Indeed, Inc. v. Hulmiho Ukolen
Claim Number: FA2203001986932
Complainant is Indeed, Inc. (“Complainant”), represented by Richard J. Groos of King & Spalding LLP, Texas, USA. Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indeedstaff.com>, registered with Gransy, s.r.o..
The undersigned 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 4, 2022; the Forum received payment on March 4, 2022.
On March 8, 2022, Gransy, s.r.o. confirmed by e-mail to the Forum that the <indeedstaff.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 9, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2022 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@indeedstaff.com. Also on March 9, 2022, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant provides the world’s largest job site, with over 200 million unique visitors every month. Complainant has rights in the INDEED trademark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., 4,282,756, registered Jan. 29, 2013). The <indeedstaff.com> domain name is confusingly similar to Complainant’s trademark because Respondent has incorporated the entire trademark and added the generic word “staff” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <indeedstaff.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s INDEED trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain resolves to a parked webpage. Finally, Complainant argues that it is unlikely that Respondent has any rights or legitimate interests in the domain name given that it fully incorporates Complainant’s famous INDEED trademark.
Respondent has registered and uses the <indeedstaff.com> domain name in bad faith because the disputed domain name resolves to a parked webpage.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner the following trademark registrations, registered with the United States Patent and Trademark Office (“USPTO”):
No. 4,282,756 INDEED (word), registered January 29, 2013 for goods in Intl Class 9;
No. 3,141,242 INDEED (word), registered September 12, 2006 for services in Intl Classes 35 and 42;
No. 3,984,951 INDEED (fig), registered June 28, 2011 for services in Intl Classes 35 and 42;
No. 5,576,632 INDEED ACADEMY (word), registered October 2, 2018 for services in Intl Classes 35, 41 and 42;
No. 5,302,296 INDEED JOB SPOTTER (word), registered October 3, 2017 for goods in Intl Class 9; and
No. 6,521,505 INDEED IQ (word), registered October 12, 2021 for services in Intl Class 42.
The Complainant is also owner the following European Union Trade Marks:
No 018443317 INDEED (word), registered August 3, 2021 for goods and services in Intl Classes 9, 35, 42;
No 005908843 INDEED (fig), registered December 29, 2008 for services in Intl Classes 35, 41, 42;
No 018061119 SEEN BY INDEED (word), registered October 1, 2019 for goods and services in Intl Classes 9, 35, 42;
No 018182169 INDEED IQ (word), registered May 26, 2020 for services in Intl Classes 35, 42;
No 018309226 INDEED FLEX (word), registered February 24, 2021 for goods and services in Intl Classes 9, 35, 38, 42;
No 018443320 INDEED (fig), registered August 3, 2021 for goods and services in Intl Classes 9, 35, 42.
The <indeedstaff.com> domain name was registered on December 31, 2021.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the INDEED trademark through its registrations with the United States Patent and Trademark Office, as well as the European Union Intellectual Property Office (e.g., USPTO Reg. 4,282,756, registered Jan. 29, 2013; EUIPO Reg. 018443317 INDEED, registered Aug. 3, 2021, etc). Registration with multiple trademark agencies is generally sufficient in demonstrating rights in a trademark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Complainant has provided copies of Trademark Certificates from both USPTO and EUIPO. Therefore, the Panel find that Complainant has rights in the trademark under Policy ¶ 4(a)(i).
The <indeedstaff.com> domain name is confusingly similar to Complainant’s trademark because the Respondent has incorporated the entire trademark and added a descriptive word and a gTLD. Domain names which incorporate the entire trademark are usually considered confusingly similar while adding a gTLD generally creates no distinction between a complainant’s trademark and a disputed domain name under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Further, adding a descriptive word does not create a sufficient distinction. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). In the present case, the addition of the word “staff” may only add to the confusing similarity as it references Complainant’s staffing services. Lastly, the confusing similarity may further be heightened given the fact that the disputed domain name is essentially identical to Complainant’s webpage <indeed.com>, where it hosts these staffing services. Therefore, the Panel find that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant claims that Respondent does not have rights or legitimate interests in the <indeedstaff.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s INDEED trademark. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, there is no evidence available in the WHOIS information to suggest that Respondent is known by <indeedstaff.com> and no information suggests that Complainant has authorized Respondent to use the INDEED trademark. Rather, the WHOIS information lists the registrant of the domain as “Hulmiho Ukolen.” Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <indeedstaff.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain resolves to a parked page. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Here, the resolving webpage hosts links to third-party sites which offer goods and services that Complainant states directly competes with its goods and services. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
Finally, Complainant argues that Respondent does not use the <indeedstaff.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name incorporates Complainant’s famous trademark. Past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the domain name incorporates a famous trademark which was previously used by the complainant. See Amazon Technologies, Inc. v. Hari Kishan / Amazon Web Solution, FA 1726257 (Forum May 15, 2017) (“It does not make it clear that there is no commercial connection with Complainant, whose use of the famous mark AMAZON, preceded Respondent’s use. This use is confusing. As such it cannot amount to the bona fide offering of goods and services.”). Here, Complainant argues that it is unlikely that Respondent has any legitimate interests or rights in the INDEED trademark given Complainant’s prior long-term use of the notorious trademark. Therefore, the Panel find that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant argues that Respondent has registered and uses the <indeedstaff.com> domain name in bad faith because it resolves to a parked page which may be evidence of bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Here, as discussed above, the disputed domain name resolves to a webpage which hosts links to sites which offer competing goods and services. Furthermore, Complaint believes that Respondent gains some commercial benefit from doing so. The Panel agrees with the Complainant’s conclusion, and find that Respondent has registered and uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indeedstaff.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: April 13, 2022
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