Indeed, Inc. and Indeed Canada Corp. wins dispute for Lndeed.ca

The registrant was Rina Lay.

You can read the full details below :

https://cira.ca/sites/default/files/...lndeed.ca_.pdf

IN THE MATTER OF A COMPLAINT PURSUANT TO THE CANADIAN INTERNET REGISTRATION
AUTHORITY DOMAIN NAME DISPUTE RESOLUTION POLICY

Complainant: Indeed, Inc. and Indeed Canada Corp.

Complainant’s counsel: Bereskin & Parr LLP

Registrant: Rina Lay

Panel: Barry C. Effler

Service Provider: British Columbia International Commercial Arbitration Centre

BCICAC File Number: DCA-1806-CIRA

DECISION

DECISION SUMMARY:

Complainants succeeded in establishing that the domain at issue was confusingly similar to
their trade-mark even though not identical as to the word portion of the trade-mark.
Confusion was based on the use of the letter “L” to replace the letter “I”. In its lower case form
the letter “L” appeared to be an upper case “I”. Thus lndeed.ca (LNDEED.CA) appeared to be
just the capitalized form of INDEED.ca.

This is clearly a situation of typosquatting which the Panel defined as an attempt to benefit
from the typographical error of the internet user based on confusion over the actual domain
name. An alternative form of typosquatting is benefiting from internet traffic based on
common misspellings or mistyping of the names of high traffic websites.

Bad faith was established from actual conduct of the Registrant in attempting to confuse the
public into believing the Registrant or someone using the domain as an email address was
actually sending mail from the Complainants web domain.

The Parties, Domain Names and Registrar

1. The Complainants are Indeed, Inc. of Austin, Texas, United States and Indeed Canada
Corp., of Halifax, Nova Scotia.

2. The Registrant is Rina Lay.

3. The Domain Name at issue in this dispute is LNDEED.CA.

4. The Registrar is Wild West Domains Canada, Inc.

5. The Domain Name was registered by the Registrant on February 15, 2016.

Procedural History

6. The procedural history of this matter was set out in a letter from the British Columbia
International Commercial Arbitration Centre to the Panel herein dated August 25, 2016:

On July 29, 2016 the above-named Complainant filed a Complaint pursuant to
the CDRP and the Rules.

In a letter dated August 2, 2016, the Centre as Service Provider, confirmed
compliance of the complaint and commencement of the dispute resolution
process.

As the Complaint with the attachments was filed exclusively online, therefore,
the Centre delivered the Complaint to the Registrant only by email.

The Registrant has not provided a Response. As permitted given the absence
of a Response, the Complainant has elected under Rule 6.5 to convert from a
panel of three to a single arbitrator.

The Centre hereby appoints you, Barry Effler LL.B., LL.M., C, Arb. (Fellow), as
sole arbitrator in the above-referenced matter.

7. As required by paragraph 7.1 of the Rules, I have declared to BCICAC that I can act
impartially and independently in this matter as there are no circumstances known to me
which would prevent me from so acting.

8. I am not aware of any other legal proceeding or other arbitration in relation to the
Domain Name that would give rise, under paragraph 13.2 of the Rules, to a need to stay
or terminate the progress of this proceeding.

9. Reference to Policy herein means the CIRA Domain Name Dispute Resolution Policy,
version 1.3 (August 22, 2011). Reference to Rules herein means the CIRA Domain Name
Dispute Resolution Rules Version 1.5 (July 28, 2014).

Eligibility of Complainant

10. I have reviewed the material submitted by the Complainants and am satisfied that both
Complainants are an eligible complainant under paragraph 1.4 of the Policy. Indeed
Canada Corp. is a Nova Scotia corporation which meets the Canadian presence
requirement.

11. Indeed, Inc. is the owner of a registered Canadian trade-mark which it is alleging the
Domain Name in dispute is being intentionally masqueraded as the word component of
such trade-mark. Paragraph 1.4 of the Policy requires that a complainant meet the
Canadian Presence Requirement of the Canadian Presence Requirements For Registrants
version 1.3 “unless the Complaint relates to a trade-mark registered in the Canadian
Intellectual Property Office (“CIPO”) and the Complainant is the owner of the trademark.

12. The trade-mark in question is INDEED and the Domain Name in dispute is LNDEED.CA
which are not identical as to the word portion. However, the Complaint relates to a
Canadian trade-mark and accordingly I am satisfied as to the eligibility of Indeed, Inc. as
a complainant.

Relief Requested

13. The Complainant requests that the Domain Name in dispute be transferred from the
Registrant to the Complainant.

Applicable Law

14. As directed by paragraph 12.1 of the Rules, I will render my decision based upon the
rules and principles of the laws of Ontario, and the laws of Canada.

Background Facts

15. Background facts alleged by the Complainant and accepted by me as probative are
quoted here from the Complaint: [edited to remove reference to exhibits provided with
the Complaint for improved readability]:

Complainant Indeed, Inc. (“Complainant” or “Indeed”) provides the world’s
largest job site, with over 180 million unique visitors every month from over
60 different countries. Indeed helps companies of all sizes hire employees and
helps job seekers find employment opportunities. Indeed has offices
throughout the world, including Toronto, Canada. Indeed owns indeed.ca and
has used the Canadian ccTLD domain with an employment related search
engine geared to Canadians since at least 2009, and continues to do so.
. . .
The Co-Complainant, Indeed Canada Corp. (“Indeed Canada”), is a sister
company of Indeed, and it is an authorized licensee of Indeed to use the
INDEED mark in Canada, as further discussed below.
. . .
On February 15, 2016, <lndeed.ca> was registered to an undisclosed
registrant.
. . .
On February 16, 2016, Registrant sent unsolicited emails to internet users
from the email address [email protected], and fraudulently represented that
Registrant was an employee of Indeed and requested that the recipient
provide personal and confidential business information.

. . .

Complainant learned of Registrant’s fraudulent phishing scheme in connection
with the Domain Name on February 18, 2016. At this time, <lndeed.ca>, the
Domain Name, was redirecting to Indeed’s website at indeed.com.
Specifically, an individual named “Ashley Dodd” was using the email address
[email protected] in connection with a phishing scheme, whereby she
fraudulently represents that she is an employee of Indeed and requests
recipients to provide personal and confidential business information.

Complainant’s attorneys sent a cease-and-desist letter, addressed to “Ashley
Dodd”, on February 18, 2016 regarding the fraudulent activities and
requesting transfer of <lndeed.ca>. . . . Complainant also contacted the
website host for <lndeed.ca> and requested that the webpage no longer be
redirected to Indeed’s website. The host complied with Complainant’s
request. Registrant never responded to Complainant’s February 18 letter.

On June 21, 2016, Complainant learned that <lndeed.ca> was resolving to a
“Sign In” page, featuring the INDEED Marks and prompting users to enter
their email address and password. . . Further research revealed that the
Registrant had switched to a new website hosting company. . . .

Complainant attempted to contact Registrant through CIRA’s Interested Party
Contact Form on July 1, 2016, and never received a response. . .
Complainant requested and received from CIRA disclosure of Registrant’s
identity, as identified above. . . On July 28, 2016, Complainant’s attorneys sent
a final cease-and-desist letter, addressed to Registrant Rina Lay, again
regarding the fraudulent activities and requesting transfer of <lndeed.ca>.

Registrant would have already been aware of Complainant’s concerns from its
previous communications, as described above. . . . Registrant never
responded to Complainant’s July 28th letter by the stipulated deadline for a
response.

16. The Complainant submitted evidence that it is the owner of numerous trade-marks
throughout the world. Of particular relevance to this dispute, the Complainant is the
owner of the registered Canadian trade-mark numbers
Mark Registration Number Registration Date Goods/Services
INDEED TMA759439 02/12/2010 Services: (1) Computer
services, namely,
providing a search engine
for obtaining job listings,
resume postings, and
other job search
information via the
Internet; dissemination of
advertising for others via
the Internet; teaching in
the field of job
acquisition, human
resources, analytics and
metrics, job optimization
and advertising; training
services in the field of job
acquisition, human
resources, analytics and
metrics, job optimization
and advertising;
entertainment, namely,
organizing festivals and
gatherings in the field of
employment.

INDEED TMA876194 04/22/2014 Wares: (1) application
software for mobile
computing devices,
namely, providing an
internet search engine for
obtaining job listings,
resume postings, and
other job search
information Services: (1)
providing multiple user
access to proprietary
collections of
employment information
by means of global
computer information
networks
Discussion and Findings

17. Policy paragraph 4.1 sets forth the onus on a complainant. It provides as follows:
4.1 Onus. To succeed in the Proceeding, the Complainant must
prove, on a balance of probabilities, that:

(a) the Registrant’s dot-ca domain name is Confusingly Similar
to a Mark in which the Complainant had Rights prior to the
date of registration of the domain name and continues to
have such Rights; and

(b) the Registrant has registered the domain name in bad faith
as described in paragraph 3.5;

and the Complainant must provide some evidence that:
(c) the Registrant has no legitimate interest in the domain
name as described in paragraph 3.4.

Even if the Complainant proves (a) and (b) and provides some
evidence of (c), the Registrant will succeed in the Proceeding if the
Registrant proves, on a balance of probabilities, that the
Registrant has a legitimate interest in the domain name as
described in paragraph 3.4.

18. The Policy provides a definition of the term “Mark” (but as amended no longer defines
Rights):

3.2 Mark. A “Mark” is:

(a) a trade-mark, including the word elements of a design
mark, or a trade name that has been used in Canada by a
person, or the person’s predecessor in title, for the purpose
of distinguishing the wares, services or business of that
person or predecessor or a licensor of that person or
predecessor from the wares, services or business of
another person; …

19. The Complainant Indeed, Inc. established that it has rights in a trade-mark that was a
“Mark” prior to the date on which the Domain Name was registered. The trade-marks
were all registered significantly earlier than the February 15, 2016 date of registration of
the Domain Name. (see paragraph 16, above for details.)

20. The relevant definition of “Mark” requires that a trade-mark be “used”. The term “use”
is no longer defined in the Policy. As indicated in the Background Facts set out above,
the Complainants have been providing employment related search services in Canada
since 2009. The Complainants therefore meet this requirement.

21. The issue of the Confusingly Similar test for Policy paragraph 4.1 (a) is the most difficult
test for the Complainants to meet. The word portion of the trade-mark does not exactly
match the word portion of the Domain Name.

22. The Complainants’ submission is that the name <lndeed.ca> so nearly resembles
Complainant’s INDEED marks in appearance, sound, or the ideas suggested, as to be
likely to be mistaken for the INDEED Marks. The presence of the “dot.ca” suffix is
irrelevant in a paragraph 3.1 (a) of the Policy analysis, and thus, is excluded from
consideration for the purposes of determining whether the disputed Domain Name is
confusingly similar to Complainant’s trademarks. Here the relevant portion of the
Domain Name, “lndeed,” is an intentional misspelling of Complainant’s INDEED Marks.
Internet users will view the lower case “L” in “lndeed” as a capital case “I,” and thus, will view “lndeed” as “Indeed.” As such, the Complainant’s mark and the disputed Domain
Name remain the same in appearance and commercial impression. This intentional
misspelling does not negate the confusing similarity between the Complainant’s mark
and the disputed Domain Name.

23. The Complainants are asserting that this is a situation of the intentional registration of a
domain name to confuse the public that they are actually going to a legitimate domain
for a business they wish to conduct business with. The term “typosquatting” has been
coined and referred to in a number of arbitrations the Complainant has referred me to.

24. This is a situation of typosquatting which I define as an attempt to benefit from the
typographical error of the internet user based on confusion over the actual domain
name. An alternative form of typosquatting is benefiting from internet traffic based on
common misspellings or mistyping of the names of high traffic websites.

25. I agree with the analysis provided by the Complainants set out in paragraph 22 above
and accordingly I am satisfied that the Domain Name is confusingly similar to the
Complainant’s Mark.

26. Merely been confusingly similar is not sufficient to be successful with a complaint. Bad
faith must be established. As an example, if “Lynn Nancy Deed” of Saskatchewan had
registered this domain to discuss poetry, I am certain no complaint would have been
filed.

27. I am satisfied that the Complainant has established bad faith by the Registrant for the
purposes of paragraphs 4.1 of the Policy. Paragraphs 3.5 of the Policy outlines
circumstances which if found shall be evidence that the Registrant has registered a domain name in bad faith. The paragraph expressly states that this list is without limitation.

Paragraph 3. 5 of the Policy:

3.5 Registration in Bad Faith. For the purposes of paragraphs 3.1(c) and
4.1(b), any of the following circumstances, in particular but without
limitation, if found by the Panel to be present, shall be evidence that a
Registrant has registered a domain name in bad faith:

28. The Complainant’s evidence is that the Domain Name is

(a) that the Domain Name originally would refer people going to it to the domain
name of the Complainants, namely indeed.ca. After a complaint to the domain
name registrar, this was stopped.

(b) Then the Domain Name went to a page which used the Complainants’ name and
trade-marks to attempt to appear to be the legitimate website of the
Complainants and asked users to enter their email and passwords for the
Complaints’ website.

(c) “On February 16, 2016, Registrant sent unsolicited emails to internet users from
the email address [email protected], and fraudulently represented that
Registrant was an employee of Indeed and requested that the recipient provide
personal and confidential business information” [quoted from Complaint and set
out in Background Facts above.]

29. Phishing is a term referring to the intentional misleading of a person for the purpose of
obtaining their online credentials for wrongful purposes. The evidence in paragraph
25(b) above is a form of phishing to steal identification and credentials. This is bad faith
registration of a domain name for the purpose of illegal activity. Similarly, the
unsolicited emails referenced in (c) are an attempt at wrongfully obtaining information.

30. This evidence meets the bad faith requirements of Paragraph 3.5 as there is
uncontroverted evidence of attempted fraudulent usage of the Domain Name by the
Registrant.

31. The Complainant has established evidence to meet the tests set out in Paragraph 4.1 (a)
Confusing Similar domain name to a trademark of the Complainant and (b) evidence of
bad faith by the Registrant.


32. The test in paragraph 4.1 of the Policy is
Even if the Complainant proves (a) and (b) and provides some
evidence of (c), the Registrant will succeed in the Proceeding if the
Registrant proves, on a balance of probabilities, that the
Registrant has a legitimate interest in the domain name as
described in paragraph 3.4.

33. The Complainant has met the onus to establish its case for the purposes of meeting the
confusingly similar and bad faith requirements of paragraph 4.1 (a) and (b). The onus is
on the Registrant to prove on a balance of probabilities that the Registrant has a
legitimate interest in the Domain Name.

34. The Registrant has chosen to not participate in these proceedings and accordingly has
not provided any evidence to the Panel in support of her position.

35. There is no evidence before this Panel that the Registrant has any business or personal
project that would indicate a legitimate interest in the Domain Name.

36. There is no evidence that any of the circumstances outlined in paragraph 3.4 of the
Policy regarding legitimate interest apply and I am satisfied that the Registrant has no
legitimate interest in the Domain Name.

37. I am satisfied that the Complainant has met the onus on it to succeed, as required by
paragraph 4.1 of the Policy.

38. Paragraph 4.3 of the Policy requires the Panel to decide if the Domain Name should be
cancelled or transferred to the Complainant if the Panel decides in favour of the
Complainant.

39. The Complainants have no rights to “LNDEED” for business purposes as it is not identical
to their trade-mark. The Domain Name is not a real word and the word portion
“LNDEED” has no meaning or reference to anything that I am aware of. These factors
would normally lead to the conclusion that a cancellation is the appropriate remedy.

40. I am transferring the Domain Name as I have found intentional misuse of this Domain
Name to masquerade as the word portion of the trade-mark owned by the
Complainants (as owner and licensee). There is no apparent usage of this Domain Name
except to impersonate the domain name of indeed.ca. Simply cancelling the Domain
Name registration will leave the name available for registration again by others who
may wish to emulate the wrongful usage. Transfer is the only remedy which will protect
the Complainants’ business interests and protect the interests of all persons who may
be fooled by the impersonation of a legitimate business and its .ca domain name.

Order

41. For the reasons set forth above, I order the Domain Name in issue to be transferred to
the Complainant.
Dated: September 13, 2016
_____________________
Barry C. Effler, LL.B., LL.M.
Sole Panellist