WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlassian Pty Ltd v. Contact Privacy Inc. / Evan Janke, The Janke Company
Case No. D2019-2229
1. The Parties
The Complainant is Atlassian Pty Ltd, Australia, represented by Sideman & Bancroft LLP, United States of America (“United States”).
The Respondent is Contact Privacy Inc., Canada / Evan Janke, The Janke Company, United States.
2. The Domain Name and Registrar
The disputed domain name <atlassian-foundation.com> (“the Domain Name” is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 17, 2019, 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 September 17, 2019, 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 September 18, 2019.
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 September 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2019.
The Center appointed Dawn Osborne as the sole panelist in this matter on October 16, 2019. 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 the owner of the mark ATLASSIAN registered, inter alia, in the USA including trade mark registration no. 5071788 for software and related services with first use recorded as 2002. It owns <atlassian.com>.
The Domain Name registered in 2019 has been used to mimic the Complainant’s official site.
5. Parties’ Contentions
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark ATLASSIAN registered, inter alia, in the USA including trade mark registration no. 5071788 for software and related services and has used the mark since 2002. It owns <atlassian.com>.
The Domain Name registered in 2019 is confusingly similar to the Complainant’s trade mark wholly incorporating it and is identical to the name of the Complainant’s charitable foundation formed in 2014.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant. The Domain Name has been used for a website that mimics the Complainant’s legitimate website, copying the Complainant’s images and text and purporting to offer the Complainant’s products. The site was being used for suspected phishing purposes. The Respondent has also posted fake news articles purporting to be related to the Complainant’s founder. This is not a bona fide offering of goods or series or a noncommercial legitimate or fair use.
The Domain Name has been used and has been registered in bad faith for illegitimate and fraudulent purposes intending to confuse Internet users looking for the Complainant for commercial gain. Phishing is bad faith per se. The Respondent’s use of the Domain Name shows actual knowledge of the Complainant and its business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name in this Complaint combines the Complainant’s ATLASSIAN mark (registered, inter alia, in the USA for software related goods and services with first use recorded as 2002), a hyphen, the dictionary term, ‘foundation’ and the generic Top-Level Domain “.com”.
The addition of a dictionary term, a hyphen and a gTLD does not negate confusing similarity between a domain name and a trade mark contained within it. The Complainant’s trade mark is still recognisable in the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
B. Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name.
The Domain Name has been used for commercial purposes which cannot be legitimate noncommercial fair use.
The Domain Name has been used for suspected phishing purposes and a site mimicking Complainant’s web site including the Complainant’s logo, images and text from the Complainant’s web site and purported to offer the Complainant’s products. There were also fake news articles posted about the Complainant’s founder. The Respondent’s conduct is deceptive, confusing and unlawful. As such it cannot amount to the bona fide offering of goods or services.
As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The use of the Complainant’s logo and material from the Complainant’s official web site used without permission on the web site previously attached to the Respondent’s Domain Name shows that the Respondent was aware of the Complainant and its rights and that the Respondent’s conduct is intentional.
The Domain Name has been used to disrupt the Complainant’s business and attract Internet users looking for the Complainant to the Respondent’s site which deliberately mimicked the Complainant’s official web site in order to confuse Internet users and represent that the Respondent’s site was connected to the Complainant when it was not for commercial gain and suspected phishing purposes.
As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under 4 (b)(iii) and (iv).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <atlassian-foundation.com> be transferred to the Complainant.
Date: October 24, 2019