Indeed, Inc. v. Rina Lay
Claim Number: FA1609001693112
Complainant is Indeed, Inc. (“Complainant”), represented by Rebecca R. Younger of Pirkey Barber PLLC, Texas, USA. Respondent is Rina Lay (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lndeed.co>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 9, 2016; the Forum received payment on September 9, 2016.
On September 12, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <lndeed.co> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 September 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 2016 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@lndeed.co. Also on September 12, 2016, 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 October 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 it deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Operating under the name and mark INDEED, Complainant operates the world’s largest on-line job site, helping companies of all sizes to hire employees and helping job seekers to find employment.
Complainant holds a registration for the INDEED trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,282,756, registered January 29, 2013.
Respondent registered the domain name <lndeed.co> on or about May 21, 2016.
The domain name is confusingly similar to Complainant’s INDEED mark.
Complainant has not licensed or otherwise authorized Respondent to use its INDEED mark.
Respondent has not been commonly known by the domain name.
Respondent uses the domain name to attempt to pass itself off as Complainant and prominently displays Complainant’s INDEED mark on its website.
Respondent’s use of the domain name seeks to attract Internet users to its resolving website, for its commercial gain, by creating a likelihood of confusion as to the possibility of Complainant’s association with the domain name.
Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent had actual knowledge of Complainant’s mark when it registered the domain name.
Respondent uses the domain name conduct a phishing scheme by which it seeks fraudulently to acquire personal and business information from Complainant’s customers and potential customers.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is substantively confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the INDEED trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USTPO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in the METROPCS mark satisfying Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Canada). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
See also Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (finding a UDRP complainant’s USPTO registration sufficient under Policy ¶ 4(a)(i) notwithstanding that a respondent evidently resided on the Isle of Man).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <lndeed.co> domain name is confusingly similar to Complainant’s INDEED trademark. Although the domain name employs an upper case “L” as its first letter, it may be expected that Internet users will routinely substitute a lower case “L” (thus “l”) in entering the mark into their web browsers in an effort to search for Complainant’s official website. In this way Respondent employs a small linguistic trick to achieve confusing similarity. The domain name also contains the suffix “co,” the international country code for Columbia. These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. This is because neither the misspelling of the mark of another nor the addition to it of a country code Top Level Domain (“ccTLD”) is sufficient to distinguish a domain name from a UDRP complainant’s mark on which it is based. See, for example, Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Forum February 20, 2007) (finding a respondent’s <microssoft.com> domain name to be confusingly similar to a UDRP complainant’s MICROSOFT mark because they differ by only one letter, and “such a small alteration is insufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)”).
See also ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011):
Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD [generic Top Level Domain] has a distinctive function [in a domain name analysis under Policy ¶ 4(a)(i)].
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Complainant has not licensed or otherwise authorized Respondent to use its INDEED mark in any fashion, and that Respondent is not commonly known by the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Rina Lay,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum March 22, 2015):
WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the … domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <lndeed.co> domain name on its resolving website, for its commercial gain, to pass itself off as Complainant, thus to induce Internet users to access that website and there to enter their log-in information for Complainant’s website. This employment of the domain name is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in the domain name as therein provided. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (a panel there finding that a respondent’s attempt to pass itself of as a UDRP complainant was neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), where that respondent used a disputed domain name to present to Internet users a website that was nearly identical to that complainant’s website).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(c)(ii).
We are persuaded by the evidence that Respondent employs the contested <lndeed.co> domain name, which we have found is deceptively similar to Complainant’s INDEED trademark, to pass itself off as Complainant in order to attract Internet users for Respondent’s commercial gain. Under Policy ¶ 4(b)(iv) this stands as proof of Respondent’s bad faith in registering and using the domain name. See Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding bad faith in a respondent's registration and use of a disputed domain name to mislead Internet users under the guise of a UDRP complainant). See also Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent used a domain name to redirect Internet users to a website that imitated a UDRP complainant’s website thus fraudulently to acquire personal information from that complainant’s clients).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the INDEED mark when it registered the confusingly similar <lndeed.co> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See, for example, University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014):
[T]he Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the … mark in the … domain name to promote links related to the field … where Complainant’s mark is used.
The Panel therefore finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <lndeed.co> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 11, 2016
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