com> domain names are confusingly similar to Complainant's UPWORK mark as Respondent incorporates the mark in its entirety and adds the descriptive term "payments", in one case a hyphen, and the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights or legitimate interests in the <upworkpayments.com> and <upwork-payments.com> domain names. Respondent is not commonly known by the Domain Names, nor has Respondent been authorized by Complainant to use the UPWORK mark. Respondent has not used the Domain Names in connection with a bona fide offering of goods or services as Respondent is passing off as Complainant in furtherance of a phishing scheme.

 

Respondent registered and uses the <upworkpayments.com> and <upwork-payments.com> domain names in bad faith. Respondent is using the Domain Names to pass off as Complainant to perpetrate a phishing scheme. Respondent had knowledge of Complainant's rights to the UPWORK mark prior to registering the Domain Names as evidenced by Respondent's use of the mark to further a phishing scheme.

 

B. Respondent

Respondent merely denies any connection between the Domain Names and offers to transfer the <upworkpayments.com> domain name. The Response does not otherwise address any contentions made in the Complainant.

 

FINDINGS

Complainant holds trademark rights for the UPWORK mark.  Each of the Domain Names is confusingly similar to Complainant's UPWORK mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses each of the Domain Names in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

 

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.

 

Identical and/or Confusingly Similar

Complainant has rights in the UPWORK mark through its registration with the USPTO (e.g., Reg. No. 5,237,481, registered July 4, 2017).  Registration of a mark with the USPTO is sufficient to establish rights in that mark.  See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that each of <upworkpayments.com> and <upwork-payments.com> Domain Names are confusingly similar to the UPWORK mark as each of them fully incorporate the UPWORK mark, adding only the generic word "payments" with or without a hyphen. Domain names which incorporate an entire mark are usually considered confusingly similar, while adding a generic term and a gTLD is generally insufficient to create a distinction between a complainant's mark and a disputed domain name under Policy ¶ 4(a)(i).  See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) ("The disputed domain name is confusingly similar to Complainant's mark as it wholly incorporates the CUB CADET mark before appending the generic terms 'genuine' and 'parts' as well as the '.com' gTLD."); see also Paperless Inc. v. ICS Inc, FA 1629515 (FORUM Aug. 17, 2015) (establishing a confusing similarity between the <paperlessspost.com> domain name and the PAPERLESS POST trademark in part because the domain name contained the entire mark and added an additional "s").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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."). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the UPWORK mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Mulya Admin / Frister Jlala / MPerkecet" as registrant of record.  Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).

 

The Domain Names have resolved to websites that are either the Complainant's website or contain material taken from the Complainant's Website which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence (being evidence of an e-mail from the <upworkpayments.com> domain name and evidence that the <upwork-payments.com> domain name is configured to send e-mails) supporting its allegations, that Respondent uses and intends to use email addresses associated with the Domain Names to attempt to pass itself off as Complainant in furtherance of a phishing scam, requesting transfers of funds to accounts unconnected to the Complainant. Use of a disputed domain name to pass off as a complainant through emails is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent's attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum March 7, 2018) ("Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).").

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds that, at the time Respondent registered the Domain Names, between May and July 2023, Respondent had actual knowledge of Complainant's UPWORK mark. The Respondent used the Domain Names to pass itself off as Complainant, both on the Respondent's Websites and through phishing e-mails for financial gain. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Names in bad faith as Respondent uses or intends to use the Domain Names for e-mails to pass itself off as the Complainant to disrupt the Complainant's business or for financial gain. Using a disputed domain name to pass off as a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the <abbuie.com> domain name to impersonate Complainant's CEO. Such use is undeniably disruptive to Complainant's business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)"); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use).  Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶ 4(b)(iv).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <upworkpayments.com> and <upwork-payments.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Nicholas J.T. Smith, Panelist

Dated: September 26, 2023