The Complainant is ZipRecruiter Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2020, with regards the disputed domain name The Complainant filed an amended Complaint on March 17, 2020, adding an additional four disputed domain names to the Complaint: 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 March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. The Response due date was extended to April 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Parties that it would proceed to panel appointment on April 21, 2020. The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on April 27, 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, ZipRecruiter, Inc., is an online recruitment company. The Complainant is the holder of various trademark registrations for ZIPRECRUITER across different jurisdictions. The Complainant provides evidence of, inter alia, the following trade and service mark registrations: - ZIPRECRUITER, United States trademark registration No. 3934310, registered on March 22, 2011, in class 42; - ZIPRECRUITER, European Union trademark registration No. 015070873, registered on June 13, 2016, in classes 9, 36, 41, and 42. The Disputed Domain Names were registered on the following dates: Except for According to the evidence provided by the Complainant, The Complainant considers the Disputed Domain Names to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. According to the Complainant, the Respondent has not used the Disputed Domain Names in connection with a bona fide use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Names and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Names were registered and are being used in bad faith for a number of reasons, including typosquatting. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer or cancel the Disputed Domain Names. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities. Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that: i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and ii. the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and iii. the Disputed Domain Names have been registered and are being used in bad faith. The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are ZIPRECRUITER trademarks in which it has rights. The Complainant’s ZIPRECRUITER trademark has been registered and used in connection to the Complainant’s online recruitment products and services. All of the Disputed Domain Names either: i. incorporate the Complainant’s trademark in its entirety, merely adding non-distinctive suffixes and/or prefixes (namely the letter “i” and the word “jobs” in ii. are deliberate misspellings of the Complainant’s ZIPRECRUITER trademark, substituting one letter with another or adding a single letter within the trademark (namely in “ziprecrueter”, “ziprecruitir”, and “ziprecruitetr”). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the Disputed Domain Names, the additions of other generic terms would not prevent a finding of confusing similarity. The Panel is therefore of the opinion that the mere addition of non-distinctive text to the Complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi,WIPO Case No. D2012-1395; Belstaff S.R.L. v. Jason Lau, Sharing,WIPO Case No. D2012-0783; Lime Wire LLC v. David Da Silva / Contactprivacy.com,WIPO Case No. D2007-1168). Additionally, the substitution or addition of a single letter within the Complainant’s trademark does not significantly affect the appearance or pronunciation of Disputed Domain Names. This practice is commonly referred to as “typosquatting” and creates virtually an identical and/or confusingly similar domain name to the Complainant’s trademark (see section 1.9 of the WIPO Overview 3.0; Mapfre S.A. y Fundación Mapfre v. Josep Sitjar,WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero,WIPO Case No. D2009-1050). Additionally, it is well established that hyphens and the Top-Level domains may be disregarded when considering whether the Disputed Domain Names are confusingly similar to the trademarks in which the Complainant has rights. Accordingly, the Panel finds all of the Disputed Domain Names to be confusingly similar to the Complainant’s ZIPRECRUITER trademark. The Complainant has thus made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainants have the burden of establishing that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Names in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0). The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Names and that the Respondent does not seem to have acquired trademark or service mark rights. According to the WhoIs records connected to the Disputed Domain Names, the Respondent is “Carolina Rodrigues”. The Respondent’s use and registration of the Disputed Domain Names was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed. Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The disputed domain name All other Disputed Domain Names resolved to websites displaying sponsored PPC links, some of which referred to services competing with the Complainant’s services. Previous UDRP panels have recognized that “the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark” (see section 2.9 of the WIPO Overview 3.0). In the case at hand, all of the Disputed Domain Names resolving to parking pages displaying PPC links either add one single letter to the Complainant’s distinctive trademark or misspell the Complainant’s trademark, which risks misleading Internet users and compete with or capitalize on the reputation and goodwill of the Complainant’s trademark. This cannot be considered as fair use of the Disputed Domain Names. The Respondent had the opportunity to assert and explain its purported rights or legitimate interests but did not do so. Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Names. In light of the above, the Complainant succeeds on the second element of the Policy. C. Registered and Used in Bad Faith The Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that these are being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052). Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith namely: “(i) circumstances indicating that you [the registrant] have registered or you have 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; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.” In the present case, the Panel finds that the Respondent was aware of the Complainant and its trademark rights when it registered the Disputed Domain Names. All Disputed Domain Names either include the Complainant’s distinctive ZIPRECRUITER trademark in its entirety with the addition of non-distinctive text, or they are deliberate misspellings of the Complainant’s trademark. The Panel finds that the Disputed Domain Names constituting misspellings of the Complainant’s trademark are clear cases of typosquatting, which is evidence of bad faith (ESPN, Inc. v. XC2,WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd,WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager,WIPO Case No. D2011-1951). In the Panel’s view, the Respondent’s typosquatting and registration of multiple domain names comprising the Complainant’s distinctive trademark is also a strong indication of the Respondent’s awareness of the Complainant and its trademark rights. The Panel finds that the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known trademark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007). The Respondent did not use the Disputed Domain Names other than to redirect to the Complainant’s website or in connection with parking pages containing PPC links to websites competing with the Complainant’s services. Previous UDRP panels have consistently found that the mere registration of domain names that are confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: - seeking to cause confusion for the respondent’s commercial benefit, even if unsuccessful; While the intention to earn click-through-revenue may not in itself be illegitimate, the Panel finds that the use of Disputed Domain Names that are confusingly similar to the Complainant’s trademark to obtain click-through-revenue in this case constitutes bad faith use (see Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623). The fact that the PPC links may be automatically generated by a third party cannot discharge the Respondent of any responsibility for the content appearing on the website connected to the Disputed Domain Names under its control (see section 3.5 of the WIPO Overview 3.0). The Panel finds that by using the Disputed Domain Names comprising typo’s or incorporating the Complainant’s trademark to either redirect to the Complainant’s website or in connection with websites containing sponsored links to competitors of the Complainant, the Respondent has intentionally attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. Moreover, the Complainant claims that the Disputed Domain Names have been intentionally registered and used in the view of profiting from the Disputed Domain Names by selling them back in excess of the Respondent’s out-of-pocket costs. The Complainant provides evidence showing that the Respondent advertises the Disputed Domain Names for sale on the platform “www.sedo.com” for a minimum price between USD 500 and USD 899. The Complainant further shows that the Respondent has engaged in a pattern of abusive registrations as the Respondent has been subject to over 180 UDRP proceedings, all of which have ruled in favor of the complainant. The Panel finds that these circumstances further indicate that the Respondent’s intent in registering the Disputed Domain Names was indeed to profit in some fashion from, or otherwise exploit, the Complainant’s trademark (see section 3.1.1 of the WIPO Overview 3.0). By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate. Therefore, the Panel finds that, on the balance of probabilities, the Disputed Domain Names were registered and are being used in bad faith. The Panel deems it unnecessary to address the Complainant’s additional claims in that regardIn light of the above, the Complainant also succeeds on the third and last element 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 Names Flip Jan Claude Petillion
pay-per-click (“PPC”) links, some of which referred to services competing with the Complainant’s services.
- the lack of a respondent’s own rights to or legitimate interests in a domain name;
- redirecting the domain name to the complainant’s website; and,
- absence of any conceivable good faith use (see section 3.1.4 of the WIPO Overview 3.0).
Sole Panelist
Date: May 7, 2020
Full & Egal Universal Law Academy