Indeed Inc. v. Dinesh Sarang / Indeed / josh mathews
Claim Number: FA1709001749207
Complainant is Indeed Inc. (“Complainant”), represented by Rebecca R. McCurry of Pirkey Barber PLLC, Texas, USA. Respondent is Dinesh Sarang / Indeed / josh mathews (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <indeedjobs.live> and <indeedjob.co>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 15, 2017; the Forum received payment on September 15, 2017.
On September 19, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <indeedjobs.live> and <indeedjob.co> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 September 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2017 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@indeedjobs.live, postmaster@indeedjob.co. Also on September 28, 2017, 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 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Indeed, Inc., provides the world’s largest job site, which helps
companies of all sizes hire employees and helps job seekers find employment opportunities. Complainant uses its INDEED mark to promote its goods and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,141,242, registered Sep. 12, 2006). See Compl. Ex. E. Respondent’s <indeedjobs.live> and <indeedjob.co> are confusingly similar to Complainant’s mark because each appends a descriptive term and a generic top-level domain (“gTLD”) to the fully incorporated INDEED mark.
Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its mark in any fashion, and Respondent is not commonly known by either of the infringing domain names. Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses both of the domain names to resolve to websites that imitate Complainant for the purpose of deceiving job seekers into purchasing services that are never provided. See Compl. Ex. B & H (representative printouts from the websites reachable through the disputed domain names; online complaints from users regarding the domain names). Further, Respondent uses the domain names in connection with the same job and career search services that Complainant offers. Id.
Respondent registered and is using the domain names in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website, by offering competing services and scamming Internet users into paying for services never rendered. See Compl. Ex. H. Respondent also had actual knowledge of Complainant’s rights in the mark due to the fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates the world’s largest job site which helps companies of all sizes hire employees and helps job seekers find employment opportunities.
2. Complainant has established its registered trademark rights in the INDEED mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,141,242, registered Sep. 12, 2006).
3. Respondent registered the <indeedjobs.live> domain name on February 22, 2017 and the <indeedjob.co> domain name on June 28, 2017.
4. Respondent uses both of the domain names to resolve to websites that imitate Complainant for the purpose of offering competing services and deceiving job seekers into purchasing services that are never provided.
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 and inferences set forth 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) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that while the registrant’s contact information differs for these domains, the formats of the websites hosted at <indeedjobs.live> and <indeedjob.co> are almost identical, such as the background images, the “Home,” “About Us,” “Career Services,” and “Login” tabs, and the language used under each tab. Moreover, both of the websites resolve to the same IP Address (103.21.59.168) and are using the same website host, P.d.r Solutions Fzc. By reason of the above matters and having regard to all the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Accordingly the Complaint has been validly filed and may proceed in the usual manner.
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s INDEED mark. Complainant submits that Respondent’s <indeedjobs.live> and <indeedjob.co> domain names are confusingly similar to Complainant’s mark because each appends a descriptive term “job” or “jobs,” and a gTLD “.live” or “.co” to the fully incorporated INDEED mark. The addition of descriptive terms and gTLDs do not negate a finding of confusing similarity, especially where the descriptive word describes the complainant trademark owner’s goods and services. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Express Co. v. Buy Now, FA 318783 (Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds non-distinctive, descriptive and generic terms, some of which describe Complainant’s business.”). As such the Panel finds that Respondent’s <indeedjobs.live> and <indeedjob.co> domain names are confusingly similar to Complainant’s INDEED mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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); see also 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s INDEED mark and has used it in its entirety in the domain names, adding only the generic words “jobs” and “job”;
(b) Respondent registered the <indeedjobs.live> domain name on February 22, 2017 and the <indeedjob.co> domain name on June 28, 2017;
(c) Respondent uses both of the domain names to resolve to websites that imitate Complainant for the purpose of offering competing services and deceiving job seekers into purchasing services that are never provided;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its INDEED mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of lacking of rights and legitimate interests. 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name especially, where a privacy service has been engaged. 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). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record for the <indeedjob.co> domain name lists “Registration Private”, as the registrant prior to the lifting of the privacy services, and “josh matthews” as the registrant after the services were lifted. See Compl. Ex. C. The WHOIS information of record for the <indeedjobs.live> domain name lists “Dinesh Sarang” as the registrant. See Compl. Ex. F. Therefore, the Panel finds that Respondent is not commonly known by either domain name under Policy ¶ 4(c)(ii);
(f) Complainant further argues that Respondent is not using either domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims that Respondent uses the domain names to resolve to websites that imitate Complainant for the purpose of deceiving job seekers into purchasing services that are never provided. Use of a confusingly similar domain name to scam Internet users into purchasing services that will never be rendered is generally not considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). Complainant captured a screenshot of an Internet forum where users wrote complaints about the allegedly fraudulent scam and provided detailed accounts of the user’s experience. See Compl. Ex. H. Complainant also provided email correspondence between Complainant’s representative and the <indeedjobs.live> website host, whereby the host ultimately suspended the activity on the <indeedjobs.live> domain as it violated the host’s policies against fraudulent use. See Compl. Ex. I. Therefore, the Panel finds that Respondent engages in a phishing scheme and thus does not use the disputed domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use;
(g) Complainant also contends that Respondent uses the domain names to promote services that compete with Complainant’s job search business. Use of a confusingly similar domain name to offer competing services is generally not considered to be a bona fide offering of goods or services or legitimate noncommercial or fair use. 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).”). Screenshots of the both domain names’ resolving websites show that Respondent is using the domain names to offer competing career services such as resume writing and job postings. See Compl. Ex. B. Therefore, the Panel concludes that Respondent does not use the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has registered and is using both of the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the INDEED mark by passing itself off as Complainant to scam Internet users into paying for services that will not be rendered, or alternatively, that offer competing services. Use of a disputed domain name to benefit commercially by creating confusion as to the source, sponsorship, affiliation or endorsement of the content therein can constitute bad faith under Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provided screenshot evidence of the resolving websites and personal accounts from Internet users which both support a finding that Respondent used the domain names to scam Internet users out of money by creating confusion as to Respondent’s affiliation with Complainant. See Compl. Ex. H-I. Therefore, the Panel finds that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent engages in a phishing scheme to obtain money from Internet users by purporting to offer employment opportunities. Using a confusingly similar domain name to obtain money fraudulently can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant provides evidence of this fraudulent use for the <indeedjobs.live>, and alleges the same fraudulent scheme for the other domain name as well. See Compl. Ex. B & H. Accordingly, the Panel concludes that Complainant has sufficiently shown Respondent’s bad faith within the meaning of Policy ¶ 4(a)(iii).
Finally, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the INDEED mark due to the fame of the mark. Actual knowledge of a complainant's rights in the mark prior to registering a disputed domain name can be adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent can be found to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s INDEED mark has created significant good will and consumer recognition around the world and was first used in commerce by Complainant in 2004. See Compl. Ex. E. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <indeedjobs.live> and <indeedjob.co> domain names were registered and subsequently used.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the INDEED mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indeedjobs.live> and <indeedjob.co> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 24, 2017
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