WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlassian Pty Ltd v. Lifangqiang
Case No. D2017-2149
1. The Parties
The Complainant is Atlassian Pty Ltd of Sydney, Australia, represented by IPLA, United States of America ("United States").
The Respondent is Lifangqiang of Shenzhen, Guangdong, China.
2. The Domain Name and Registrar
The disputed domain name <atlassian.asia> 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 November 3, 2017. On November 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 27, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 19, 2018. 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
Founded in Sydney, Australia in 2001, the Complainant is a well-known software development company serving over 100,000 customers globally, including over 80 of the Fortune 100 companies.
The Complainant's website, located at "www.atlassian.com" has been operational and available worldwide as early as July 2001 and since then the Complainant has been extensively using and promoting its ATLASSIAN mark.
The Complainant owns among others the International Trademark Registration No. 983132 for the word mark ATLASSIAN, designating a number of countries throughout the world, including China where the Respondent is domiciled. This trademark of the Complainant has been registered since August 12, 2008 for goods and services of Classes 9, 38 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
Since March 19, 2001 the Complainant owns the domain name <atlassian.com> which identifies the Complainant's principal website for its ATLASSIAN and other principal marks, such as JIRA and CONFLUENCE.
The disputed domain name was registered on November 1, 2016.
At the website under the disputed domain name the Respondent offers no goods or services, it has been used as a parked website with revenue generating advertisements invoking among others the Complainant's ATLASSIAN mark, as well as the Complainant's other principal trademarks JIRA and CONFLUENCE.
5. Parties' Contentions
The Complainant contends that the disputed domain name <atlassian.asia> is identical or confusingly similar to its ATLASSIAN trademark since its reproduces it in its entirety and the applicable ".asia' generic Top-Level Domain ("gTLD") should not be taken into account in assessing confusing similarity.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the distinctiveness and reputation of the Complainant's ATLASSIAN trademark the Respondent was most likely aware of it when registering the disputed domain name.
The Complainant contends that the fact that the disputed domain name resolves to a pay-per-click website of the Respondent indicates that the disputed domain name was obtained and has been used with intent to ride on the reputation of the Complainant's ATLASSIAN trademark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel's decision be made "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."
It has been a consensus view in UDRP decisions that a respondent's default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been accepted by many UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced appropriate evidence on having registered rights in the trademark ATLASSIAN, and for the purpose of this proceeding, the Panel finds that the Complainant's International Trademark Registration No. 983132 for the mark ATLASSIAN satisfies the requirement of having trademark rights.
Having determined that the Complainant has trademark rights in the ATLASSIAN mark, the Panel next assessed whether the disputed domain name <atlassian.asia> is identical or confusingly similar to the ATLASSIAN trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
The disputed domain name <atlassian.asia> contains the Complainant's ATLASSIAN trademark in its entirety. The only other element in the disputed domain name <atlassian.asia> is the ".asia" gTLD.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain ("gTLD") in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name <atlassian.asia> is identical to the ATLASSIAN trademark of the Complainant and 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, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well-established rights in the trademark ATLASSIAN.
The Complainant has never authorized the Respondent to use its ATLASSIAN trademark in any way, and the Complainant's prior rights in the ATLASSIAN trademark long precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent.
As such, 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 the 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 Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant's prima facie case. The Panel does not find the Respondent's use of the disputed domain name to be bona fide within the meaning of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Complainant presented suitable evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant's ATLASSIAN trademark is inherently distinctive and widely-known and the disputed domain name is reproducing it in its entirety.
The fact that the Respondent invoked other principal trademarks of the Complainant on its website under the disputed domain name is clear indication to this Panel that the Respondent knew of the Complainant's business and its ATLASSIAN trademark at the time of registering the disputed domain name <atlassian.asia>.
In view of the Panel in this case there can be no conceivable explanation for the Respondent's registration of the disputed domain name <atlassian.asia> other than to misuse, abusively profit from reputation of the Complainant's ATLASSIAN trademark.
By incorporating the Complainant's ATLASSIAN trademark in the disputed domain name and by pointing it towards a parking website providing links to third parties the Respondent's obviously intended to divert traffic meant for the Complainant's website and to obtain click-through revenues from the diversion of Internet users.
This is activity that is well within paragraph 4(b)(iv) of the Policy and the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied.
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, <atlassian.asia> be transferred to the Complainant.
Date: February 2, 2018