Indeed, Inc. v. Daniel Wood / dc motors & co
Claim Number: FA1807001798578
Complainant is Indeed, Inc. (“Complainant”), represented by Anne Krarup of Indeed, Inc., Texas, USA. Respondent is Daniel Wood / dc motors & co (“Respondent”), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <endeededjobs.com>, 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.
Scott R. Austin as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2018; the Forum received payment on July 25, 2018.
On July 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <endeededjobs.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 July 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2018 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@endeededjobs.com. Also, on July 27, 2018, 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 August 20, 2018.
Complainant’s Additional Submission was received and determined to be compliant with the Rules on August 23, 2018.
Respondent’s Additional Submission was received and determined to be compliant with the Rules on August 28, 2018.
On August 22, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Scott R. Austin 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 makes the following contentions:
1. Complainant provides the world’s largest job site, with over two hundred (200) million unique visitors every month in over sixty (60) countries around the world.
2. Since at least as early as 2004, Complainant has continuously offered its jobs search engine services in the United States under the INDEED mark.
3. Complainant has submitted registration evidence that it has registered the INDEED mark all over the world, including within the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,141,242, registered Sep. 12, 2006 for dissemination of advertising for others via the Internet in Class 35 and for computer services, namely, providing a search engine for obtaining job listings, resume postings, and other job search information via the Internet in Class 42 and providing a first use date for each class of November 29, 2004;
4. Complainant has invested substantial sums of money in developing and marketing its INDEED mark, which has been and continues to be widely publicized through advertising throughout the United States and around the world.
5. Complainant owns and uses the domain name <indeed.com> which it registered 2004 and through its website accessed through that its domain name prominently displays the INDEED mark to (i) direct Internet users to Complainant’s official website; (ii) advertise its job search services
6. Respondent’s <endeededjobs.com> disputed domain name is confusingly similar to Complainant’s INDEED mark because Respondent misspells the fully incorporated mark (replacing “I” with an “e”), while adding the letters “ed,” a generic term “jobs,” and a “.com” generic top-level domain (“gTLD”). These differences constitute only a minor variation of Complainant’s mark, and therefore cannot negate the confusing similarity between the disputed domain name and Complainant’s INDEED mark, especially given Complainant’s history of use of the INDEED Marks in connection with job-related products and services.
7. Respondent has no rights or legitimate interests in the <endeededjobs.com> domain name.
8. Respondent is not licensed or permitted to use Complainant’s INDEED mark and is not commonly known by the disputed domain name;
9. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
10. Respondent uses the disputed domain name to feature competing hyperlinks and advertisements.
11. Respondent attempts to attract, for commercial gain, users to the disputed domain name which features links and advertisements for Complainant’s competitors.
12. Respondent had actual knowledge of Complainant’s rights in the INDEED mark prior to registering the disputed domain name.
13. Respondent has registered and is using the <endeededjobs.com> domain name in bad faith.
B. Respondent makes the following contentions:
1. Respondent is part of a network of job websites that provides job listings to job seekers looking for a career.
2. Respondent’s <endeededjobs.com> domain name is not identical or confusingly similar to Complainant’s INDEED mark.
3. Respondent’s name is twelve (12) letters long, comprised of two words, pronounced differently, and is spelled dramatically different.
4. Respondent has rights and legitimate interests in the <endeededjobs.com> domain name.
5. There is no evidence in the WHOIS record to suggest Respondent is not commonly known by the disputed domain name as it is registered under a private registration.
6. Respondent uses the disputed domain name to provide a bona fide offering of services by assisting job seekers to find new employment.
7. Respondent did not register or use the <endeededjobs.com> domain name in bad faith.
8. Respondent has not attempted to sell or contact Complainant about selling the disputed domain name.
9. Respondent has also not prevented Complainant from registering a domain name incorporating the INDEED mark as Respondent’s “Endeeded Jobs” mark is not similar to Complainant’s mark.
10. Respondent has not attempted to disrupt Complainant’s business.
11. Respondent does not attempt to create an endorsement of its domain name by Complainant, but only redirects users to the <jobs4days.com> domain name, which is affiliated with Respondent.
C. Complainant’s Additional Submission – A Reply to Respondent’s Contentions
1. A mere addition to or a minor misspelling of Complainant's trademark does not create a new mark in which Respondent has legitimate rights, especially where, as here, (i) the subject domain contains a generic term relevant to the goods and services offered under Complainant’s trademarks, and (ii) the marks are both visually and phonetically similar,
with only slight modifications.
2. Complainant reiterates that Respondent has not at any time been commonly known by the disputed domain name nor is Complainant aware of any trademarks identical or similar to the disputed domain name in which Respondent may have rights.
3. As a result of this proceeding, Respondent’s WHOIS information was unmasked, and nothing contained in this information indicates that Respondent is commonly known by “Endeeded Jobs,” “endeededjobs.com” or a similar name in which Respondent may have rights.
4. Complainant refutes Respondent’s assertions that its use of the disputed domain name is bona fide.
5. Complainant reiterates its positions that Respondent is utilizing the disputed domain name to divert Indeed customers and potential
customers to Respondent’s website, where the INDEED marks appear and are used alongside hyperlinks and sponsored ads that resolve to job listings from Complainant’s competitors.
6. Respondent is receiving click-through compensation, which is not bona fide, legitimate, noncommercial or fair use of the disputed domain name.
7. Complainant reiterates its position that Respondent had actual knowledge of Complainant’s mark before registration of the disputed domain name which is being used in bad faith.
D. Respondent’s Additional Submission – A Reply to Complainant’s Additional Submission
1. Respondent reiterates that they refute that the name is similar, and Complainant has no proof that they are similar or that users will think they are similar.
2. It is wrong for Complainant to unmask Respondent’s WHOIS directory.
3. Respondent has proof of receipt that it purchased the disputed domain name in good faith.
4. Respondent denies that it utilizes the subject domain to divert Complainant’s customers
5. Complainant uses sponsored ads to other job sites.
6. Respondent does not receive click thru compensation on most of its offers on its website
7. Complainant’s mark is not famous.
8. No one has gone to Respondent’s site expecting it to be that of Complainant.
9. If Complainant’s users think the disputed domain name is the same as Complainant’s mark, that means they cannot spell, which may be indicative of Complainant’s users, but not Respondent’s users.
Complainant owns and has established rights in the INDEED mark through evidence it submitted of trademark registrations in the United States and internationally in jurisdictions around the world.
Respondent’s <endeededjobs.com> disputed domain name is confusingly similar to Complainant’s INDEED mark because it is comprised of Complainant’s INDEED mark in its entirety, replacing the initial “I” with an “e” to sustain the phonetic equivalent of Complainant’s mark, adding the inconsequential letters ‘”ed” and the generic term “job” which relates to Complainant’s services identified by Complainant’s mark and adds the .”com” gTLD to Complainant’s mark, which differences are inconsequential to overcome a finding of confusing similarity.
Respondent is not commonly known by the disputed domain name or by Complainant’s INDEED mark, nor is Respondent authorized by Complainant to use its INDEED mark.
Respondent has not used the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.
Respondent registered the <endeededjobs.com> disputed domain name on March 29, 2018, well after Complainant established rights in its INDEED mark.
Complainant’s INDEED mark was registered and well known in the U.S. where Respondent is located, as well as many Canada and the European Union well before Respondent registered its disputed domain name on March 29, 2018.
Respondent registered and is using the disputed domain name <endeededjobs.com> 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 trademark rights in its INDEED mark through its U.S .trademark registrations with the United Stated Patent & Trademark Office (“USPTO”). Registering a mark with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”); Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Complainant submitted as evidence in its Complaint Annexes copies of its US Trademark Registrations for the INDEED mark, (e.g., Reg. No. 3,141,242, registered Sep. 12, 2006 for dissemination of advertising for others via the Internet in Class 35 and for computer services, namely, providing a search engine for obtaining job listings, resume postings, and other job search information via the Internet in Class 42 and providing a first use date for each class of November 29, 2004)). See Amend. Compl. Annex Ex. B. The Panel finds, therefore, that Complainant has sufficiently demonstrated has established trademark rights in the INDEED mark as required under Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <endeededjobs.com> domain name is confusingly similar to Complainant’s INDEED mark. Specifically, Complainant characterizes the disputed domain name as comprised of the following components to render it confusingly similar to Complainant’s registered mark. First, Complainant argues, the dominant and leading portion of the disputed domain, namely “endeed” represents an intentionally deceptive misspelling and the phonetic equivalent of Complainant’s mark INDEED. Then follows the addition of a repeat of the final two letters of the mark, “ed”, then the generic term “jobs”, which term defines Complainant’s services identified by its mark, and finally the generic Top-Level Domain or gTLD “.com”.
The Panel finds the disputed domain confusingly similar to Complainant’s mark INDEED. First, misspelling a complainant’s mark, either by adding or deleting letters, may not sufficiently mitigate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (Changing a single letter is minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).). More importantly prior panels have recognized that the changing a single letter that produces the phonetic equivalent of the complainant’s mark may weigh in favor of finding confusing similarity under the Policy. Pfizer Inc. v. Phizer’s Antiques and Robert Phizer, D2002-0410 (WIPO July 3, 2002) (“[M]erely substituting "f" in the mark "PFIZER" with "h" to yield the contested domain name, that is phonetically equivalent to the mark, is a change that is so de minimus that the only purpose…is to cause and opportunistically exploit inevitable user confusion.”). Prior panels have also found that adding letters, generic terms, or a gTLD may still be insufficient to differentiate the disputed domain name from the incorporated mark therein. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).
Most importantly, the Panel notes that in this case the generic term added to the misspelled version of Complainant’s mark describes the services Complainant provides: jobs. Prior panels have emphasized that the addition of this form of generic term does not negate confusing similarity with Complainant’s mark but exacerbates it. See, TPI Holdings, Inc. v. Carmen Armengol D2009-0361 (WIPO May 19, 2009) (Addition of generic term “transactions” to mark AUTO-TRADER in disputed domain “does not negate the confusing similarity of the Domain Name to Complainant's AUTO TRADER Mark. On the contrary, the addition of the word “transactions” to the Domain Name increases the confusing similarity, as Complainant's Mark is used in connection with advertising for automobile sales transactions.”); Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., D2001-0110 (WIPO April 2, 2001) (Addition to complainant’s mark of generic term "condoms" does not avoid confusion, but in fact is more likely to increase confusion, because term describes Complainant's products).
Finally, it is well established that the generic top-level domain must be excluded from consideration as being a generic or functional component of the Domain Name. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”); BHP Billiton Innovation Pty Ltd, BMA Alliance Coal Operations Pty Ltd v. Cameron Jackson, D2008-1338 (WIPO Nov. 24, 2008); Belo Corp. v. George Latimer, D2002-0329 (WIPO May 16, 2002)
After weighing the relevant aspects of the disputed domain name under the foregoing decisions, the Panel finds that Complainant has established that the <endeededjobs.com> disputed domain name is confusingly similar to a mark in which the Complainant has established trademark rights and, therefore, has met its burden under Policy ¶ 4(a)(i).
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), before 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 contends Respondent has no rights or legitimate interests in the <endeededjobs.com> domain name. Complainant claims Respondent is not licensed or permitted to use the INDEED mark and is not commonly known by the disputed domain name. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Complainant has submitted WHOIS information as evidence in support of its Amended Complaint. See Amend. Compl. Annex Ex. C. The Panel notes the WHOIS information submitted, confirmed by Registrar of record GoDaddy.com, LLC, identifies the registrant for the disputed domain name as Respondent “Daniel Wood” and the Registrant Organization as Respondent “dc motors & co,” and Respondent has submitted no evidence to refute Complainant’s contention that Respondent is not authorized to use Complainant’s INDEED mark. As such, the Panel finds Respondent is not authorized to use Complainant’s mark and Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next claims that Respondent is not using the <endeededjobs.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant contends and has submitted evidence that Respondent uses the disputed domain name to generate click-through revenue from hyperlinks and advertisements for Complainant’s competitors. See Amend. Compl. Annex Ex. D. Use of a disputed domain name to feature competing hyperlinks/advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). 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).”); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides a screenshot of the disputed domain name’s resolving website which contains links and advertisements related to job postings. See Amend. Compl. Annex Ex. D. The Panel finds, therefore, that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant contends Respondent registered and uses the <endeededjobs.com> domain name in bad faith. Specifically, Complainant contends Respondent attempts to attract, for commercial gain, users to the disputed domain name which features competing hyperlinks/advertisements. Using a confusingly similar domain name to generate click-through revenue from competing hyperlinks may demonstrate bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”); Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1612750 (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).”). see also Homer TLC, Inc. v. Unitedeurope Consulting, FA 1110103 (Forum Feb. 8, 2008) (“Respondent’s use of the disputed domain name to advertise links to third-party competitors is evidence of registration and use in bad faith under Policy ¶ 4(b)(iii)”). Complainant has provided a screenshot of the disputed domain name’s resolving website which features links related to job search and posting websites. See Amend. Compl Annex. Ex. D. The Panel finds, therefore, that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant further claims that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name.
Prior Panels have found that actual knowledge does adequately evince 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).
Complainant bases its claim in part on the fact that it established rights in its INDEED Mark for over a decade before the Respondent registered the <endeededjobs.com> disputed domain name. Complainant also characterizes its mark as famous, which Respondent in its additional submission disputes. Although the level of fame of a mark may be difficult to establish with certainty in a summary proceeding under the UDRP without the benefit of surveys or expert witnesses, the Panel notes that Complainant has submitted evidence of multiple registrations of its mark in the U.S, Canada and the European Union. According to Complainant’s website information submitted, which includes reference to a statistic of “9.8 jobs added per second globally”, Complainant appears to operate on a global basis. The Panel finds based on the evidence submitted that Complainant’s mark is at a minimum, distinctive and well-known. See Amend. Compl Annex. Ex. A.
In Complainant’s additional submission, which like Respondent’s additional submission the Panel has considered in reaching its decision, Complainant points out that “indeed jobs” appears on the home page of Respondent’s website, as additional evidence that Respondent had actual knowledge of Complainant’s rights in its INDEED mark prior to Respondent’s registration of the disputed domain name, which Respondent does not dispute. See Amend. Compl Annex. Ex. D., p. 3. See Bang & Olufsen v. Unasi Inc., D2005-0728 (WIPO Sept. 7, 2005) (finding bad faith where Respondent was using the disputed domain name as a “web portal with links to different products… competing with those of Complainant” knowing “that Internet users recognize Complainant’s mark as identifying Complainant’s business”).
Complainant has provided sufficient evidence for the Panel to agree with Complainant and find that Respondent did have actual knowledge of Complainant’s well-known mark when it registered the disputed domain name, which would further support bad faith. The Panel finds the disputed domain name was registered and is being used in bad faith and Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <endeededjobs.com> domain name be TRANSFERRED from Respondent to Complainant.
Scott R. Austin, Panelist
Dated: September 3, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page