Indeed, Inc. v. priyanka meena
Claim Number: FA1901001824187
Complainant is Indeed, Inc. (“Complainant”), represented by Justin Haddock of Indeed, Inc., Texas, USA. Respondent is priyanka meena (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indeedjobboard.com>, registered with BigRock Solutions Ltd.
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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 8, 2019; the Forum received payment on January 8, 2019.
On January 8, 2019, BigRock Solutions Ltd confirmed by e-mail to the Forum that the <indeedjobboard.com> domain name is registered with BigRock Solutions Ltd and that Respondent is the current registrant of the name. BigRock Solutions Ltd has verified that Respondent is bound by the BigRock Solutions Ltd 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 January 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2019 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@indeedjobboard.com. Also on January 9, 2019, 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 January 22, 2019.
On January 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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 issues 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Indeed, Inc., provides the world’s largest job site with over 200 million unique visitors every month from over 60 different countries. Complainant has rights in the INDEED mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,141,242, registered Sep. 12, 2006). See Compl. Ex. C.
Respondent’s <indeedjobboard.com> domain name is confusingly similar to Complainant’s INDEED mark, as the domain name incorporates the entire mark merely tacking on the generic term “job board” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <indeedjobboard.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the INDEED mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent mimics Complainant’s webpage and offers identical goods and services for commercial gain.
Respondent registered and is using the <indeedjobboard.com> domain name in bad faith. Respondent attempts to commercially gain by imitating Complainant (in particular by using Complainant’s logo for a website that also offers job searches). Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.
B. Respondent
Respondent registered the disputed domain name on August 11, 2018. Respondent offers its apologies and agrees, in its Response, to transfer the disputed domain name.
The disputed domain name <indeedjobboard.com> was created on 11 August 2018.
Complainant owns several trademarks containing the word “INDEED”. The dates of registration of Complainant’s INDEED marks predate the registration of the disputed domain name.
Complainants INDEED trademarks are cover various services, including job searches, resume postings, and related services.
The disputed domain name <indeedjobboard.com> incorporates Complainant’s INDEED marks, plus the term “jobboard” and the gTLD “.com”.
The disputed domain name leads to a website that seems to compete with Complainant’s website in the sense that it also offers job searching services. This website also reproduces Complainant’s INDEED logo which has been registered by Complainant with the USPTO as a service mark for job searching services.
After receipt of the Complaint, Respondent informed the Forum of its willingness to resolve the issue. Respondent informed the Forum that it was “very sorry” and that it wanted to transfer the domain name to Complainant.
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.
Preliminary Issue: Consent to Transfer
Respondent, in its Response, consented to transfer the <indeedjobboard.com> domain name to Complainant. However, after the initiation of this domain name proceeding, BigRock Solutions Ltd placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
As a reaction to Respondent’s offer to the transfer the disputed domain name, Complainant informed Respondent that it is “inclined to allow the proceeding to continue”.
The Panel considers that there is no written notice of a request by both Parties to suspend the proceedings under Section 17(a) of the Rules.
The Panel further considers that it is not “unnecessary or impossible to continue the administrative proceeding” in the sense of Section 17(b) of the Rules.
The Panel also considers that the Parties may, under Section 6 (b)(i) of the Forum Supplemental Rules jointly request a stay, provided that no Panel has been appointed yet and that both Parties have agreed to the stay in writing. The Panel notes that the conditions for a stay under the Supplemental Rules have not been met.
The Panel sees no reason to forego the traditional UDRP analysis.
Therefore, in accordance with Sections 10(a) and 15(a) of the Rules, the Panel decides as follows:
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant claims rights in the INDEED mark based upon registration of the mark with several intellectual property offices, including the EUIPO and the USPTO. Complainant provided copies of its trademark registrations for the INDEED mark. These marks cover, inter alia, services related to job searches.
Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant provides copies of its USPTO registrations for the INDEED mark (e.g. Reg. No. 3,141,242, registered Sep. 12, 2006). See Compl. Ex. C.
The Panel holds that Complainant’s registration of the INDEED mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
The Panel finds that Respondent’s <indeedjobboard.com> domain name is confusingly similar to Complainant’s INDEED marks, as the name includes the entire mark plus the generic term “job board” and the “.com” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc. v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel notes that Respondent did not contest the claims of Complainant and stated: “I am very sorry for purchasing this domain and want it returned to IndeedInc immediately, please.”
Respondent included the entire INDEED trademark of Complainant in the disputed domain name plus the generic term “jobboard” and the “.com” gTLD. The generic term “jobboard” and the “.com” gTLD can be disregarded when assessing the confusing similarity of the disputed domain name with the previous signs. Accordingly, the Panel finds that Respondent’s <indeedjobboard.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
In numerous previous cases, it has been decided that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and that subsequently the burden shifts to the 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 argues that Respondent has no rights or legitimate interests in the <indeedjobboard.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the INDEED mark in any way.
The Panel notes that Respondent does not deny that Respondent is not commonly known by the disputed domain name, and that Respondent is not authorized by Complainant to use its INDEED mark in any way.
The pertinent WHOIS information identifies the registrant of the domain name only as “Priyanka Meena,” which does not resemble the domain name. On this record, the Panel concludes that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii). Furthermore, no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark.
Complainant further asserts that Respondent fails to use the <indeedjobboard.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent attempts to mimic Complainant’s webpage and offers identical services for commercial gain. Use of a domain name to pass off as the complainant and offer similar services may not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”).
Complainant provided screenshots of Respondent’s webpage which show the INDEED mark and the INDEED logo of Complainant being used along with job searching services (i.e. the type of services covered by Complainant’s registered INDEED marks). See Compl. Ex. D.
Respondent did not refute Complainant’s claims and merely stated: “I am very sorry for purchasing this domain. I did not use it for gain of any kind and want IndeedInc to have it back.” Respondent did not contest Complainant’s claims under Policy ¶ 4(a)(ii).
The Panel concludes that Respondent has no rights or legitimate interests in the <indeedjobboard.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the INDEED marks. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent mimics Complainant’s webpage and offers identical goods and services for commercial gain.
Consequently, the Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant claims Respondent’s use of the <indeedjobboard.com> domain name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant’s business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also 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”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Complainant claims that the disputed domain name resolves to a website upon which Respondent displays a facsimile of Complainant’s logo and offers job searching services (i.e., a type of services covered by Complainant’s registered INDEED marks). See Compl. Ex. D.
Finally, Complainant asserts that Respondent had actual knowledge of Complainant’s rights in the INDEED marks prior to registering the disputed domain name. Where a mark is famous, respondent may be presumed to have actual knowledge of complainant’s rights in them mark per Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
Respondent merely states: “The domain name wasn’t purchased in bad faith. I can’t apologize enough. It will never happen again.”
The Panel finds that Respondent had indeed actual knowledge of Complainant’s business and its registered INDEED trademarks, based on the fame of Complainant’s registered INDEED marks and Respondent’s use of Complainants’ logo on its website, coupled with a service for job searches (i.e., exactly the type of services covered by Complainant’s registered INDEED marks).
The Panel decides that Respondent registered and used the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) (Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant, its competitor) and under Policy ¶¶ 4(b)(iv) (Respondent intentionally attempted to attract, for commercial gain, Internet users to its own web site, by creating a likelihood of confusion with Complainant's mark, and especially by using Complainant’s logo on a website that also offers job searches).
Consequently, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith 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 <indeedjobboard.com> domain name be TRANSFERRED from Respondent to Complainant.
Bart Van Besien, Panelist
Dated: 4 February 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page