Upwork Inc. submitted to the Czech Arbitration Court (CAC) my domains

[anhnguyenict]

Hello Pros,

I just receive email from my Registrar about my 2 domains
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Dear Registrant,

We have been notified by the Czech Arbitration Court (CAC) that a domain name complaint regarding iupwork.com has been filed pursuant to ICANN's Uniform Domain-Name Dispute-Resolution Policy. In accordance with paragraph 8 of ICANN's policy, a registrar lock has been placed on the disputed domain name(s) until the conclusion of the administrative proceeding, at which time the ADR will notify the parties of the panel's decision in this matter. Any services you may have relating to the disputed domain name(s) will not be affected by the registrar lock.

However please note that if the disputed domain name(s) is enabled with our Privacy service, we may terminate the service during the administrative proceeding per our Whois Privacy Policy.

If you have questions regarding the content of the proceedings, please contact complainant's attorney or the arbitration provider shown below. If you have not already received a copy of the complaint, please know the complainant is required to serve you with a copy.

If you have questions regarding the performance of your domain name or access to your domain name or account, please contact us by email at [email protected].
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Dear Registrar,

A Complaint has been submitted to the Czech Arbitration Court by the person / entity identified below (Complainant):

Organization Upwork Inc.
Address of the seat/residence 441 Logue Ave.
City Mountain View, California
Country US
ZIP 94043
Address for correspondence 441 Logue Ave.
City Mountain View, California
Country US
ZIP 94043
E-mail [email protected]
Telephone +1.6503167500
Fax
The Complaint has been filed against the person / entity identified below (Respondent):
...
The Complaint relates to the domain name(s) listed below, which the Complainant alleges is/are registered with you by the above mentioned Respondent: IUPWORK.COM, GETUPWORKS.COM

The CAC assigned the following Case Number to this Case: 101367

We kindly request that you:

1. Confirm that the specified domain name(s) is / are registered with you as the Registrar.

2. Confirm that the Respondent is the current registrant of the domain name(s).

3. Confirm or correct the Respondent’s contact information listed above and if not complete, please provide Respondent’s additional contact information as soon as possible, including, for the Respondent’s technical contact, administrative and billing contacts for the above domain name(s).

4. Confirm that the language of the registration agreement is English.

5. Confirm that the domain name(s) will remain locked with immediate effect during the pending administrative proceeding.

6. Indicate the date of registration of the domain name(s) by the current registrant.

Please provide the requested information as soon as possible, but no more than two (2) business days after receiving this Request to the following email address: [email protected].

We greatly appreciate your assistance in verifying this information.

Sincerely,

JUDr. Marie Moravcova

Secretary of the CAC

2016-11-27
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What should I do now?

Please suggest me in this case!

Thank you so much!

 

[HKIBC]

CAC will send you by email and by registered mail as well the UDRP Complaint, specifying a deadline for you to respond to this (which is called a Response). You may choose to ignore this, in which case CAC will select a panel consisting of one or more Arbitrators (as per UDRP rules and Complaint they received), which will rule on the Complaint without input from your side. This most often results in the name being awarded to the Complainant (read: you will lose the name). Should you decide to respond, you may hire a lawyer specializing is UDRP cases or do so by yourself (there is no requirement to be represented by a lawyer).

Summing up: wait for the Complaint and see what the Complainant alleges.

 

[anhnguyenict]

CAC will send you by email and by registered mail as well the UDRP Complaint, specifying a deadline for you to respond to this (which is called a Response). You may choose to ignore this, in which case CAC will select a panel consisting of one or more Arbitrators (as per UDRP rules and Complaint they received), which will rule on the Complaint without input from your side. This most often results in the name being awarded to the Complainant (read: you will lose the name). Should you decide to respond, you may hire a lawyer specializing is UDRP cases or do so by yourself (there is no requirement to be represented by a lawyer).

Summing up: wait for the Complaint and see what the Complainant alleges.

How to do if I respond by myself?

Should I build new websites with these domains?

 

[HKIBC]

How to do if I respond by myself?

Step by step: first read the Complaint, when you receive it. See if you understand what they allege. Think about it and see if you can defend your registeration of the domain(s) in question.

They will probably allege that:

(1) they have a trademark or have applied for one. The latter is not valid reason for a Complaint, but it's attempted because it often carries weight with Arbitrators, especially if you are unable to present a good defence in point (2) and (3) below...

(2) you had no good reason to register said name(s). You need to explain what was the purpose of registering them...

(3) you have registered said domain(s) in bad faith. This is the point that carries most weight, so they will allege that you are the devil incarnate. You need to shoot their every single allegation down!

Should I build new websites with these domains?

At this late date, I recommend against that.

 

[HKIBC]

Go to the CAC and/or WIPO website (see which one has better information in the language that you are most fluent in). Read the detailed instructions there...

I'm referring to the description and instructions regarding the UDRP process. Understandably, they are focused on the needs of Complainants. Don't expect to find a guide book on how to respond to specific allegations

 

[HKIBC]

Most important to know: the Complainant needs to prove all three points:

- that they have a trademark,

- that you had no reason to register said domain(s),

- that you acted in bad faith.

This is as far as UDRP process goes. Nothing (except higher legal costs) is stopping them from suing you in Civil Court, where they can ask that the domain is transferred to them plus ask for perceived damages. Another words, if they're determined, your winning before CAC may not be the end of it.

 

[168]

Code (4) STANDARD CHARACTER MARK
Serial Number 86543527
Filing Date February 23, 2015
Current Basis 1B;44E
Original Filing Basis 1B;44D
Published for Opposition September 6, 2016
Owner (APPLICANT) UPWORK INC. CORPORATION DELAWARE 441 LOGUE AVENUE MOUNTAIN VIEW CALIFORNIA 94043
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Connie L. Ellerbach
Priority Date August 26, 2014
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Since you reg'd after the dates above that is against you.
If you have not put anything on the sites related to their TM that is in your favor
the terms are generic, the company or product is not well known . The terms could be used for a fitness program and not
interfere with their trademark Be ready to provide several alternate uses that doesn't interfere with their TM
Since you have several domains, it is legitimate business use as long as they cannot prove use in any of the areas they have TM
can you develop or sell for more than the cost to defend ?
can you prove you did nothing to interfere with the TM?
does your portfolio have other domains related to other TM's?
Should you decide to defend, get a 3 person panel vs 1person
Hope you win because there are several uses that don't interfere with their TM

 

[anhnguyenict]

Code (4) STANDARD CHARACTER MARK
Serial Number 86543527
Filing Date February 23, 2015
Current Basis 1B;44E
Original Filing Basis 1B;44D
Published for Opposition September 6, 2016
Owner (APPLICANT) UPWORK INC. CORPORATION DELAWARE 441 LOGUE AVENUE MOUNTAIN VIEW CALIFORNIA 94043
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Connie L. Ellerbach
Priority Date August 26, 2014
Type of Mark TRADEMARK. SERVICE MARK
Register PRINCIPAL
Live/Dead Indicator LIVE

Since you reg'd after the dates above that is against you.
If you have not put anything on the sites related to their TM that is in your favor
the terms are generic, the company or product is not well known . The terms could be used for a fitness program and not
interfere with their trademark Be ready to provide several alternate uses that doesn't interfere with their TM
Since you have several domains, it is legitimate business use as long as they cannot prove use in any of the areas they have TM
can you develop or sell for more than the cost to defend ?
can you prove you did nothing to interfere with the TM?
does your portfolio have other domains related to other TM's?
Should you decide to defend, get a 3 person panel vs 1person
Hope you win because there are several uses that don't interfere with their TM

1/ Shoud I contact Upwork directly and give them a settlement (sell these domains for them)?

2/ Should I setup a simple website for my domains (e.g. We are coming soon!)?

 

[gtldomainer]

Is it illegal to hold domain names that are similar to other company names? For instance, can't I hold aon.company? Although AON is a fortune 500 company in US, it could mean anything as an abbreviation.

 

[HKIBC]

It's not illegal. Neither is registering a domain that matches an existing trademark. What it does, is increase chances that you will be served with an UDRP Complaint, is all.

 

[168]

1/ Shoud I contact Upwork directly and give them a settlement (sell these domains for them)?

2/ Should I setup a simple website for my domains (e.g. We are coming soon!)?

1NO contact for sale will demonstrate bad faith
2NO too late for that claim filed.
They have to prove bad faith use, intent, reg. which they cannot if you haven't done anything yet and your business is domains
You can disprove bad faith by providing several examples of alternate use that doesn't infringe on their TM

 

[anhnguyenict]

They have to prove bad faith use, intent, reg. which they cannot if you haven't done anything yet and your business is domains
You can disprove bad faith by providing several examples of alternate use that doesn't infringe on their TM

Could you give me some examples?

Thank you so much!

 

[enlytend]

The term is not generic for their usage. If it was generic, they would not have been granted a tm.

If you ever had ads or content related to freelance work, they probably have screenshots of it, which would be evidence of bad faith.

They are actually quite well known - this is the rebrand of the freelance services formerly known as elance and Odesk.

 

[anhnguyenict]

The term is not generic for their usage. If it was generic, they would not have been granted a tm.

If you ever had ads or content related to freelance work, they probably have screenshots of it, which would be evidence of bad faith.

They are actually quite well known - this is the rebrand of the freelance services formerly known as elance and Odesk.

Yes,

But my domains:
- iupwork => IUPWork (Intelligent User Profilling for Work)
- getupworks => GetupWorks (Getup! Works)

I think UP is generic, examples: UPload, UPdate, UPgrade, ...

 

[enlytend]

The point is usage. A tm uniquely identifies a provider of goods and services, If it ever had content /ads in the category or categories for which their tm is registered, they have you on bad faith.
Btw, the complainant has filed at least 2 other udrps this month. They won one, they lost the other.

 

[anhnguyenict]

The point is usage. A tm uniquely identifies a provider of goods and services, If it ever had content /ads in the category or categories for which their tm is registered, they have you on bad faith.
Btw, the complainant has filed at least 2 other udrps this month. They won one, they lost the other.

They won one because the respondent does not reply to CAC.

Their representative is RiskIQ just send me an email to negotiation a settlement.

... "Upwork will reimburse any documented out-of-pocket costs you had for
registering the two domain names as a gesture of its good faith to
resolve the dispute" ...

What should I do?

 

[enlytend]

They also had no argument for legitimate interest in the domain they lost. The others did.

I'd show them my documented costs and hand over the domains. You're having trouble with them, what use would they be to anyone else? Who would buy them? They're not strong names to begin with. Walk away with your reputation intact.