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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asana, Inc. v. On behalf of asanadesktop.com owner, Whois Privacy Service / Luka Tonk

Case No. D2021-1885

1. The Parties

The Complainant is Asana, Inc., United States of America, internally represented.

The Respondent is On behalf of asanadesktop.com owner, Whois Privacy Service / Luka Tonk, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <asanadesktop.com> is registered with Amazon Registrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2021 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 22, 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 June 23, 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 June 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 23, 2021.

The Center appointed Mihaela Maravela as the sole panelist in this matter on July 30, 2021. 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 a work management platform that helps teams orchestrate their work, from daily tasks to cross-functional strategic initiatives. The Complainant has more than 100,000 paying organizations and millions of organizations that use its services for free across 190 countries to manage aspects related to company objectives, digital transformation, product launches or marketing campaigns.

The Complainant is the exclusive owner of a number of registered trademarks consisting of “ASANA”, including the International trademark registration No. 1028730, registered on January 27, 2010 and the UK trademark registration No. UK00801028730, registered on January 27, 2010.

The disputed domain name was created on January 22, 2021 and at the date of the Complaint it resolved to a website purporting to offer a “download” of the ASANA desktop app. At the date of the Decision the disputed domain name resolves to a login page where a username and a password should be introduced for access to <asanadesktop.com>.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s trademarks because it incorporates the entirety of its ASANA trademark and adds only a generic term “desktop” and “.com”.

With respect to the second element, the Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name, as it is used to offer a “download” of the ASANA desktop app that the Complainant has not authorized. The website at the disputed domain name includes an image of a “box” using the Complainant’s ASANA trademark and logo, but the box is not a representation of the Complainant’s product. In addition, the Complainant argues that there is no evidence that the Respondent has been commonly known by the name “Asana” or that it has acquired rights in that name. The website at the disputed domain name contains a copyright notice purporting to be in the name of ECS Financial Group (UK) Ltd., which has no resemblance to ASANA. Moreover, the registrant’s information shows the name “Luka Tonk” and otherwise has no connection to the name Asana. The Respondent is also not making non-commercial or fair use of the disputed domain name, as it is purporting to offer genuine ASANA services even if it is not authorized to do so. It also represents on its “Frequently Asked Questions” page that it has “a variety of payment methods so that our clients can enjoy our service”. Moreover, when users sign up for an “account” on the website at the disputed domain name, they are directed to a payment page and as an alternative to payment, the website presents a “referral code” of user to refer friends with a possibility of earning rewards. Moreover, the website at the disputed domain name has also a sham “blog” intended to further impersonate the Complainant and it contains posts that either copy or recycle content from the Complainant’s press releases.

As regards to the third element, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith as the Complainant has rights in the ASANA trademark since at least as early as 2009, and its registrations date back at least as early as 2011 in the United States and at least as early as 2010 in the United Kingdom (where the Respondent purports to have an address). The Complainant contends that given that the Respondent is using the Complainant’s name and logo for a fake desktop app, there can be no doubt that the Respondent is aware of the Complainant and is intending to take advantage of the Complainant’s goodwill in its trademarks. As per the Complainant, the Respondent is attempting to impersonate the Complainant by using the ASANA trademark and logo on the website at the disputed domain name.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In two informal communications submitted after the due date, the Respondent mentioned that “we are completely against the claim, but we have shut the website down”.

6. Discussion and Findings

Notwithstanding the fact that no formal Response has been filed, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall 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 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has proved its rights over the ASANA trademark. The trademark is reproduced in its entirety in the disputed domain name. The addition of the word “desktop” does not prevent a finding of confusing similarity with the Complainant’s trademark, which is recognizable in the disputed domain name. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. The addition of an additional term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

It is well accepted by UDRP panels that a generic gTLD, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. See section 1.11 of the WIPO Overview 3.0.

This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, […] 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.”

The Complainant claims that the Respondent is not authorized to use the Complainant’s trademarks. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “asana”. The disputed domain name was used to resolve to a website that purports to offer a “download” of the ASANA desktop app, that the Complainant claims it has not authorized. According to the unrebutted evidence submitted by the Complainant, the website at the disputed domain name displays the ASANA trademark and provides no disclaimer as to any lack of authorization from or affiliation with the Complainant. This cannot amount in the Panel’s view to a bona fide offering of goods or services within the meaning of paragraphs 4(c)(i) of the Policy or to a legitimate noncommercial or fair use of the disputed domain name as provided by article 4(c)(iii) of the Policy.

In the present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain name and has not refuted the prima facie case made by the Complainant.

Furthermore, the nature of the disputed domain name carries a risk of implied affiliation and cannot constitute a fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered many years after the Complainant has obtained registration of its ASANA trademarks. The disputed domain name is confusingly similar with the Complainant’s trademark. Moreover, the ASANA trademark of the Complainant is displayed on the website at the disputed domain name. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. The Respondent provided no explanations for why it registered the disputed domain name.

As regards to the use of the disputed domain name, the Panel finds that, according to the unrebutted evidence submitted by the Complainant, the disputed domain name resolved to a website displaying “ASANA” with the Complainant’s trademark, offering products under the Complainant’s trademark. The Complainant adduced evidence that the website to which the disputed domain name resolved was used for online sales of presumably counterfeit products marked with the ASANA trademark. This shows in the Panel's view that the website to which the disputed domain name resolved was used to create a likelihood of confusion as to the Complainant's affiliation with the site and offers for sale of presumably counterfeit replicas of the Complainant's goods. This Panel agrees that even in the event that the Complainant offers genuine ASANA goods (e.g. as a non-authorised reseller) rather than counterfeits, misleading Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business, or that the Respondent's activities are approved or endorsed by the Complainant, indicates bad faith.

The Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain. Given the confusing similarity between the ASANA trademark and the disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolved. Presumably, the Respondent intended to benefit from the confusion created. This amounts to use in bad faith under the terms of paragraph 4(b)(iv) of the Policy.

Based on the evidence and circumstances of this case, the Panel concludes that the disputed domain name was registered and used in bad faith.

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, <asanadesktop.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: August 13, 2021

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