Indeed, Inc. v. Pramod Kumar / Pixinfotech
Claim Number: FA2003001888281
Complainant is Indeed, Inc. (“Complainant”), represented by Ryan Masters of Indeed, Inc., Texas, USA. Respondent is Pramod Kumar / Pixinfotech (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indeedhr.com>, registered with GoDaddy.com, LLC.
The undersigned, Daniel B. Banks, Jr., certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the Forum electronically on March 13, 2020; the Forum received payment on March 13, 2020.
On March 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <indeedhr.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@indeedhr.com. Also on March 17, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 10, 2020.
On May 16, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Daniel B. Banks, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant provides the world’s largest job website, with over 200 million unique visitors every month from over 60 different countries. Complainant has rights in the INDEED mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,141,242, registered Sep. 12, 2006). Respondent’s <indeedhr.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely added the generic term “HR” which stands for “Human Resources.”
Respondents has no rights or legitimate interests in the <indeedhr.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is offering a competing service.
Respondent registered and used the <indeedhr.com> domain name in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s service by offering a similar service. Additionally, Respondent is attempting to attract Internet users with a competing service. Finally, Respondent had knowledge of Complainant’s rights in the INDEED mark at the time of registration.
B. Respondent
Respondent operates a company in India that offers human resource solutions to clients. Respondent chose the word “indeed” in order to place emphasis on the human resource solutions offered by Respondent. "Indeed " is a dictionary word and is descriptive. It was not chosen because of Complainant's goodwill. Respondent’s <indeedhr.com> domain name is not confusingly similar as the term “hr” distinguishes Respondent’s domain name from Complainant’s mark.
Respondent has rights and legitimate interest in the disputed domain name, as it reflects its trade name “Indeed HR Solutions”. Respondent’s domain name cannot be confused with Complainant’s website as the “look and feel” are different between the two sites. Additionally, Respondent’s domain name is not interactive, unlike Complainant’s website.
Respondent did not register or use the <indeedhr.com> domain name in bad faith. Respondent used the disputed domain name in connection with Respondent’s business that was not disrupting to Complainant. Complainant waited 10 months before initiating this dispute and is barred by the doctrine of laches.
1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2. The Respondent has no rights or legitimate interests in respect of the domain name.
3. The domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the INDEED mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,141,242, registered Sep. 12, 2006). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the Complainant has rights in the INDEED mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <indeedhr.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely adding the generic term “HR” which stands for “Human Resources.” Although not argued by Complainant, Respondent also adds the “.com” generic top-level domain name (”gTLD”). Adding a generic word and a gTLD to an otherwise recognizable mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). Therefore, this Panel finds that Respondent’s <indeedhr.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <indeedhr.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “Pixinfotech” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <indeedhr.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <indeedhr.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is offering a competing service. Using a disputed domain name to offer a service that directly competes with a complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of the <indeedhr.com> domain name’s resolving webpage, which offers personnel searches and human resource services that are similar to Complainant’s service. Therefore, the Panel finds Respondent fails to use the <indeedhr.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues Respondent registered and used the <indeedhr.com> domain name in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain and to disrupt Complainant’s business by offering a competing service. Registering a disputed domain name to offer a competing service that disrupts Internet users seeking a complainant and attracts Internet users for financial gain may be evidence of bad faith under Policy ¶ 4(b)(iii) and/or (iv). See Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). Here, Complainant provides a screenshot of the <indeedhr.com> domain name’s resolving webpage, which offers personnel searches and human resource services that are similar to Complainant’s service. Therefore, the Panel finds that Respondent registered and used the <indeedhr.com> domain name in bad faith under Policy ¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the INDEED mark at the time of registering the <indeedhr.com> domain name. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). This Panel finds it difficult to believe that Respondent chose the domain name for any other reason than to use the goodwill of Complainant's famous mark. Although it is true that "Indeed" is a dictionary term, Complainant has been using this mark world-wide since 2004 in connection with its job website. This panel elects to find that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations, along with the fact that Respondent uses the disputed domain name for a similar service as offered under Complainant’s mark. As such, the Panel finds that Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).
Doctrine of Laches
The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly elects to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED .
Accordingly, it is Ordered that the <indeedhr.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: April 20, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page