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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bulova Invest Ltd v. Amazing Bender / Domin Admin

Case No. D2015-0530

1. The Parties

The Complainant is Bulova Invest Ltd of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Mapa Trademarks SL, Spain.

The Respondent is Amazing Bender of Lvov, Lvovskaya, Ukraine / Domin Admin, Domain Admin, Privacy Protection Service INC, d/b/a Privacy Protect.org of Nobby Beach, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <upforitapp.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2015. On March 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2015, 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 April 2, 2015 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 amendment to the Complaint on April 6, 2015.

The Center verified that the Complaint together with the amendment to the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 8, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 29, 2015.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on May 8, 2015. 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 provides dating services and has submitted evidence that it is the owner of the following registered trademarks:

UPFORIT, Community trademark (word) with registration No. 010567006, filing date January 17, 2012 and registration date May 24, 2012.

UPFORIT, United States Patent Trademark Office ("USPTO") trademark (word) with registration No. 4,480,070 and registration date February 11, 2014. According to the USPTO registration certificate the trademark has been used in commerce since September 2010.

The disputed domain name was registered on July 2, 2012.

5. Parties' Contentions

A. Complainant

The Complainant provides dating services through the website "www.upforit.com" and the domain name was registered on May 14, 2002.

The disputed domain name, which is confusingly similar to the Complainant's trademark, resolves to a website which is a copy of the Complainant's website. The Respondent has copied the design of the Complainant. The Complainant's website displays the trademark UPFORIT. The string "up" is represented in red and the string "for" is represented in white letters, whereas the string "it" is represented in white letters depicted inside a red heart with two horns. Underneath the sign, the sentence "where hotties meet" is displayed. The website to which the disputed domain name resolves displays the same design as the Complainant's website. The only difference is that the string "for" is represented in black instead of white and the addition of the term "app" at the end. The sentence "where hotties meet" is also displayed underneath the sign.

The term "app" in the context of the Internet is usually perceived to be an abbreviation of the word "application" meaning "application software", being a small piece of software that can be downloaded onto a device and used to access the services of a particular entity. Considering that the Complainant offers its own app called UPFORIT for download by its customers, the addition of the term "app" to the disputed domain name may serve to heighten confusion. The addition of the term "app" is insufficient to distinguish the disputed domain name from the trademark.

The Respondent is not a licensee of the Complainant. The Complainant has not authorized or consented to the Respondent's use of the trademark UPFORIT. The Respondent acquired the disputed domain name in the hope of intentionally attracting, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is using the disputed domain name in relation to a website which offers online dating services which are not the Complainant's dating services or authorized by or otherwise associated with it. The Respondent's conduct of trading on the significance of the Complainant's trademark does not constitute a bona fide offering of goods and services for the purpose of the Policy.

The disputed domain name was registered primarily for the purpose of confusing customers into believing that the disputed domain name is a genuine brand of the Complainant and therefore diverting Internet business away from the Complainant's website to the Respondent's website.

Since the Respondent's website adopted the same basic design as the Complainant's website, there is a risk that the Respondent uses the disputed domain name for the purpose of "phishing" and acquiring confidential and sensitive personal information provided by Internet users who falsely believe that they are providing such information to the Complainant for one of its online chat or dating services.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(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 the disputed domain name; and

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark UPFORIT. The disputed domain name <upforitapp.com> incorporates the trademark in its entirety with the addition of the descriptive term "app", which is commonly used as abbreviation of the word "application". The ability for a descriptive term, such as "app", to distinguish the domain name from the trademark, is limited in this case. In fact, since the Complainant provides services via an application, the addition of the term "app" may actually increase the risk of confusion.

Having the above in mind, the Panel concludes that the disputed domain name <upforitapp.com> is confusingly similar to the Complainant's trademark UPFORIT and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has used or made 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 prior to any notice of the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or

(iii) that it is making a legitimate noncommercial 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 Complainant has not licensed or otherwise consented to the Respondent's use of the trademark UPFORIT in connection with the disputed domain name <upforitapp.com>, which is confusingly similar to the Complainant's trademark.

The evidence in this case indicates that the disputed domain name has been used by the Respondent to provide services in direct competition with those offered by the Complainant. Furthermore, the evidence indicates that the website to which the disputed domain name resolves has an appearance that is confusingly similar to the appearance of the Complainant's website.

There is no evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute.

Although given the opportunity, the Respondent has not rebutted the Complainant's prima facie case. It has not submitted any evidence indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant's submissions, and the Panel concludes that the Complainant has also proven the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

The Complainant's UPFORIT trademark predates the registration of the disputed domain name <upforitapp.com>. The appearance and design of the website to which the disputed domain name resolves is confusingly similar to the appearance and design of the Complainant's website. The submitted evidence indicates that the disputed domain name has not only been registered but also used with the Complainant's business and trademark in mind.

Thus, the evidence in the case before the Panel indicates that the disputed domain name <upforitapp.com> has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website.

There is no evidence in the case file that refutes the Complainant's submissions.

The Panel concludes that the Complainant has proven the requirements under paragraph 4(b) of the Policy and that the disputed domain name <upforitapp.com> has been 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 <upforitapp.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: May 20, 2015

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