Indeed, Inc. v. josh mathews
Claim Number: FA2009001914918
Complainant is Indeed, Inc. (“Complainant”), represented by Ryan Masters of Indeed, Inc., Texas, USA. Respondent is josh mathews (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <indeedpro.live>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2020; the Forum received payment on September 28, 2020.
On September 29, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <indeedpro.live> 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 September 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 19, 2020 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@indeedpro.live. Also on September 29, 2020, 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 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 Respondent to Complainant.
A. Complainant
1. Complainant, Indeed Inc., operates a worldwide job search website. Complainant has rights in the INDEED mark through its registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. 3,141,242, registered Sep. 12, 2006).
2. Respondent’s <indeedpro.live>[i] domain name is confusingly similar to Complainant’s mark as it incorporates the INDEED mark in its entirety, merely adding the generic term “pro” and the “.live” suffix.
3. Respondent lacks rights and legitimate interests in the <indeedpro.live> domain name as it is not commonly known by the domain name and has not been licensed or otherwise permitted to use its INDEED mark.
4. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent mimics Complainant’s website and offers identical services to those of Complainant.
5. Respondent registered and uses the <indeedpro.live> domain name in bad faith. Respondent creates confusion to attract users to its site for commercial gain.
6. Respondent registered the domain name with actual knowledge of Complainant’s rights in the INDEED mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the INDEED mark. Respondent’s domain name is confusingly similar to Complainant’s INDEED mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <indeedpro.live> domain name and that Respondent registered and uses the domain name 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.
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 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 rights in the INDEED mark through its registration with multiple trademark agencies, including the USPTO. Registration of a mark with a trademark agency such as the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides evidence of registration with the USPTO (e.g. Reg. 3,141,242, registered Sep. 12, 2006). Therefore, Complainant has rights in the mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <indeedpro.live> domain name is confusingly similar to Complainant’s mark as it incorporates the INDEED mark in its entirety, merely adding the generic term “pro” and the “.live” suffix. Addition of generic and/or descriptive terms and a gTLD does not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). 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.”). Therefore, the Panel holds that the <indeedpro.live> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <indeedpro.live> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <indeedpro.live> domain name as it is not commonly known by the domain name and has not been licensed or otherwise permitted to use its INDEED mark. When no response is submitted, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Additionally, lack of authorization to use a mark further evidences that a respondent lacks rights and legitimate interests in the mark. 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). Here, the WHOIS information of record identifies the registrant as “Josh Mathews,” and nothing in the record rebuts Complainant’s assertion that it never authorized Respondent to use the INDEED mark in the <indeedpro.live> domain name. Therefore, the Panel holds that Respondent is not commonly known by the <indeedpro.live> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent does not use the <indeedpro.live> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use and instead mimics Complainant’s website and offers identical services to those of Complainant. Passing off as a complainant does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Further, use of a domain name incorporating the mark of another to divert Internet users to a competing webpage is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) (“Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides a screenshot of Respondent’s resolving website which shows that it offers resources in competition with Complainant. Complainant also provides a copy of its own website and notes the similarity between the sites. Thus, the Panel holds that Respondent lacks rights or legitimate interests in the <indeedpro.live> domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <indeedpro.live> domain name in bad faith because Respondent creates confusion to attract users to its site for commercial gain. Passing off as a complainant for commercial benefit is evidence of bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Additionally, using a domain name incorporating a complainant’s mark to compete with a complainant is evidence of bad faith under Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Complainant provides screenshots of Respondent’s website and has provided evidence that Respondent imitates Complainant through emails and phone calls in addition to offering identical goods and services on its webpage. The Panel therefore finds Respondent registered and uses the <indeedpro.live> domain name in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant argues that Respondent registered the <indeedpro.live> domain name with actual knowledge of Complainant’s rights in the INDEED mark. Per Policy ¶ 4(a)(iii), actual knowledge of a Complainant’s trademark rights is sufficient to establish bad faith and can be demonstrated by the fame of the mark and the use the respondent makes of the domain name. 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”). Complainant argues that Respondent should be found to have had actual knowledge of Complainant’s mark based upon the fame of the INDEED mark and Respondent’s use of the <indeedpro.live> domain name to compete with Complainant. Because the Panel agrees that actual knowledge is present, it finds bad faith pursuant to 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 <indeedpro.live> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 25, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page