Complainant is ZipRecruiter Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
Respondent is Domains By Proxy, LLC, United States / Kevin Jacobsen, United States, represented by The Law Office of John S. Eliasik, United States. 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 6, 2020. On March 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 13, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 18, 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 Respondent of the Complaint, and the proceedings commenced on March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. On April 9, 2020, Respondent requested an extension to file the Response. The Response due date was extended to April 19, 2020. The Response was filed with the Center on April 18, 2020. The Center appointed John C. McElwaine as the sole panelist in this matter on May 11, 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 Complainant is a United States-based online employment marketplace for job seekers and employers. Complainant owns a United States trademark registration for ZIPRECRUITER in Class 42, United States. Reg. 3934310, registered on March 22, 2011; a European Union trademark registration for ZIPRECRUITER in Classes 9, 36, 41 and 42, Reg. No. 015070873, registered on June 13, 2016; and a Canadian trademark registration for ZIPRECRUITER in Classes 9, 41 and 42, Reg. No. TMA979480, registered on August 28, 2017. Respondent is an individual located in the United States. The Domain Name was registered by Respondent with the Registrar on February 14, 2017 and it currently resolves to a parked page containing pay-per-click links (“PPC”), related to Complainant’s activities. 5. Parties’ Contentions A. Complainant Complainant describes itself as a well-known American online recruitment company founded in 2010 that provides services to commercial entities and individuals. Complainant alleges that it has over 7 million active job seekers, over 40 million job alert email subscribers and over 10,000 new companies using its services every month. Complainant claims it currently has marketing operations in the United States, Canada and the United Kingdom. As discussed above, Complainant owns trademark registrations for ZIPRECRUITER in the United States, Canada and European Union. In addition, Complainant’s website features the ZIPRECRUITER logo extensively as part of the promotion of its services, which is located at “www.ziprecruiter.com”. Complainant’s web-based platform is the foundation of its business, allowing employers to post jobs and manage the applicant process, as well as permitting job seekers to search and/or receive alerts regarding the latest job posts. Collectively, Complainant’s common law and registered trademark rights in ZIPRECRUITER are referred to herein as the “ZIPRECRUITER Mark”. With respect to the first element of the Policy, Complainant contends that the Domain Name is confusingly similar to Complainant’s registered ZIPRECRUITER Mark. Complainant argues that the addition of the letters “md” in Domain Name does not sufficiently distinguish the Domain Name from Complainant’s ZIPRECRUITER Mark, which is wholly encompassed in the Domain Name. With respect to the second element of the Policy, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Respondent is not authorized or licensed to use Complainant’s ZIPRECRUITER mark, and (iii) Respondent is using the Domain Name to display a PPC advertising page, which contains links thematically similar to Complainant’s expertise and links that redirect to the websites of Complainant’s competitors. Lastly, with respect to the third element of the Policy, Complainant asserts that its ZIPRECRUITER Mark was in use in commerce for seven years prior to the registration of the Domain Name. Further, Complainant alleges that Respondent operates a job search website for physicians and medical practitioners, and thus, Respondent must have known of Complainant when registering the Domain Name, and chose the letters “md” as a direct reference to “doctor of medicine”. Complainant points out that upon identifying the registration of the Domain Name, it sent a cease and desist letter on January 27, 2020 to Respondent. Complainant contends that no response was received, and that a final reminder was sent on the February 4, 2020. Complainant argues that since Respondent was given a chance to defend its case but chose not to is further evidence to suggest that Respondent registered and is using the Domain Name in bad faith. B. Respondent Respondent admits that he registered the Domain Name on February 14, 2018. Respondent asserts that he is the owner of Priority Physicians, Inc. (“Priority Physicians”), which is in the business of recruitment and placement of medical doctors. Respondent alleges, upon information and belief, as of February 14, 2018, Complainant was in the business of recruiting and job placement, and at this time intended to move into the area of recruitment and placement of medical doctors, in direct competition with Priority Physicians. As a result, Respondent asserts that he registered the Domain Name with the intention of eventually creating a website at the Domain Name for comparative advertising between the services offered by Complainant and Priority Physicians. Respondent contends that he never used the Domain Name for a commercial purpose. Respondent claims that he is in no way involved with the alleged PPC advertising page referenced by Complainant in the Complaint and he has derived no income from the alleged advertising page. Further, Respondent disputes that the alleged "advertising page" is set up for commercial purpose. Instead, Respondent explains that the alleged "advertising page" was set up by GoDaddy.com in order to "park" the Domain Name. Respondent reiterates that he has never used, or intends to use, the Domain Name in connection with the direct offering of any services. Respondent claims that he has never attempted to sell, rent or otherwise transfer the Domain Name to Complainant, outside of an attempt to settle the current dispute to avoid the cost of litigation. 6. Discussion and Findings Paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must prove its assertions with evidence demonstrating: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Complainant bears the burden of establishing each of the three elements by a preponderance of the evidence. See, e.g., F. Hoffmann-La Roche AG v. Relish Enterprises,WIPO Case No. D2007-1629. Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.2. Complainant has provided evidence that it is the owner of the United States, Canadian and European Union trademark registrations for ZIPRECRUITER that predate Respondent’s registration of the Domain Name. The Domain Name is wholly comprised of Complainant’s ZIRECRUITER Mark plus the additional abbreviation, “md”. The abbreviation “md” is intended to represent the words “medical doctor” or “doctor of medicine”. It is well-established that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a trademark in a domain name does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s ZIPRECRUITER Mark in which Complainant has valid trademark rights under the UDRP. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy, paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Respondent may establish a right or legitimate interest in the 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 noncommercial 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.” The Panel finds that Complainant has not authorized Respondent to use the ZIPRECRUITER Mark. The Panel further accepts that Respondent is not commonly known by the Domain Name, instead operating a competing business under the trade name Priority Physicians, Inc. Accordingly, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. Furthermore, the Panel finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. This Panel agrees with the viewpoint that to register domain names and park them to earn rental revenue by allowing a third party to use the domain name is not by itself to be considered a bona fide use of the domain name in connection with the offering of goods or services by the registrant of that domain name. Trade Me Limited v. Vertical Axis Inc.,WIPO Case No. D2009-0093. However, the Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in section 2.9 of the WIPO Overview 3.0. None of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases that support the PPC links genuinely related to the dictionary meaning of the Domain Name. Instead, the Domain Name appears to have been registered with the intent that Internet users searching for Complainant will be directed to Respondent’s parked webpage for commercial gain of a third-party. Such activity does not provide a legitimate interest in a domain name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita,WIPO Case No. D2014-1726. Respondent does not dispute that Respondent is not commonly known by the Domain Name or that Respondent is not an authorized licensee of Complainant’s ZIPRECRUITER Mark. Rather, in response to Complainant’s allegations that Respondent lacks any rights or legitimate interests in the Domain Name Respondent claims that the Domain Name was registered to create a “website to do comparative advertising between the services offered” by Complainant and Respondent. Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark at issue”. It is certainly possible that a domain name being used for comparative advertising could be “fair use”. However, evidence of such an intended purpose has not been sufficiently presented by Respondent in this case. Examples of evidence of demonstrable preparations to fairly use the Domain Name would include proof of a genuine (i.e., not pretextual) plans or preparations to utilize the Domain Name as a comparison website, credible signs of pursuit of the stated intended use of the Domain Name, and/or other evidence generally pointing to a lack of indicia of cybersquatting intent. See, e.g., WIPO Overview 3.0, section 2.2. While such indicia are assessed pragmatically in light of the case circumstances, clear contemporaneous evidence of bona fide pre-complaint preparations is required. If not independently verifiable by the panel, claimed examples of use or demonstrable preparations to use a domain name in connection with a bona fide offering of goods or services cannot be merely self-serving, but should be inherently credible and supported by relevant pre-complaint evidence. The Panel finds that Respondent’s asserted rights or legitimate interests in the Domain Name appear to be pretextual. Respondent registered the Domain Name in February of 2018. More than two years later, Respondent has not developed such a comparative advertising website and failed to come forward with any evidence in its Response of its plans to develop the website, such as draft website content. It is telling that Respondent could not, or did not, offer other evidence supporting its alleged legitimate use of the Domain Name, since this evidence would be in the custody and control of Respondent. Other than a self-serving statement, Respondent has not provided any other corroborating evidence of Respondent’s demonstrable preparations to use the Domain Name in connection with a website comparing Complainant’s and Respondent’s services. In sum, the Panel is not able to square Respondent’s claims of a bona fide intention to use the Domain Name without some evidence of the intended comparison website, which surely exists, if true. Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name and the Panel finds, on balance of probabilities and based on the evidence of record, that Respondent has failed to rebut Complainant’s prima facie showing. Specifically, the Panel finds that Respondent’s asserted rights or legitimate interests in the Domain Name do not meet its evidentiary burden as Respondent has not provided any clear contemporaneous evidence of Respondent’s bona fide pre-complaint preparations to use the Domain Name as a comparison website. Accordingly, the Panel accepts that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Complainant has alleged that Respondent registered the Domain Name in bad faith because Respondent knew of the preexisting trademark rights that Complainant possessed in the ZIPRECRUITER Mark. Complainant further alleges that Respondent used the Domain Name in bad faith by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. In response, Respondent admits that it knew of Complainant’s name and trademark and that Complainant and Respondent are competitors. However, Respondent contends his actions were not in bad faith because he registered the Domain Name to create website comparing Complainant’s and Respondent’s services. As discussed herein, Respondent registered the Domain Name, which is confusingly similar to Complainant’s ZIPRECRUITER Mark, which was parked with a service that created a webpage providing links to Complainant’s competitors. These actions amount to bad faith registration and use. Paragraph 4(b)(iv) of the Policy provides that bad faith may be shown if “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. See Identigene, Inc. v. Genetest Laboratories,WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); CEAT Limited, CEAT Mahal, v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd,WIPO Case No. D2011-1981 (finding bad faith as a result of respondent’s general offer to sell the domain name). Any argument that Respondent may assert that he is not accountable for the infringing content on his website is without merit. Numerous panels have rejected such an argument, holding respondents are still responsible for the content of a parked webpage. Stuart Weitzman IP, LLC v. DVLPMNT Marketing, Inc.,WIPO Case No. D2014-1858; Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474 (“Respondent appears to claim that he is not responsible for the content of the parking page, but this is no defense.”); and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. As detailed above, the Panel finds on the record before it that Respondent’s alleged intention in registering the Domain Name was not sufficiently proven and that it is more likely than not that Respondent acquired the Domain Name primarily to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. Moreover, Respondent is responsible for the infringing content displayed at the website to which the Domain Name resolves. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(ii) 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 Domain Name John C McElwaine
Sole Panelist
Date: May 25, 2020
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