Complainant is UNQORK Inc., United States of America (“United States” or “US”), represented by CSC Digital Brand Services AB, Sweden.
Respondent is Super Privacy Service LTD c/o Dynadot, United States.
The disputed domain name <unqork.org> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2019. On December 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 20, 2019, 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 Complainant on December 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Center received an email communication from a third party claiming to be to the owner of the Domain Name on December 27, 2019. Complainant filed an amended Complaint on December 31, 2019.
The Center was copied on an email communication from the same third party dated January 1, 2020, and directed to the Registrar, in which the third party stated in relevant part: “As I mentioned in the first response, I do not want this domain….Please immediately delete or transfer this domain name from my account.” On January 2, 2020, the Center sent an email communication to the third party, requesting that the third party identify itself and clarify its relationship to Respondent. The Center received another email communication from the third party on January 2, 2020, in which that party stated “I have been trying to delete this domain name from my Dynadot account since December 20th” and “I do not want this domain name and I have been actively trying to remove it”. In response to these messages, Complainant’s representative stated as follows in an email dated January 2, 2020, directed to the third party and with the Center in copy:
“Complainant is willing to explore settlement of this case but not until we have your full and actual registrant details. Settlement of these cases involves a signed agreement between both parties and Complainant is unwilling to sign that agreement while the details are still under privacy.
If you truly wish to settle this matter please reach out to the registrar with WIPO and Complainant in copy, and ask them to remove the privacy service and provide the true registrant details. Once those have been provided and confirmed by WIPO, Complainant is happy to request a suspension of the case so settlement can be discussed.”
Neither Respondent nor the third party contacted the Registrar to remove the privacy protection, nor did the third party provide any follow-up communication to identify him- or herself and clarify his/her relationship (if any) to Respondent.
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 Respondent of the Complaint, and the proceedings commenced on January 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 22, 2020. Respondent did not submit a Response. Pursuant to paragraph 6 of the Rules, the Center notified the Parties that it would proceed with panel appointment on January 23, 2020.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on January 28, 2020. 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.
Complainant is a software startup company with its headquarters in New York, supporting innovation in large enterprises. Complainant provides a cloud-based no-code enterprise application platform that combines the simplicity of a no-code interface with the functionality and power of robust software. Complainant helps its clients by providing solutions to their technological needs by designing and building custom software. Complainant offers a Software-as-a-Service (SaaS) platform that digitizes the client’s business lifecycle, constructing applications with intuitive visual interfaces that support in particular financial services and insurance companies.
Complainant’s has achieved funding of over USD 110 million, with an initial USD 22 million financing led by Goldman Sachs in April 2019 and a subsequent USD 80 million financing led by CapitalG, the equity investment fund of Google’s parent company, Alphabet, in October 2019.
Complainant is the owner of the following federal trademark registrations in the United States:
|
TRADEMARK |
JURISDICTION/ TM OFFICE |
REGISTRATION NUMBER |
REGISTRATION DATE |
IC CLASS |
|
UNQORK |
US / United States Patent and Trademark Office (“USPTO”) |
5679450 |
February 19, 2019 |
036 |
|
UNQORK |
US / USPTO |
5679451 |
February 19, 2019 |
042 |
According to WhoIs records, Complainant’s domain name <unqork.com> was registered on September 22, 2016.
The Domain Name was registered on October 4, 2019.
(i) Identical or confusingly similar
By virtue of its trademark and service mark registrations, Complainant is the owner of the UNQORK trademark. Complainant’s states that its mark is a name that is not part of the common parlance and has no meaning when divorced from Complainant. Complainant has made significant investment to advertise and promote its UNQORK trademark worldwide in the media and on the Internet since its commencement two years ago. Complainant’s claims its UNQORK brand is well recognized and respected in its industry. A search for the term UNQORK across the three most widely-used search engines, yielding only results linked to Complainant, demonstrates the link between the term UNQORK and Complainant.
The Domain Name consist solely of Complainant’s UNQORK trademark (and the “.org” generic top-level domain (“gTLD”)), resulting in a Domain Name that is identical to Complainant’s UNQORK mark and thus meeting the requirements under the Policy, paragraph 4(a)(i).
(ii) Rights or legitimate interests
Complainant states that the granting of registrations by the United States Patent and Trademark Office (“USPTO”) to Complainant for the UNQORK trademark is prima facie evidence of the validity of the term UNQORK as a mark, of Complainant’s ownership of this mark, and of Complainant’s exclusive right to use the mark in commerce in connection with the goods or services specified in the registration. Complainant indicates that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant has not given Respondent permission to use Complainant’s trademarks in any manner. Furthermore, Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s trademark.
Complainant claims that Respondent is not commonly known by the Domain Name, which shows a lack of rights or legitimate interests. Complainant states that the pertinent WhoIs information does not identify the registrant, and therefore, the registrant name does not resemble the Domain Name in any manner. Complainant argues that where no evidence, including the WhoIs record for the Domain Name, suggests Respondent is commonly known by the Domain Name, then Respondent cannot be regarded as having acquired rights to or legitimate interests in the Domain Name within the meaning of Policy, paragraph 4(c)(ii).
Complainant states that Respondent is using the Domain Name to redirect Internet users to an Afternic “for sale” page where Respondent has made it available for purchase. The Domain Name is being offered for sale in the amount of USD 19,995, an amount that far exceeds Respondent’s out-of-pocket expenses in registering it, which serves as further evidence of Respondent’s lack of rights and legitimate interests. Complainant contends that Respondent is not using the Domain Name to provide a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii). Complainant contends that this reveals a lack of rights or legitimate interests in the Domain Name, as confirmed by numerous past panels.
In addition to using the Domain Name to resolve to the Afternic for sale page, Respondent reached out to Complainant several times, to let Complainant know that “[w]e listed it at Afternic (owned by GoDaddy) for anyone to purchase at any time”. The first of Respondent’s four emails was sent on October 9, 2019, just five days after the Domain Name was registered.
Respondent registered the Domain Name on October 4, 2019, which is after Complainant filed for registration of its UNQORK trademark with the USPTO, after Complainant’s registration of its <unqork.com> domain name, and also after Complainant’s first use of its mark in commerce in 2017.
(iii) Registered and used in bad faith
Complainant claims that its UNQORK trademark is well-known within the United States, where Respondent resides, and is gaining notoriety worldwide. Complainant has marketed and sold its goods and services using this trademark since 2017, which is before Respondent’s registration of the Domain Name in October 2019.
Complainant contends that by registering the Domain Name that consists solely of Complainant’s UNQORK trademark, Respondent has created a Domain Name that is not only identical to Complainant’s trademark, but also identical to Complainant’s <unqork.com> domain name. Complainant asserts that Respondent has demonstrated a knowledge of Complainant’s brand and business. Moreover, Respondent has targeted Complainant with several email solicitations attempting to sell the Domain Name directly to Complainant, the first of which came on October 9, 2019, five days after the Domain Name was registered. Complainant claims that these actions, coupled with the composition of the Domain Name (Complainant’s UNQORK trademark is not a common term in any language; rather it is a fanciful, coined term relating only to Complainant), serve as further evidence that Respondent was specifically targeting Complainant, which shows bad faith registration and use. In light of the facts in the Complaint, Complainant argues it is not possible to conceive of a plausible situation in which Respondent would have been unaware of Complainant’s brands at the time the Domain Name was registered. Stated differently, UNQORK is so closely linked and associated with Complainant that Respondent’s use of this mark, or any minor variation of it, strongly implies bad faith.
Moreover, Respondent registered the Domain Name two days after it was announced that Complainant had raised over USD 80 million in a financing round led by CapitalG, the equity investment fund behind Google’s parent company, Alphabet. Respondent’s registration of the Domain Name two days after the announcement of Complainant’s funding round suggests that Respondent knew of Complainant and only registered the Domain Name in response to the publicity generated and received by Complainant. Complainant argues that given the suspicious timing and the fact that Respondent purported to sell the Domain Name at a premium to Complainant immediately after registering it, it is clear that Respondent acted in bad faith.
Complainant indicates that the Domain Name currently redirects to an Afternic for sale page and is not actively being used, though past panels have noted that the word bad faith “use” in the context of paragraph 4(a)(iii) does not require a positive act on the part of the respondent – instead, passively holding a domain name can constitute a factor in finding bad faith registration and use pursuant to Policy, paragraph 4(a)(iii). In this case, the Domain Name is an exact match to Complainant’s trademarks, and Respondent has made no use of the Domain Name, other than to redirect it to a page offering it for sale, factors which should be duly considered in assessing bad faith registration and use. Respondent is currently offering to sell the Domain Name in the amount of USD 19,995, which constitutes bad faith under paragraph 4(b)(i) because Respondent has demonstrated an intent to sell, rent, or otherwise transfer the Domain Name for valuable consideration in excess of his out-of-pocket expenses. Complainant states that, in fact, Respondent reached out directly to Complainant five days after registration of the Domain Name in an attempt to solicit an offer. When Complainant failed to respond, Respondent sent additional emails on October 17 and October 29, 2019. It is well established that seeking to profit from the sale of a confusingly similar domain name that incorporates a third party’s trademark demonstrates bad faith.
Complainant states that the Domain Name can only be taken as intending to cause confusion among Internet users as to the source of the Domain Name, and thus, it must be considered as having been registered and used in bad faith pursuant to Policy, paragraph 4(b)(iv), with no good faith use possible. More specifically, where the Domain Name incorporates in its entirety Complainant’s UNQORK trademark, resulting in a Domain Name that is identical to the trademark, and is then used by Respondent solely for the purposes of selling the domain name, there is no plausible good faith reason or logic for Respondent to have registered the Domain Name. Further, considering these circumstances, any use of the Domain Name whatsoever, whether actual or theoretical, would have to be in bad faith.
Finally, Complainant claims that, on balance of the facts set forth above, it is more likely than not that Respondent knew of and targeted Complainant’s trademark, and Respondent should be found to have registered and used the Domain Name in bad faith.
Respondent did not reply to Complainant’s contentions.
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
The Panel finds that Complainant has established rights in its UNQORK trademark, based on its trademark registrations and use of the mark in connection with its software business. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1 (“Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.”)
Further, the Panel determines that the Domain Name is identical to the UNQORK mark, as the Domain Name incorporates the mark in its entirety, with no other element except the gTLD “org”.
Accordingly, the Panel finds that that the Domain Name is identical to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its UNQORK trademark; that Respondent is not commonly known by the Domain Name; and that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services.
Instead, the record indicates that the Domain Name has been used to resolve to an Afternic “for sale” webpage, where it has been offered for sale in the amount of USD 19,995. The Domain Name, which is identical to Complainant’s distinctive UNQORK trademark, was registered two days after Complainant’s announcement that it had raised over USD 80 million in a financing, which suggests suspicious timing. Moreover, Respondent contacted Complainant with the first of several emails just five days after the Domain Name was registered, stating “[w]e listed [the domain Name] at Afternic (owned by GoDaddy) for anyone to purchase at any time”. The fact that Respondent contacted Complainant indicates that Respondent was aware of Complainant and its UNQORK brand at that time, while also indicating Respondent intent for registering the Domain Name – that is, to sell it.
In view of these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. See e.g., Gold Fields Limited v. Vivek Narayan, WIPO Case No. D2018-2920 (finding that “[t]here is no evidence that the Respondent has made a bona fide or legitimate business use of the disputed domain name, or that it has made a legitimate noncommercial or fair use of the disputed domain name”, where Respondent registered and held the domain only to have it resolve to an Afternic for sale page); Spirig Pharma AG v. Whois privacy services, provided by DomainProtect / Alexander Zinovjev, WIPO Case No. D2014-1612 (the only use of the disputed domain name is an offer to sell. Considering that <excipial.com> is referring to a distinctive trademark and not a common word, such use cannot be considered as a legitimate interest).
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its UNQORK trademark, and intentionally targeted that mark, when registering the Domain Name. The Domain Name incorporates Complainant’s distinctive UNQORK trademark in its entirety, with no additional element except for the “.org” gTLD. Complainant’s UNQORK mark refers to a name that is not part of the common parlance and has no independent meaning when detached from Complainant’s brand. As discussed above, the Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s UNQORK mark, just three days after publicity was released concerning Complainant’s successful fundraising round, and then contacted Complainant five days after that to indicate the Domain Name was for sale. These circumstances suggest that Respondent was aware of Complainant and its UNQORK brand when it opportunistically registered the Domain Name, and sought to profit from the registration by selling the Domain Name to Complainant. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (“it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”); Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754 (“the Panel makes its finding regarding bad faith registration by asking whether it is more likely than not from the record of the evidence in the proceeding that Respondent had the ELECTRIC FOOTBALL trademark in mind when registering the Domain Name”); Sota v. Waldron, WIPO Case No. D2001-0351 (finding that respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the name <unqork.org> be transferred to Complainant.
Christopher S. Gibson
Sole Panelist
Date: February 11, 2020