Indeed, Inc. v. rohan sharma / reddy solution
Claim Number: FA2102001931095
Complainant is Indeed, Inc. (“Complainant”), represented by Ryan Masters of Indeed, Inc., Texas, USA. Respondent is rohan sharma / reddy solution (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <indeedonline.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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 5, 2021; the Forum received payment on February 5, 2021.
On February 8, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <indeedonline.co> domain name is registered with GoDaddy.com, LLC and that the first named Respondent is the current registrant and the second named Respondent is the registrant organization of the disputed domain name.
GoDaddy.com, LLC has verified that Respondents are bound by the GoDaddy.com, LLC registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 2021 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@indeedonline.co. Also on February 12, 2021, 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 Respondents, the Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 Respondents to Complainant.
A. Complainant
Complainant claims ownership of, and rights in, the INDEED trademark and service mark, established through its ownership of its United States trademark and service mark registrations for which it has provided copies of the registration certificates described below as well as other trademark registrations, together with the goodwill that it has acquired through its extensive use of the mark in the provision of its employment related services. Complainant claims that it is the world’s largest “job site” and its website at <www.indeed.com> has over 200 million unique visitors every month from over 60 different countries.
Complainant alleges that the disputed domain name is confusingly similar to its INDEED trademark and service mark as it incorporates Complainant’s mark in its entirety, merely adding the generic term “Online”
Complainant submits that the addition of the word “online” is irrelevant and it cannot distinguish Respondent’s domain name from Complainant’s trademarks, especially given Complainant’s long standing use of the INDEED mark in the connection with career, job, and employment-related services. Complainant cites the decision in Sutton Group Fin. Servs. Ltd. v. Rodger , D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
Complainant adds that the presence of the “.co” suffix is irrelevant is excluded from consideration for the purposes of Policy ¶ 4(a)(i) analysis.
Complainant submits that Respondents have no rights or legitimate interests in the disputed domain name arguing that there is no evidence in the WHOIS information to suggest that Respondents are commonly known by the disputed domain name.
Additionally, Complainant asserts that it has not licensed or otherwise permitted Respondents to use its famous INDEED marks, or any other mark owned by Complainant.
Complainant further alleges that Respondents have not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Referring to a screenshot of the website to which the disputed domain name resolves which is annexed to the Complaint,
Complainant contends that Respondents use the disputed domain name <indeedonline.co>, which is confusingly similar to Complainant’s INDEED marks, to divert users to a website whereupon Respondents offer job search services in direct competition with Complainant. Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Complainant adds that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant further alleges that the disputed domain name was registered and is being used in bad faith.
As illustrated by the screenshot of the website to which the disputed domain name resolves, Respondents are using the disputed domain name, which is confusingly similar to Complainant’s INDEED mark, to direct Internet users to Respondent’s website, whereupon Respondent offers and advertises goods and services identical in nature to those offered by Complainant. Complainant submits that such use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that because it had rights in its famous INDEED marks for over a decade before Respondents registered the <indeedonline.co> disputed domain name, it should be found that Respondents had actual knowledge of Complainant’s rights prior to registration due to the fame of the INDEED marks. See Wynn Resorts Holdings, LLC v. Henry Martinez / HRM3 , Case No. FA 1683318 (Forum August 19, 2016) (finding “due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights.”); see also Diners Club International Ltd. v. N.A. a/k/a Amer Bakri , Case No. 1079846 (Forum November 1, 2007) (finding bad faith, in part, upon a recognition of a mark’s global fame and the corresponding notice such fame provides to a would-be registrant).
Moreover, Complainant argues that in light of the obvious link between Complainant and the services advertised on Respondents’ subject website i.e. job placement services competing with the services offered by Complainant under the INDEED mark, it is clear that Respondent registered the subject domain with Complainant’s mark in mind.
Complainant contends that under the Policy, bad faith use and registration may be found where, as in casu, the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor.
Complainant adds that Respondents’ bad faith is further evidenced by the fact that they own no trademark or other intellectual property rights in the disputed domain name; that the disputed domain name does not consist of the legal name of or a name commonly used to identify Respondents; that Respondents have not used the disputed domain name in connection with the bona fide offering of any goods or services; that Respondents have made no bona fide, noncommercial or fair use of Complainant’s marks in a site accessible under the domain name; and that the disputed domain name is confusingly similar to the highly distinctive INDEED mark.
Complainant concludes, alleging that the above-described circumstances indicate that Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ website, in violation of Policy ¶ 4(b)(iv).
B. Respondent
Respondents failed to submit a Response in this proceeding.
Complainant provides employment related services to employers and jobseekers and is the owner of the following United States trademark and service mark registrations for the INDEED mark:
· United States registered service mark, INDEED, registration number 3,14,1 242, registered on the Principal Register on September 12, 2006 for services in international classes 35 and 42;
· United States registered service mark INDEED (Design), registration number 3,984,951, registered on the Principal Register on June 28, 2011 for services in international classes 35 and 42;
· United States registered trademark INDEED, registration number 4, 282,756, registered on the Principal Register on January 9, 2013 for goods in international class 9
The Registrar has verified that the disputed domain name <indeedonline.co> was registered on December 5, 2020.
The disputed domain name resolves to a website which purports to offer employment related and career advisory services. The website also contains the logos or trademarks of a number of third parties.
There is no information available about Respondents except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in response to the request by the Forum for verification of the registration details of the disputed domain name. The WhoIs shows that Respondents availed of a privacy service to conceal their identities on the published WhoIs and the response of the Registrar to the Forum’s verification request confirmed that first named Respondent is the registrant and the second named Respondent is the registrant organization.
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 Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondents have 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 Respondents' 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”).
Complainant has provided clear, convincing and uncontested evidence of its ownership of, and rights in, the INDEED trademark and service mark, established through its ownership of its trademark and service mark registrations described above and at common law through the extensive use of the mark in its human resources business online with substantial monthly traffic on its website at <www.indeed.com> amounting to 200 million unique visitors from over 60 different countries.
The disputed domain name consists of Complainant’s INDEED mark in its entirety in combination with the word “inline” and the country code Generic Top Level Domain (“ccTLD”) extension <.co>.
Complainant’s mark is the initial, dominant and only distinctive element in the disputed domain name . The element “online” is descriptive, having no distinctive character and in the context of the present dispute is a reference to the manner in which Complainant carries on its business.
This Panel does not necessarily accept Complainant’s submission that <.co> ccTLD extension should be excluded from consideration when comparing a trademark and a domain name at issue. In certain circumstances a Top-Level Domain extension may be an important consideration for the purposes of comparison under Policy ¶ 4(a)(i). The Panel accepts nonetheless, that, in the present case, Internet users are likely to perceive a domain extension as being merely a technical element, required for a domain name and of no significance.
This Panel accepts Complainant’s submission that in the present case the ccTLD extension adds no distinctive character
This Panel finds therefore that the disputed domain name is confusingly similar to the INDEED trademark and service mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· there is no evidence in the WHOIS information to suggest that Respondents are commonly known by the disputed domain name;
· Complainant has not licensed or otherwise permitted Respondents to use its INDEED marks, or any other mark owned by Complainant;
· Respondents have not used, nor made any demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;
· the screenshot of the website to which the disputed domain name resolves, which is exhibited as evidence in an annex to the Complaint, illustrates that Respondent uses the disputed domain name <indeedonline.co>, which is confusingly similar to Complainant’s INDEED marks, to divert users to a website whereupon Respondents offer job search services in direct competition with Complainant; and
· such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name.
It is well established that onus rests on Complainant to make out a prima facie case that Respondents have no rights or legitimate interests in a disputed domain name and thereupon the burden of production shifts to Respondents to prove such rights or interests. Respondents have failed to discharge the burden of production and therefore this Panel must find that Respondents have no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The uncontested evidence shows that on the balance of probabilities that the disputed domain name was registered and is being used in bad faith.
The evidence shows that Complainant’s rights, reputation, and goodwill in the INDEED mark were well established long before the disputed domain name was chosen and registered.
The combination of Complainant’s mark with the word “online” is a direct reference to Complainant and its manner of doing business. It is improbable that the registrant of the disputed domain name was unaware of Complainant, its name and mark when the disputed domain name was chosen and registered.
In fact, the evidence shows that on the balance of probabilities the disputed domain name was chosen and registered in bad faith with Complainant, its business, reputation, and INDEED mark, in mind in order to create confusion among, and mislead and misdirect Internet users and divert Internet traffic.
This finding is supported by the screenshot of the website to which the disputed domain name resolves, which shows that Respondents are using the disputed domain name as the address of a website, which purports to offers and advertise good and services identical in nature to those offered by Complainant.
Additionally, Respondent’s website contains logos of a number of famous third-party enterprises, who have no apparent relationship with Complainant or the provision of employment services.
This Panel finds therefore that Respondents are using the disputed domain name in bad faith in an intentional attempt to attract, for commercial gain, Internet users to the Respondents’ website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Complainants’ website.
As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <indeedonline.co> domain name be TRANSFERRED from Respondents to Complainant.
James Bridgeman SC
Panelist
Dated: March 8, 2021
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