WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Godrej Consumer Products Limited v. Registration Private, Domains By Proxy, LLC / Vishal Jain, fmcg

Case No. D2020-1616

1. The Parties

The Complainant is Godrej Consumer Products Limited, India, represented by Scriboard Advocates & Legal Consultants, India.

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Vishal Jain, fmcg, India.

2. The Domain Name and Registrar

The disputed domain name <godrejcareer.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2020, 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 the Complainant on June 24, 2020 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 June 26, 2020.

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 the Respondent of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on July 28, 2020. 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:

The Complainant, Godrej Consumer Products Limited, is a leading Fast-Moving Consumer Goods Company which was incorporated in Mumbai, India on November 29, 2000. A copy of the incorporation certificate of the Complainant is attached to the Complaint.

The Complainant is part of the Godrej Group, headquartered in India, Maharashtra, which was founded in 1897. According to the Complainant, the Godrej Group enjoys the patronage of 1.1 billion consumers globally, across its different businesses and has a combined revenue of over USD 4.5 billion through its various subsidiaries. Extracts of the social media pages of the GODREJ group and copies of a few promotional materials, brochures, articles, etc. pertaining to the said group are attached to the Complaint. The Complainant states that it uses its trademark GODREJ as a trademark on all of its products, packaging and publicity material.

The Complainant is the registered proprietor and holds a significant number of trademark registrations for GODREJ and GODREJ formative marks in India, the earliest of which dates back to 1942. Details of one such registration furnished by the Complainant is Indian Registered No. 4773 dated September 4, 1942, for the GODREJ (word mark) in class 3 for soaps, scents, powders (toilets), hair oils and brilliantines (toilet), Eau-de-Cologne, Lavender water and all other kinds of perfumery and toilet preparations. Copies of trademark registration certificates and extracts from the online records of the Indian Trademarks Registry pertaining to the Complainant’s trademark registrations for GODREJ and GODREJ formative marks in India have been attached to the Complaint. The said annexure relied upon by the Complainant also contains a tabular list of a few trademark registrations / applications obtained / filed by the Complainant in India and other jurisdictions.

The Complainant operates through a website hosted on the domain name <godrej.com>. The said domain name has been registered on August 17, 1998. The WhoIs search result of the domain name of the Complainant, including a screenshot of the website hosted on the same has been attached to the Complaint. In addition, the Complainant also has a dedicated website hosted on the domain name <godrejcareers.com> for individuals who are desirous of joining the GODREJ Group. This latter domain name has been registered on October 16, 2001. Extracts of the WhoIs search result of the said domain name illustrating the said fact, including a screenshot of the website hosted on the same has been attached to the Complaint.

The Complainant is the registrant of various domain names relating to or consisting of its trademark GODJREJ. A list of sixty-eight such domain names has been furnished by the Complainant and the same is attached to the Complaint.

According to the Registrar report and the WhoIs records, the disputed domain name was registered by the Respondent on October 19, 2019. Extracts of the WhoIs search result of the disputed domain name and the Registrar report have been attached to the Complaint. A mere perusal of the said annexures also illustrates that the Respondent, while registering the disputed domain name, had provided the following email address, <[…]godrej@gmail.com> as a part of the WhoIs details.

The disputed domain name does not resolve into a fully functional and active website. An extract of the landing page of the disputed domain name as on June 19, 2020, has been attached to the Complaint. According to the Complainant, the Respondent and its associates are misrepresenting themselves to be the representatives of the Complainant and are making fake job interview invitations to innocent job seekers through several emails using the <[…]@godrejcareer.com> formulation. The Complainant states that the Respondent and its associates are inducing such individuals to pay a certain amount of money as registration fees for recruitment at the Complainant’s organization. Copy of emails sent by the Respondent to various unsuspecting job aspirants have been attached to the Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name of the Respondent is bound to cause enormous confusion as to its origin, the same being identical to the well-known trade / service mark of the Complainant.

The Complainant contends that the trademark GODREJ is well-known and has been in extensive, continuous and uninterrupted use since the year 1897 in relation to the Complainant’s (and its group companies) business. The Complainant states that the trademark GODREJ has been prominently used in advertisements and promotional material disseminated in India and abroad. According to the Complainant, the GODREJ trademark, is the corporate name as well as the primary brand name of the Complainant and its group companies. The Complainant claims that the said trademark has become the focus of the Complainant’s entire business related to a wide range of products and services as well as of its corporate identity.

The Complainant contends that the trademark GODREJ on account of extensive and continuous manner for more than a century by the Complainant and its group company has acquired a secondary meaning and is therefore capable of protection as a trademark. Specific reliance has been made placed on the UDRP panel decision Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No.D2000-1435. The Complainant asserts that the trademark GODREJ has been declared a well-known mark by the Trademarks Registry, India under Section 11 (6) of the Indian Trademarks Act, 1999. The Complainant has furnished a copy of the list published by the Trademarks Registry of India illustrating its trademark GODREJ as a well-known trademark and the same is attached to the Complaint.

According to the Complainant, the malafide intention of the Respondent in registering the disputed domain name is evident from the fact that it copies the Complainant’s registered and well-known trademark in its entirety without even changing a single letter and Respondent has suffixed the descriptive term “career” after it.

The Complainant further states that such conduct on the part of the Respondent is bound to create confusion amongst customers and Internet users about the fact that the disputed domain name <godrejcareer.com> is related to the Complainant’s recruitment activities – when it is not, especially since the Complainant has linked its official website to the domain name “www.godrejcareers.com”. The Complainant claims that the disputed domain name is identical to that of the Complainant, save for the letter “s” in “careers”.

The Complainant states that the use of the word “career” in the disputed domain name by the Respondent makes it apparent that the disputed domain name was being used by the Respondent to impersonate the Complainant in order to scam or defraud innocent individuals who would mistakenly assume that the disputed domain name and emails originating from it are associated with the Complainant. Further the Complainant contends that it would be very natural for an Internet user, who wishes to reach / visit the Complainant’s website to mistakenly miss the last letter of the said domain name being “s”. In such an event, Internet users will be led to believe that the Complainant is associated with or owns the website hosted on the disputed domain name. The Complainant therefore argues that the Respondent’s activities constitute a recruitment scam and also amount to cybersquatting, trade / service mark / name infringement and passing-off.

Citing previous UDRP panel decisions, namely Farouk Systems, Inc. v. Yishi, WIPO Case No. D2010-0006 and Havells India Limited, QRG Enterprises Limited v. Whois Foundation, WIPO Case No. D2016-1775, the Complainant contends that a domain name which wholly incorporates a Complainant’s registered trademark may be sufficient to establish identity or confusing similarity, despite the addition of other words to such marks. The Complainant states that it is well established that specific Top-Level Domain name extensions, such as “.com”, “.org”, “.net” or “.travel”, do not affect the determination of whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant in support of its said claims again placed reliance on several previous UDRP panel decisions. The Complainant therefore claims that the disputed domain name is confusingly similar to the Complainant’s trademark GODREJ.

The Complainant contends that the Respondent has no proprietary or contractual rights in any registered or common law trademark corresponding in whole or in part to the disputed domain name. The Complainant states that GODREJ is a registered and well-known trademark and the addition of the term “career” clearly indicates that the Respondent knew of the Complainant’s well-known mark and its business activities due to the fact that the GODREJ trademark has been in use by the Complainant in relation to various household products since the year 1897. The Complainant claims that the disputed domain name was registered by the Respondent on October 19, 2019, which is very recent compared to the inception and gradual popularity of the GODREJ brand. Reliance in this regard has been by the Complaint on previous UDRP panel decisions, namely Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849.

The Complainant contends that the Respondent has no connection with the Complainant, or any company licensed by the Complainant; the Respondent is not commonly known by the disputed domain name or the trademark and the Respondent was not and is not authorized by the Complainant to register, hold or use the disputed domain name. The Complainant claims that the Respondent and its associates are portraying themselves as representatives of the Complainant and are using the disputed domain name to send emails to innocent job seekers misleading them into believing that an actual representative of the Complainant has contacted them. The Respondent then induces such individuals to deposit a certain amount of money in his or his associates’ bank account on the pretext of paying for the registration fees for recruitment at the Complainant’s organization. As per the Complainant, all such emails have been sent from, email accounts using a different user name but ths same second level domain as in the disputed domain name.

The Complainant contends that such was the volume and frequency of the fraud carried out through the disputed domain name, that the same was also highlighted in social media posts by potential victims of the Respondent. Copies of two such social media posts on LinkedIn and Twitter have been attached to the Complaint. According to the Complainant, the very fact that the Respondent has registered the disputed domain name with the term “career” and in light of the emails sent by the Respondent to innocent job seekers, it is evident that the Respondent knew of the Complainant’s brand and had registered the disputed domain name to illegally cash in on the brand’s reputation by defrauding innocent individuals.

The Complainant states that it also operates a similar website with an “s” for its recruitment process. The Complainant contends that the near identicalness of this domain name with the disputed domain name makes it apparent that the disputed domain name was solely registered for conducting a recruitment scam. The Complainant claims that the registration of the disputed domain name itself gives rise to an impression of an association with the Complainant which is not based in fact. Reliance in this regard has been placed by the Complainant on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No.D2000-0598.

The Complainant claims that the Respondent neither as an individual, business or other organization is not
commonly known by the name “Godrej”. The Complainant states that it has no relationship with the Respondent and that it has not licensed or otherwise permitted the Respondent to use its trade / service mark GODREJ or to apply for any domain name incorporating the said trademark. The Complainant relies on Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 in support of its contentions.

The Complainant contends that the Respondent’s use of a Privacy Shield proves that the Respondent is not commonly known by the disputed domain name and does not have any legitimate rights in the trademark GODREJ. According to the Complainant, the disputed domain name does not resolve into a website. The Complainant claims that the very fact that the Respondent is using the Complainant’s well-known trademark GODREJ in his email, proves that the Respondent is continuously attempting to wrongfully associate himself with the Complainant, when no such association actually exists. The Complainant reiterates that the Respondent is a cybersquatter and has never been commonly identified with the disputed domain name or any variation thereof prior to the registration of the disputed domain name. The Complaint asserts that the burden to prove that it has rights and legitimate interests in the disputed domain name thus shifts the Respondent.

The Complainant states that is inconceivable that the registration of the disputed domain name by the Respondent was made without full knowledge of the existence of the Complainant and is a well-known trademark. The Complainant asserts that its trademark GODREJ is globally well-known as it has been continuously used since 1897. The Complainant claims that its trademark GODREJ has acquired enormous goodwill not only in India but in several other countries across the globe due to its extensive use, advertisements, publicity and awareness throughout the world. The Complainant contends it would be impossible, for the Respondent to use the disputed domain name as the name of any business, product or service for which it would be commercially useful without violating the Complainant’s rights. The Complainant relying on previous UDRP decisions, argues that the registration of a domain name identical or confusingly similar to a well-known trademark is a clear indicator of bad faith.

According to the Complainant, the addition of the term “career” after the Complainant’s trademark GODREJ in the disputed domain name makes it apparent that the Respondent is deliberately trying to associate the disputed domain name with the well-known GODREJ brand. The Complainant relies on Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 in support of its claims. The Complainant contends that the conduct of the Respondent of impersonating itself to be the representative of the Complainant, of sending emails to innocent job seekers inducing them to pay a certain amount of money as the registration fees for recruitment at the Complainant’s organization constitutes a recruitment scam and is strong evidence of bad faith on the part of the Respondent. The Complainant states that the Respondent is wrongfully trying to continuously associate itself with the Complainant, when no such association actually exists.

The Complainant contends that the disputed domain name is being held by the Respondent in bad faith and is a clear attempt to take advantage of the Complainant’s goodwill and reputation. The Complainant claims that on account the high degree of inherent and acquired distinctiveness, which the trademark / name GODREJ is possessed of, the use of this trademark or any other phonetically, visually or deceptively similar trademark, by any other person would result in immense confusion and deception in the trade, leading to passing off. The Complainant states that the trademark / name GODREJ has acquired unique importance and is associated with the Complainant.

The Complainant contends that the registration and use of a domain name comprising of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the trademark reveals opportunistic bad faith. The Complaint places reliance on

America Online Inc. v. Chinese ICQ Network, See WIPO Case No. D2000-0808. The Complainant claims that the Respondent desires to cash-in on the reputation of the Complainant’s trademark by using the disputed domain name for advertisements or setting up a business. The Complainant states that the Respondent could also transfer or sell the disputed domain name to some competing interest of the Complainant who may damage the goodwill and reputation of the Complainant by inserting prejudicial material in relation to the Complainant’s group companies. According to the Complainant, it will lead to complete tarnishment of the Complainant’s image if the disputed domain name falls into the hands of competing interests.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. Having gone through the series of communications as set out above under the Section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Rules. The Panel finds that the proceedings have been conducted in accordance with the Rules and the Policy. According to Paragraph 14(a) of the Rules, where there is a failure by the Respondent to provide a response to the allegations of the Complainant, as in the present case, the Panel in accordance with Paragraph 14(b) shall “draw such inferences therefrom as it considers appropriate”.

The Respondent, despite being accorded an opportunity, furnished no formal response, and the deadline for the same expired on July 20, 2020. Taking into consideration the Respondent’s default, the Panel can infer that the Complainant’s allegations are true where it considers that to do so would be reasonable and appropriate.

Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) clearly stipulates that the Respondent’s default (failure to submit a formal response) would not by itself mean that the Complainant is deemed to have prevailed. The burden still remains with the Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, the Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

The following three requirements under paragraph 4(a) of the Policy have to be met for this Panel to transfer the disputed domain name to the Complainant:

i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

ii. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

iii. the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A trademark registration provides a clear indication that the rights in the mark belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.

The Complainant has provided detailed evidence of its rights in the GODREJ trademark and GODREJ formative trademarks on the basis of its multiple trademark registrations for the same in various jurisdictions around the world, including India, which can be traced back to the year 1942 (Indian Trademark Registration Nos. 4773, 4774, 4760, 4768 and 4769 dated September 4, 1942, in class 3) well before the Respondent registered the disputed domain name on October 19, 2019. Valid and subsisting trademark registrations in favour of the Complainant therefore constitute prima facie evidence of its ownership, validity and the exclusive right to the use the trademark GODREJ and its variants in connection with the stated goods and services.

The Panel also takes note that the Complainant has furnished detailed evidence of the long-standing use since 1897 and the goodwill of the GODREJ trademark in India. The Complainant has placed reliance on the following:

i. Social Media Pages, Promotional Material, Press Releases and Newspaper Extracts containing references to the GODREJ trademark and information on the GODREJ Group. (Annex J to the Complaint).

ii. Numerous domain name registrations owned by the Complainant and its group companies comprising of the trademark GODREJ. (Annex I to the Complaint).

iii. Printout of the list of well-known trademarks and copy of a pamphlet issued by the Trademarks Registry, India acknowledging the Complainant’s trademark GODREJ as a well-known trademark. ( Annex K to the Complaint)

On the basis of the evidence filed in the present proceedings, the Panel stands satisfied that the Complainant has both statutory rights and common law rights in the trademark GODREJ and that the said trademark has been recognized as a well-known trademark in India.

The Panel observes that the disputed domain namewholly incorporates the Complainant’s registered and well-known trademark GODREJ in its entirety. Previous UDRP panels have ruled that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.

The Panel finds that the addition of the word “career” does not avoid a finding of confusing similarity. See, Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; and WIPO Overview 3.0 , section 1.8 .

The Panel notes that section 1.11 of the WIPO Overview 3.0 , further provides that generic Top-Level Domains (e.g., “.com”, “.info”, “.net”, “.org”) are a standard registration requirement and have to be disregarded under the first element in the confusing similarity test. See, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Lastly, the Panel observes that the disputed domain name is identical to the Complainant’s own domain name <godrejcareers.com> save for the letter “s”. The Panel finds that this is a blatant example of typosquatting where a domain name attracts Internet users who make a small typing error, e.g., forgetting a letter or adding one.

In the said backdrop, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s registered and well-known trademark GODREJ. The Panel accordingly finds that the requirement of paragraph 4(a)(i) of the Policy stands duly satisfied.

B. Rights or Legitimate Interests

The second element under paragraph 4(a) of the Policy requires the Complainant to establish on a prima facie basis that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the Complainant has already submitted evidence that it holds exclusive rights in the trademark GODREJ by virtue of both statutory registrations and common law use, which rights have accrued in the Complainant’s favour long prior to the Respondent’s registration of the disputed domain name on October, 19, 2019.

The Panel observes that the Complainant owns domain name registrations comprising of the trademark GODREJ which also pre-date the date of registration of the disputed domain name. More specifically, the Panel notes that the Complainant’s domain name <godrejcareers.com>, registered on October 16, 2001, hosts a fully functional website which is targeting job seekers in India where the Respondent originates. Annex H of the Complaint.

The Panel is therefore satisfied that the Complainant has made out a prima facie case that the Respondent possesses no rights or legitimate interests in the disputed domain name, the burden of production on this element therefore shifts onto the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent has failed to produce any evidence of any rights or legitimate interests in the disputed domain name and opines that the the Complainant can be deemed to have satisfied the second element under paragraph 4(a)(ii) of the Policy. See, Section 2.1 of the WIPO Overview 3.0.

As the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. See, Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007.

The Panel observes that the Complainant has exclusive rights in the trademark GODREJ and has never licensed, authorized, or consented to the Respondent’s use of the said trademark as a part of the disputed domain name. There is no evidence on the record of this proceeding to suggest that the Respondent has been commonly known by the disputed domain name or the name GODREJ. See, ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957. The Panel notes that the Respondent had deployed a service called Domains By Proxy, LLC which enabled it to register the disputed domain name by keeping its true identity a secret which itself shows that the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel takes note that the disputed domain name <godrejcareer.com> was registered using emails which were subsequently used by the Respondent to make fake job interview invitations to innocent job seekers on behalf of the Complainant. On a perusal of Annex B, B1, L1-L5 and M of the Complaint, the Panel is satisfied the Respondent by its conduct is wrongfully attempting to associate himself with the Complainant, when no such association actually exists. The Panel further finds that the Respondent by impersonating to be the representatives of the Complainant are attempting to defraud innocent job aspirants into depositing a sum of money as registration fees for recruitment in the Complainant’s organization. Using a domain name for apparently illegal activities cannot be the basis of rights or legitimate interests in a domain name. See, Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285.

Based on a perusal of Annex N of the Complaint, the Panel finds that the Respondent is making passive use of the disputed domain name (the disputed domain name does not resolve into a fully functional website). Lastly, the Panel determines that the Respondent has not made a bona fide offering of goods or services or a noncommercial use of the disputed domain name and has not demonstrated any effort to use the disputed domain name for legitimate purpose so as to confer it with a right or legitimate interest in the same in accordance with paragraph 4(c) of the Policy. On the contrary, the Panel finds that the Respondent had registered the disputed domain name in order to cash in on the goodwill of the Complainant’s trademark GODREJ.

Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith:

In order to prevail under the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith according to the Policy, paragraph 4(a)(iii) of the Policy.

According to the Policy, bad faith is understood to occur where a Respondent takes unfair advantage of or otherwise abuses a Complainant’s mark (see, section 3.1 of the WIPO Overview 3.0). The Panel notes that section 3.1.4 of the WIPO Overview 3.0 states that the mere registration of a domain name that is identical to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Previous UDRP panels have consistently found that it ought to be presumed that the Respondent had constructive notice of the Complainant’s trademark if it is shown by the Complainant to be well-known or in wide use on the Internet or otherwise. See, Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320 and SembCorp IndustriesLimited v. Hu Huan Xin, WIPO Case No. D2001-1092.

The Panel observes that the disputed domain name was registered on October 19, 2019, almost 77 years after the Complainant first registered its trademark GODREJ in 1942. The Panel further notes that the Complainant has already placed on record sufficient evidence illustrating not just its rights in the said trademark but also demonstrating that the same is well-known in India.

In the backdrop of the Complainant’s extensive use (dating back to 1897), widespread business activities and multiple GODREJ trademarks / GODREJ formative marks in India, where the Respondent appears to be domiciled, the Panel finds that it is highly unlikely that the Respondent did not have knowledge of the Complainant’s rights in its trademark GODREJ at the time of the registration of the disputed domain name.

As discussed in section 6B above, the undisputed evidence furnished by the Complainant clearly establishes that the disputed domain name has been registered by the Respondent for carrying out a job-related phishing scam by impersonating to be the Complainant. The Respondent is using the disputed domain name to send fake job invitations to innocent job seekers through emails from the disputed domain name (used to create the dispute domain name, Annex B and B1 of the Complaint) in an attempt to defraud them of parting with their money under the pretext of collection of registration fees for securing a recruitment in the Complainant’s organization.

The Panel notes that innocent members of the public on receiving emails from the disputed domain name are likely to mistakenly assume that the emails are being sent by the Complainant and several such instances have been placed on record by the Respondent as Annex L1- L5 and M to the Complaint. As evidence in the said proceedings clearly shows that the disputed domain name was used to commit fraud against the Complainant, the same itself illustrates both bad faith registration and use of the disputed domain name. See, Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017.

The Panel therefore finds that the Respondent obviously knew of the Complainant’s rights in the GODREJ trademark and specifically targeted its brand by cheating and misleading innocent job seekers. The unopposed allegation of phishing, the evidence submitted in support of phishing, combined with the likelihood of confusion, is sufficient evidence of bad faith on the part of the Respondent. See, Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471.

The Panel observes that the Respondent is passively holding the disputed domain name and that the same does not resolve into a fully functional website. Previous UDRP panels have ruled that even the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Panel also determines that the Respondent’s use of a Privacy Shield in the circumstances of the present case constitutes additional evidence of bad faith.

Absent any explanation from the Respondent, the Panel cannot conceive of any plausible good faith use of the disputed domain name that could be made by the Respondent, The Respondent’s conduct in registering the disputed domain name therefore constitutes opportunistic bad faith.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of 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, <godrejcareer.com> be transferred to the Complainant.

Shwetasree Majumder
Sole Panelist
Date: August 11, 2020