WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Roni Abraham v. Nautilus Networks LLP / Raj R

Case No. D2021-2953

1. The Parties

The Complainant is Roni Abraham, India, represented by Kayser & Company, India.

The Respondent is Nautilus Networks LLP, India / Raj R, India, represented by Khurana & Khurana, Advocates and IP Attorneys.

2. The Domain Name and Registrar

The disputed domain name <ourseajobs.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 September 8, 2021. On September 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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 the Complainant on September 13, 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 September 15, 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 the Respondent of the Complaint, and the proceedings commenced on September 17, 2021. In accordance with the Rules,
paragraph 5, the due date for Response was October 7, 2021. The Respondent submitted a Response on October 7, 2021.

The Center appointed Shwetasree Majumder as the sole panelist in this matter on October 15, 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

The Complainant is the proprietor of the firm M/s. Sea Line Group, through which they conduct the business of providing recruitments services, consultancy, advertising related to the shipping industry and also publishes a fortnightly magazine titled “Sea And Job”. The Complainant hosts their website on the domain name <seajob.net> which is registered since the year 2003. The Complainant also operates a website on the domain name <seaandjob.com>. The Complainant holds Indian trade mark registrations for SEAJOB.NET (figurative mark) the earliest of which is dated March 28, 2011. The Complainant neither has any registrations nor pending applications for the word or figurative mark “seajob”.

The disputed domain name has been registered on March 6, 2020 and presently redirects to the Respondent’s website at “www.ourseaworld.com”. The Respondent operates a job portal for the maritime and shipping industry through its website “www.ourseaworld.com”.

The Complainant had issued a cease and desist notice dated January 21, 2021 to the Respondent with a demand to cancel the disputed domain name. The Respondent vide its reply dated February 2, 2021 had refused to comply, arguing that the Complainant does not have any trade mark rights in the word “seajob” and claiming that the term is descriptive and generic. Thereafter, the Respondent went on to file cancellation actions against the Complainant’s Indian trade mark registrations SEAJOB.NET (figurative mark) and SEAJOB SHIPPING DIRECTORY on the ground that these marks are descriptive, generic, and hence devoid of distinctiveness. These cancellation actions are yet to be decided by the Indian Trade Marks Office. The Respondent has stated that the Indian Trade Marks Office has in the past refused the Complainant’s trade mark registration for SEAJOB.NET (figurative mark) on February 14, 2019 for being descriptive and devoid of distinctiveness.

5. Parties’ Contentions

A. Complainant

The Complainant is engaged in the business of providing recruitment services, consultancy services, advertising, marketing and promotional services, related to the shipping industry. The Complainant contends that they enjoy the title of preferred shipping job portal and shipping newsletter under their mark SEAJOB contended that under its mark SEAJOB.

It is the Complainant’s case that they own and are the registered proprietor of the mark SEAJOB and its variants in India. The Complainant carries on business through their websites hosted on the domain names <seajob.net> and <seaandjob.com>. The domain name <seajob.net> was registered in the year 2003. Documentary proof of their trade mark registrations and WhoIs extracts of their domain name registrations have been attached to the Complaint as Annex 3 and 4 respectively.

The Complainant’s trade mark registrations are for SEAJOB SHIPPING DIRECTORY, SEAJOB INDIAN ANCHOR AWARDS and for the below figurative marks SEAANDJOB and SEAJOB.NET.

The Complainant has argued that their mark SEAJOB has garnered goodwill and reputation in the market. The Complainant has contended that the disputed domain name is identical and/or deceptively similar to their marks and domain name <seajob.net> and that the Respondent has no legitimate rights in the same.

B. Respondent

The Respondent states that since March 2020, they are involved in providing job prospects in the maritime and shipping sector through their website “www.ourseajobs.com” which presently redirects to “www.ourseaworld.com”. The Respondent has argued that the Complainant does not have any rights over the word “seajob” per se but their rights are limited to the figurative mark SEAJOB.NET.

The Respondent has stated that the term “seajob” is descriptive and is commonly used as a phrase to denote the availability of vacancies and employment in maritime industry. The Respondent contends a descriptive term is a weak mark and should receive very limited protection, if any at all and has relied on past UDRP panel decisions. These decisions are Sweeps Vacuum & Repair Center, Inc. v. Nett Corp, WIPO Case No. D2001-0031 and Webvan Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512.

Questioning the Complainant’s rights and ownership over the generic word “seajob”; the Respondent has submitted WhoIs extracts (Annex 11) of third-party domain names including <seajobhunt.com>, <findseajobs.com>, <seashorejobs.in>, and <seamanjobsolution.com> and has contested that there are several businesses within the maritime and shipping industry which use “seajob” in the domain names of their websites. The Complainant has failed to prove any trade marks rights over the term “ourseajobs” being descriptive of the services and also failed to prove that the disputed domain name is similar to the marks in which the Complainant owns any rights.

The Respondent claims to have rights and legitimate interests in the disputed domain name. The Respondent has stated that prior to receipt of any notice of the dispute, there is clear evidence of the use of the disputed domain name in connection with a bona fide offering of services, namely, providing jobs pertaining to the shipping industry. The Respondent has relied on a previous UDRP decision, 24 Seven, Inc. v. IT Freelance / 24x7freelancer, WIPO Case No. D2016-0936.

The Respondent has denied the Complainant’s allegations that the disputed domain name has been registered and/or used in bad faith. The Respondent claims to have simply registered an available generic and descriptive word that best describes its services. The Respondent has contended the fact that the disputed domain name is composed solely of a generic and descriptive term weighs heavily against a finding of bad faith and has relied on the decision of Goldberg & Osborne v. The Advisory Board Forum, Inc., WIPO Case No. D2001-0711.

Finally, in refuting the Complainant’s allegations of bad faith, the Respondent has placed reliance on decision in Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658; where the Panel observed that “It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word”

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove, each of the following three elements required under by a preponderance of evidence:

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.

The Panel notes that the Complainant neither has a pending trade mark application nor a registration for the word mark “seajob”. The Complainant does not even have a registration or pending application for “seajob” as a figurative mark. Yet the Complainant has stated that it is a “registered proprietor of the mark SEAJOB”, which is a slightly misleading statement.

The Complainant has claimed common law rights in the mark SEAJOB and has submitted several Annexes as documentary proof thereof. The Complainant has repeatedly alleged its goodwill and reputation in the mark SEAJOB. The Panel are perused the Complainant’s Annexes but is unable to conclude that the Complainant has trade mark rights in the word mark “seajob”. The Annexes do not show that the Complainant has been using “seajob” as a word mark in respect of its services. Except for its mobile App titled “Seajob” (Annex 8), it appears that the Complainant has always used or has been referred to as SEAJOB.NET or SEAJOB.NET figurative mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3 mentions that to establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.

The Complainant has made conclusory allegations of unregistered rights in mark SEAJOB. Moreover, the Complainant has been inconsistent on the issue whether its rights are over SEAJOB or SEAJOBS. All throughout its cease and desist notice (Annex 14 of the Complaint), the Complainant has alleged rights over the mark SEAJOBS. Strangely, the Complainant has changed this stance in the present Complaint and is now claiming trade mark rights, goodwill, and reputation in the work mark SEAJOB.

It is the Respondent’s case that the mark SEAJOB is descriptive and is commonly used in connection with jobs and job offerings in the marine industry. The Panel is of the view that the word mark SEAJOB for a maritime and shipping job portal is descriptive. WIPO Overview 3.0, section 1.3 mentions that in cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning. The Panel finds that the Complainant has failed to discharge this burden.

The Complainant does have a registration for SEAJOB.NET as a figurative mark. WIPO Overview 3.0, section 1.10 stipulates that design (or figurative/stylized) elements would be incapable of representation in domain names and as such these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element. On this basis, trademark registrations with design elements would prima facie satisfy the requirement that the complainant show “rights in a mark” for further assessment as to confusing similarity.

As highlighted in section 1.7 of the WIPO Overview 3.0, the first element functions primarily as a standing requirement, and the threshold test for confusing similarity 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.

The disputed domain name does not incorporate the entirety of the mark SEAJOB.NET. But as highlighted in section 1.7 of the WIPO Overview 3.0, 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. In the case at hand, the textual component of the Complainant’s figurative mark SEAJOB.NET can be said to be recognizable within the disputed domain name.

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.

In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied.

B. Rights or Legitimate Interests

The Complainant must prima facie show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

As with each Policy element, the ultimate burden of proof rests on the Complainant.

Presently, the disputed domain name redirects to the Respondent’s website on its domain name <ourseaworld.com>. The Respondent has submitted screen shots of its website as Annex 7. The Respondent is operating a maritime and shipping jobs portal on this website. In fact, the Respondent has been using the disputed domain name for such services before any notice of the dispute to the Respondent. The Complainant was aware of the use of the disputed domain name for such services and hence sent the Respondent a cease and desist notice. It is only after this notice that the Respondent re-directed the disputed domain name to its present website hosted on the domain name <ourseaworld.com>.

Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision (see section 4.8 of the WIPO Overview 3.0). Accordingly, this Panel used the historical resources of Internet Archive at “www.archive.org” in order to obtain an indication of how a disputed domain name may have been used in the relevant past. The Panel found that at least on March 5, 2021, the Respondent had a functional website on the disputed domain name for maritime and shipping job vacancies. The Panel concludes that such use predates the filing of the instant proceeding. Upon perusal of the Complainant’s cease and desist notice and paragraph 2 of the Complaint, Panel finds that the Complainant was aware of such use of the disputed domain name before it sent a cease and desist notice to the Respondent.

Additionally, the Respondent has argued that the term “seajob” is descriptive and is commonly used in connection with jobs and job offerings in the marine industry and hence it has rights to use the term in the disputed domain name like several other third parties in the industry.

Therefore, the Panel concludes that the Complainant has failed to demonstrate that the Respondent has no rights and legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The facts and circumstances of the case indicate that the Respondent has not registered the disputed domain name primarily for the purpose of selling it to the Complainant or necessarily to prevent the Complainant from reflecting the word SEAJOB in a corresponding domain name. The Respondent is operating a business under the disputed domain name. The Respondent states to have “simply registered an available generic and descriptive word that best describes the services provided by the Respondents”. As a follow up to this claim, while not dispositive of the issue at hand (but merely affirming the descriptiveness of the disputed domain name), the Respondent has cited third-party websites on domain names including <seajobhunt.com>, <findseajobs.com>, <seashorejobs.in>, and <seamanjobsolution.com>. Although extracts of these have not been submitted as evidence, the Panel has visited each of these domain names and confirms that these are functional websites providing maritime and shipping job vacancies.

In view of the above, the Panel finds that the Complainant has failed to demonstrate that the Respondent registered or used the disputed domain in bad faith according to paragraph 4(a)(iii) of the Policy.

The Panel notes that while the Complainant has existed for nearly two decades the subject mark is also descriptive (and therefore potentially subject to third party overlapping uses), and if it believes it may have a claim e.g., for unfair competition, it would need to advance such in court.

7. Decision

For the foregoing reasons, the Complaint is denied.

Shwetasree Majumder
Sole Panelist
Date: October 29, 2021