The Complainant is Seek Limited, Australia, represented by King & Wood Mallesons, Australia.
The Respondent is WhoIs Guard Protected, Whois Guard Inc., Panama / Shelim Sarker, Bangladesh. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2021. On March 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 18, 2021. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 13, 2021. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on April 19, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background Complainant is an Australian company that has been providing advertising, employment and business-related services under the SEEK trademark (“SEEK Mark” or “Complainant’s Mark”) since 1997. Complainant owns multiple registrations for its SEEK trademark in Australia, including registration number 750657 (registered on December 9, 1997). Complainant is listed on the Australian Stock Exchange, has a market capitalization of AUD 9.2 dollars (USD 7.2 billion dollars) and employs over 11,000 people around the world. Complainant’s primary website, located at the Respondent registered the disputed domain name Complainant sent a cease and desist letter to Respondent on June 26, 2020 notifying Respondent that it is infringing on Complainant’s rights in the SEEK Mark and requesting that it immediately cancel or transfer the disputed domain name. Respondent or someone connected to Respondent, using the pseudonyms “Broken Hurt” and “Rime”, sent e-mails to Complainant on August 14, 2020 and October 12, 2020 stating that he or she was only willing to sell the disputed domain name for USD 25,000. 5. Parties’ Contentions A. Complainant Complainant contends that the disputed domain name is confusingly similar to Complainant’s SEEK Mark because it incorporates the trademark fully and identically. Complainant contends that the addition of the terms “jobs” and “Australia” does not prevent a finding of confusing similarity because of their descriptive nature. Moreover, Complainant argues that the disputed domain name’s content and the addition of the terms “jobs” and “Australia” in the disputed domain name make it clear that Respondent is trying to impersonate Complainant and thus should be taken into consideration by this Panel in its assessment regarding the confusing similarity between Complainant’s Mark and the disputed domain name. Complainant also contends that Respondent has no rights or legitimate interests in or to the disputed domain name. According to Complainant, Respondent has never been commonly known by the disputed domain name, has not been licensed by Complainant to use Complainant’s Mark in any way, and has never been otherwise authorized to act on Complainant’s behalf. Complainant also contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services nor a legitimate noncommercial use and is merely attempting to impersonate Complainant and taking unfair advantage of the reputation Complainant has built in the SEEK Mark. Lastly, Complainant posits that the disputed domain name was registered and used in bad faith. According to Complainant, Respondent must have had actual knowledge of Complainant’s rights in the SEEK trademark given the mark’s reputation in Australia, the complete incorporation of the SEEK mark in the disputed domain name, Respondent’s attempt to sell the disputed domain name to Complainant and Respondent’s attempt to impersonate Complainant. Complainant also argues that Respondent’s attempt to impersonate Complainant and sell the disputed domain name for valuable consideration in excess of out-of-pocket expenses is also evidence of Respondent’s bad faith use and registration. Furthermore, Complainant also contends that Respondent’s provision of false contact information when registering the disputed domain name and the use of a pseudonym when negotiating the sale of the disputed domain name is further evidence of bad faith registration and use. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. Furthermore, section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally or internationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the SEEK Mark through its Australian trademark registrations. With Complainant’s rights in the SEEK Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8. See also Hoffmann-La Roche Inc. v. Wei-Chun Hsia,WIPO Case No. D2008- 0923. The nature of such additional term(s) may however bear on assessment of the second and third elements. WIPO Overview 3.0, section 1.8. Here, Complainant’s SEEK Mark is fully incorporated in the disputed domain name. Thus, although the disputed domain name arguably uses the dictionary word “seek” as part of the phrase “seek jobs Australia” in a dictionary sense, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to Complainant’s SEEK trademark. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or 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; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. As noted above, although Complainant’s SEEK mark is recognizable in the disputed domain name, the word “seek” also has a dictionary meaning, and the disputed domain name arguably uses the term in a dictionary sense, as part of the phrase “seek jobs Australia”. Respondent is using the disputed domain name in connection with a website through which it apparently provides job recruiting services, which are similar in nature to the services provided by Complainant under its SEEK mark. Respondent’s website is clearly not a noncommercial use. Thus, the Panel must determine whether Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or whether Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights. Panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent. Panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. WIPO Overview 3.0, Section 2.10.1. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. Id. For example, a hypothetical respondent may well have a legitimate interest in the domain name Furthermore, offering goods and services under a trademark Respondent was not authorized or licensed to use and redirecting Internet users to Complainant’s own website cannot be considered bona fide within the meaning of paragraph 4(c)(i) of the Policy. A finding to the contrary would run against the intent of paragraph 4(c)(i) of the Policy. See American Eyewear, Inc. v. Thralow, Inc.,WIPO Case No. D2001-0991 (stating “[a]lthough use in connection with the sale of goods and services, is apparent, our inquiry must go further since not all such use qualifies as bona fide use. ‘To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.’” (quoting Ciccone v. Parisi,WIPO Case No. D2000-0847)). Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the SEEK Mark in any way. There is also no evidence suggesting that Respondent is commonly known by the disputed domain name, based on the WhoIs data for the disputed domain name and the aliases used by Respondent or someone connected to Respondent in communications to Complainant. Furthermore, Respondent cannot claim to have rights or legitimate interests in the disputed domain name based on any dictionary meaning because the content of the website located at the disputed domain name demonstrates that it is being used to redirect Internet users to Complainant’s own website, and thereby unfairly trading on the goodwill associated with Complainant’s SEEK Mark. All of the job listings provided on Respondent’s website at the disputed domain name appear to merely redirect to identical listings on Complainant’s primary website. Therefore, the Panel finds it more likely that Respondent is using the disputed domain name to unfairly trade on the goodwill associated with Complainant’s SEEK Mark in order to inappropriately insert itself between Internet users seeking Complainant and reaching Complainant’s services rather than using it in connection with any dictionary meaning. Thus, Respondent’s use cannot be considered a bona fide offering of goods or services since Respondent is merely using the SEEK Mark without Complainant’s authorization to draw Internet users to its own website, presumably for some commercial gain, before redirecting users back to Complainant’s own website where the actual job listings are provided. The offer to sell the disputed domain name to Complainant further bolsters this conclusion. Accordingly, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain name within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(i) that bad faith registration and use can be found when a respondent registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name. The Policy also indicates in paragraph 4(b)(iv) that bad faith registration and use can be found when, by using a disputed domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. Among the circumstances panels take into account when assessing whether the respondent’s registration of a domain name is in bad faith are: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion), (ii) the content of any website to which the domain name directs, including any changes in such content and the timing thereof, (iii) the clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, and (iv) other indicia generally suggesting that the respondent had somehow targeted the complainant. WIPO Overview 3.0, section 3.2.1. Complainant provided evidence that Respondent or someone connected to Respondent is attempting to sell the disputed domain name for valuable consideration likely in excess of out-of-pocket costs directly related to the disputed domain name, which is evidence of bad faith registration and use under Policy paragraph 4(b)(i). Such use is also evidence of bad faith under paragraph 4(b)(iv) of the Policy, as Respondent sought to capitalize on the confusing similarity of the disputed domain name to Complainant’s Mark to attract Internet users to its website to increase the likelihood of selling the disputed domain name for a profit. Furthermore, the content to which the disputed domain name resolves supports Complainant’s contention that Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s SEEK Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or the job recruiting services advertised thereon. Use of the disputed domain name to draw web traffic to Respondent’s ostensible job recruiting website, which then merely redirects Internet users to Complainant’s website, is clear evidence that Respondent is targeting Complainant through its registration and use of the disputed domain name, for Respondent’s commercial gain. Respondent’s use of apparently false contact information on the website located at the disputed domain name website and the use of pseudonyms by Respondent or someone connected to Respondent when attempting to sell the disputed domain name to Complainant further supports Complainant’s claim that Respondent’s registration and use of the disputed domain name were in bad faith. For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain name were in bad faith, pursuant to paragraphs 4(b)(i) and 4(b)(iv) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, Brian J. Winterfeldt
Sole Panelist
Date: April 30, 2021
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