In the matter of:
6433 Champion Grandview Way,
Building 1, Austin, Texas 78750,
United States of America
Nayapalli, Bhubaneswar 751002,
Disputed Domain Name: <WWW.INDEEDONLINE.IN>
1) The Parties:
The Complainant in this arbitration proceeding is Indeed, Inc., a Delaware corporation. The Complainant is represented by its authorized representatives namely, Archer & Angel.
The Respondent in this arbitration proceeding is the current Registrant under the name, Indeedworld of the address Nayapalli, Bhubaneswar 751002, Orissa, India as per the details available in the whois database maintained by National Internet Exchange of India (NIXI).
2) The Domain Name, Registrar & Registrant:
The disputed domain name is <indeedonline.in>. The Registrar is Endurance Domains Technology LLP.
As per the Whois Database, the Registrant is Mndeedonline’ of the address Nayapalli, Bhubaneswar, Orissa- 751002, India
3) Procedural History:
This arbitration proceeding is in accordance with the .IN Domain Name Dispute Resolution Policy (INDRP), adopted by the National Internet Exchange of India (NIXI). The INDRP Rules of Procedure (the Rules) were approved by NIXI on 28th June, 2005 in accordance with the Indian Arbitration and Conciliation Act, 1996. By registering the disputed domain name with the NIXI accredited Registrar, the Respondent agreed to the resolution of the disputes pursuant to the .IN Dispute Resolution Policy and Rules framed thereunder.
As per the information received from NIXI, the history of the proceedings is as follows:
In accordance with the Rules 2(a) and 4(a) and (b), NIXI formally forwarded the copy of the Complaint to the Respondent and appointed Rachna Bakhru as the Sole Arbitrator for adjudicating upon the dispute in accordance with the Arbitration and Conciliation Act, 1996, and the Rules framed thereunder, .IN Domain Dispute Resolution Policy and the Rules framed thereunder. The Arbitrator submitted the Statement of Acceptance and Declaration of impartiality and independence, as required by NIXI.
• The complaint was produced before the Arbitrator on December 21, 2018 and the notice was issued to the Respondent on December 26, 2018 at the email address listed on Whois record with a deadline of 10 days to submit his reply to the arbitrator. The said notices to the Respondent’s email addresses bounced back and were not delivered.
• NIXI has confirmed that the hard copy of the complaint alongwith annexures was successfully delivered at the listed address (as per whois database) of the Respondent on January 5, 2019. Based on this confirmation, it is construed that the present complaint has been served on the Respondent as per the INDRP Rules.
• The Arbitrator issued another notice to the Respondent on January 07, 2019 via email granting one last and final opportunity to the Respondent to submit its reply on or before January 14, 2019. However, no response was received either by Arbitrator or NIXI.
• In view of no response/acknowledgement/communication from the Respondent, the complaint is being decided ex-parte and solely based on materials and evidence submitted by the Complainant and contentions put forth by them.
4) Summary of the Complainant’s contentions:
The Complainant in support of its case has made the following submissions:
The Complainant operates the world’s largest job site, with over 200 million unique visitors every month from over 60 different countries. It helps companies of all sizes hire employees and also helps job seekers find employment opportunities. The Complainant adopted and commenced use of indeed.com since the year 2004 and has given job seekers access to millions of jobs from thousands of company websites and job boards.
The complainant has ensured significant presence of its brand and trademark INDEED in the Indian market through various promotional and advertising activities. The complainant has in 2017 had sponsored the ‘Talent Acquisition Summit’ in Mumbai and also entered into an agreement with Yash Raj Films, a leading Indian film production company, to integrate its brand and trademark INDEED in a film. The Complainant has been rated as the top source of external hires and interviews by the Human Capital Management company, SilkRoad, for 6 years in a row.
The complainant owns trademark registrations for the INDEED Marks in different countries worldwide including India claiming use since 2004. The earliest registration of the mark INDEED as detailed out by the complainant dated back to the year September 2006 in USA claiming use since November 29, 2004. In India, the mark INDEED is registered under no. 2044682 in classes 35 and 42. The said registration stands in favour of the Complainant since October 27, 2010.
The complainant owns the domain name www.indeed.com through which it conducts a significant portion of its business and where information about Indeed and its business is easily accessible and available to millions of internet users, who may be current or potential consumers. The said domain is based on the corporate name of the Complainant’s company, Indeed Inc., and was created/registered on and has been regularly renewed since March 30, 1998. The Complainant is also the owner of the India specific domain <indeed.co.in>, which was created /registered on and has been regularly renewed since December 14, 2006. The Complainant also owns several other domain names containing its registered trademark INDEED such as <indeed.net>, <indeed.online>, <indeed.org>, <indeed.career>, <indeed.jobs> and <indeed.ceo> as well as several other country country-specific domain names and websites in major markets such as Canada <indeed,ca>, France <indeed.fr>, Japan <indeed.jp>, South Africa <indeed.co.za>, United Kingdom <indeed.co.uk>, etc.
The complainant received complaints from bonafide consumers and learnt that the Respondent via its impugned email ID email@example.com is contacting innocent job seekers and conning them into paying money to secure interviews. The corresponding website of the Disputed Domain Name, i.e. www.indeedonline.in directs visitors to a blank page with no information or content. The Respondent is using the Disputed Domain Name for the purpose of phishing sensitive information of the Complainant’s unsuspecting customers.
The complainant in November 2017 had initiated INDRP proceedings before NIXI against the domain name <indeedworld.in>, which was illegitimately registered by Indeedworld – which is the Respondent in the instant case as well. The complaint was successfully adjudicated by the Arbitrator in favour of the Complainant.
The Complainant has also cited various domain name dispute cases in respect of the INDEED marks which have been recognized and confirmed by NIXI. The complainant also contents that the Learned Arbitrator, in its order while directing transfer of the disputed domain <indeedjob.co.in> to the Complainant, observed that:
“While the Registrant’s domain name contains the term ‘INDEED’ in its entirety, he has just added generic term ‘JOB’ to this term. It is noteworthy that the term so added ‘JOB’ is directly concerned with the main business activity of the Complainant, in which it has gained long standing reputation. By adding such word to the registered trademark, the Registrant has cleverly coined the term ‘INDEEDJOB’, thereby compelling the internet user to think that it is official website of the Complainant”.
The complainant also contends that its rights to the INDEED Marks have also been upheld in several Forum arbitration proceedings (formerly the National Arbitration Forum or NAF – an approved Dispute Resolution service provider under ICANN domain name disputes), namely <indeedjobs.live> and <indeedjob.co> (Case No. 1749207), <lndeed.co> (Case No. 1693112), <indeedjobz.com> (Case No. 1739470), <indeedjob.online> (Case No. 1757559) and many others.
The Complainant is the registered owner of the domain name <indeed.online>, which comprises of the two identical words as are contained in the Disputed Domain Name. The Complainant is known globally as an employment / job search engine since early 2000s and hence use of the Disputed Domain Name will make internet users believe that it originates from the Complainant, when that is not the case.
The Complainant contends that the disputed domain name <indeedonline.in> is identical and/or confusingly similar to the Complainant’s trademark INDEED and addition of the word “ONLINE” as a suffix does not serve to distinguish the disputed domain name from the Complainant’s INDEED mark. The element of confusion is further enhanced in view of the fact that the Complainant is the registered owner of the domain name <indeed.online> which comprises of the two identical words as are contained in the Disputed Domain Name.
The Complainant contends that Respondent has no rights or legitimate interest in either the trademark INDEED or in the disputed domain name <indeedonline.in> and that the Respondent was never authorized or licensed to use the mark INDEED. Further, it is contended that the Respondent is not commonly known by the disputed domain name and has no reason to adopt or register the domain name <indeedonline.in>. The Respondent has not used, nor made any demonstrable preparations to use, the Disputed Domain Name in connection with a bonafide offering of services or goods.
The Complainant further contends that the Respondent is using the domain name <indeedonline.in> for fraudulent purposes, namely to imitate the Complainant and deceive job seekers into purchasing/subscribing services that are never provided to job seekers.
The Complainant contends that the Disputed Domain Name was registered in December 2017, i.e. post 7 years of filing of trademark applications by Complainant in India for registration of its INDEED Marks and 13 years of the Complainant using its said marks in commerce. The complainant further contents that there can be no doubt that the Respondent was aware of the Complainant’s INDEED Marks when it registered the Disputed Domain Name, which clearly suggests “opportunistic bad faith” in violation of the Policy. The Complainant further contends that even if the Respondent were offering actual online career search and recruiting services through the Disputed Domain Name, such use would still support a finding of bad faith use and registration, as these are the same services offered by the Complainant under its famous and registered INDEED Marks.
The Complainant contends that the Respondent is using the domain name <indeedonline.in> and email address firstname.lastname@example.org for sending fraudulent ‘phishing’ emails to impersonate the Complainant and attempts to secure personal information and money from innocent job seekers, who believe the Respondent to be the Complainant or at least affiliated with it, and who pay money to Respondent to further job opportunities.
That the email phishing schemes indicate bad faith registration and use under para 4(iii) of the Policy.
The Respondent has not filed any official response dealing with the contents of the Complaint. The complaint had to be decided based on submissions on record and analyzing whether the Complainant has satisfied the conditions laid down in paragraph 4 of the INDRP policy.
6) Discussion and Findings:
The submissions and registration certificates provided by the Complainant in support of registration of the mark INDEED shows that the Complainant has first adopted the mark INDEED in the year 2004 with first commercial use since November 29, 2004 as per registration details annexed from records of USPTO office in Annexure 6.
Further, the Complainant applied for and secured registration for the INDEED mark in India with effect from October 27, 2010 with first use in commerce since November 29, 2004 as shown in Annexure 6. The Arbitrator notes that the Complainant created the domain www.indeed.com on March 30, 1998 as shown in Annexure 7 and registered India specific domain name www.indeed.co.in on December 14, 2006 as shown in Annexure 8. Further, the Complainant in Annexure 9 & 10 has also filed evidence in form of whois details of its ownership of several other domain names and country-specific domain names and websites constituting INDEED trademark.
The Arbitrator notes from details of whois records as shown in Annexure 2 that the disputed domain name was registered by the Respondent on December 22, 2017 which is more than a decade subsequent to first adoption and use of the INDEED trademark and domain name by the Complainant. The Complainant has prior registered trademark rights in India in INDEED mark and filed its first trademark application in classes 35 and 42 on October 27, 2010.
The Arbitrator notes that in November 2017, the Complainant has initiated INDRP proceedings (INDRP/931) against the domain name www.indeedworld.in which was registered by Indeedworld- Respondent in the instant case. The complaint was successfully adjudicated in favour of the complainant as shown in Annexure 12.
I now deal with the three requisite conditions laid in paragraph 4 of the .IN Domain Name Dispute Resolution Policy which is listed below. Further the Respondent has not contested the claims, therefore deemed to have admitted the contentions of the Complainant.
(i) The Registrant’s domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
Based on submission and evidence filed by the Complainant, it is clear that the Complainant had prior and subsisting rights in the mark INDEED with its earliest adoption and trademark application dating back to year 2004 in United States of America. In India, the Complainant has evidently proved that it had secured trademark registration for the INDEED trademark in classes 35 and 42 since the year 2010. Therefore, it is established that the Complainant has statutory trademark rights in the mark INDEED worldwide including in India. Further, the Complainant has pleaded that it has been commercially using the INDEED trademark since 2004 which hasn’t been rebutted and is in consonance with the trademark details annexed by the Complainant as Annexure 6. Therefore, the Complainant also has prior user rights in the INDEED trademark. As complaint under INDRP, it has to be now ascertained if the disputed domain name <indeedonline.in> is identical to or confusingly similar with the Complainant’s mark.
As per WIPO Jurisprudential Overview 3.0, the standing or threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Further, it is well settled proposition that when the relevant trademark is recognizable within the disputed domain name, the addition of any generic or common language term would not prevent a finding of confusing similarity under the first element of UDRP Policy.
It is also noted from Annexure 10 that the Complainant is the registered owner of the domain name <indeed.online> which is comprised of the identical words as contained in the disputed domain name copied by the Respondent. Thus, it is evident in the present case that the disputed domain name <indeedonline.in> is identical and confusingly similar to the Complainant’s registered trademark INDEED and domain name indeed.online. In my opinion, owing to the worldwide presence of the Complainant’s business, the term ‘online’ in the disputed domain name could make Internet users to believe that such domain name and the contents originating therefrom belongs to the Complainant. In view of the above, the requirement of the INDRP Policy paragraph 4(i) is satisfied.
(ii) The Registrant has no rights or legitimate interests in respect of the domain name;
In order to satisfy requirement of INDRP Policy paragraph 4(ii), the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. On making such prima facie case, the burden of proof shifts to the Respondent to provide appropriate allegations or evidence to demonstrate rights or legitimate interests in the domain name.
In the present case, no response was received from the Respondent and none of the contentions put forth by the Complainant against the Respondent were denied or rebutted.
Paragraph 7 of INDRP Policy deals with Registrant’s Rights to and Legitimate Interests in the Domain Name:
Any of the following circumstances, in particular but without limitation, if found by the Arbitrator to be proved based on its evaluation of all evidence presented, shall demonstrate the Registrant’s rights to or legitimate interests in the domain name for the purposes of Paragraph 4 (ii):
(i) before any notice to the Registrant of the dispute, the Registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) the Registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if the Registrant has acquired no trademark or service mark rights; or
(iii) the Registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Keeping in mind instances covered in Paragraph 7 of INDRP Policy, the Arbitrator notes that the disputed domain name directs the visitors to a blank page with no information or content (Annexure 11). Therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services.
The Complainant has provided documentary evidence in form of email correspondence originating from the email address of the disputed domain name which shows Respondent has been targeting the potential customers of the Complainant to make commercial gains by deceiving them. Therefore, it is established that the Registrant is not making a legitimate non-commercial or fair use of the domain name. Further, the disputed domain name is being used by the Respondent with clear intention of making commercial gain. It is held that use of a domain name for illegal activity including fraud, illicit gain can never confer any legitimate rights or interests in favour of the Respondent.
Since there exists no business relationship or authorization or license between the Respondent and the Complainant, I find the requirement of the INDRP Policy paragraph 4(ii) also satisfied.
(iii) The Registrant’s domain name has been registered or is being used in bad faith.
Paragraph 6 of the INDRP policy states Evidence of Registration and use of Domain Name in Bad Faith:
For the purposes of Paragraph 4(iii), the following circumstances, in particular but without limitation, if found by the Arbitrator to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, who bears the name or is the owner of the trademark or service mark, or to a competitor of that Complainant, for valuable consideration in excess of the Registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
(iii) by using the domain name, the Registrant has intentionally attempted to attract Internet users to the Registrant’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s website or location or of a product or service on the Registrant’s website or location.
Based on prior adoption, worldwide use, several trademarks and domain names registrations of trademark INDEED by the Complainant; it is believed that the Respondent was well aware of the Complainant’s business and services while registering the disputed domain name constituting the mark INDEED. Further, the disputed domain name was registered on December 22, 2017 wherein the Complainant had commenced the use of trademark INDEED for its business since the year 2004 internationally and in India since 2010 which was way prior in time. Therefore, based on constructive knowledge of the Respondent and no legitimate business on the disputed domain name/website, it is presumed that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the INDEED mark in a corresponding domain name in India.
Further, the Complainant has furnished the email correspondence marked as Annexure 11 wherein it is clear that the Respondent has devised the email address email@example.com (associated with disputed domain name) to trap the potential job seekers and make illicit gains by committing fraud. Further, the Respondent goes on to impersonate itself as the representative of the Complainant and is actively using the Complainant’s trademark INDEED in its disputed domain name for the purpose of phishing sensitive information of the Complainant’s unsuspecting customers. All these actions show that the disputed domain name is being used by the Respondent in bad faith. It is observed that use of the disputed domain name constitutes bad faith if it effectively impersonates and/or suggests sponsorship or endorsement by the trademark owner.
The Respondent is using the disputed domain name in relation to same business and services as those of the Complainant i.e. career and recruitment. Based on the content of the email originating from the Respondent, it is clear that the Respondent has registered and is using the disputed domain name with an obvious intention to attract job seekers by creating a likelihood of confusion with the Complainant’s INDEED name and mark and is actively associating itself with the Complainant’s company and business.
Time and again UDRP Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending emails, phishing, identity theft, etc. Such cases may involve the Respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the Complainant’s actual or prospective customers. The present case squarely falls within the premises of bad faith registration and use.
Based on the above, it can be concluded that the disputed domain name was registered and is being used in bad faith, thus fulfilling condition laid down under paragraph 4(iii) of INDRP Policy.
The Complainant has satisfied all the three requisite conditions laid down in paragraph 4 of the INDRP policy. In accordance with the Policy and Rules, it is directed that the disputed domain name <WWW.INDEEDONLINE.IN> be transferred to the Complainant.