WIPO Domain Name Decision D2020-0660 for ziprecruitercareers.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION ZipRecruiter Inc. v. Privacy Administrator, Anonymize, Inc. Case No. D2020-0660 1. The Parties

Complainant is ZipRecruiter Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.

Respondent is Privacy Administrator, Anonymize, Inc., United States. 2. The Domain Name and Registrar

The disputed domain name (“Disputed Domain Name”) is registered with Epik, Inc. (the “Registrar”). 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 18, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 23, 2020, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 16, 2020.

The Center appointed Scott R. Austin as the sole panelist in this matter on April 23, 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 states in its Complaint, and provides evidence in the respective Annexes attached to its Complaint sufficient to support that:

1) Founded in 2010, “Complainant is a well-known American online recruitment company, attracting over 7 million active job seekers, over 40 million job alert email subscribers and over 10,000 new companies every month.”;

2) “Complainant segments their business into two main categories, providing their services to individuals and services for commercial entities.”;

3) “Complainant currently has marketing operations in the United States, Canada and the United Kingdom.”;

4) Complainant has submitted its Complaint based on “its substantive rights and interests in the term “ZIPRECRUITER” [(the “ZIPRECRUITER Mark”)].;

5) Complainant has developed rights in the ZIPRECRUITER Mark through its “exclusive, extensive, and consistent use of the [ZIPRECRUITER Mark] within the global marketplace.”;

6) “Complainant has zealously expanded its trademark portfolio across various jurisdictions globally” and has registered the ZIPRECRUITER Mark in a number of jurisdictions, including but not limited to, the following:

a) United States Trademark Registration No. 3,934,310, ZIPRECRUITER, registered on March 22, 2011, claiming a first use date of at least as early as March 4, 2010, for “Computer services, namely, providing a website featuring temporary use of non-downloadable software for use in online personnel recruiting, posting job openings online, screening and interviewing job applicants online, and storing resumes online” in International Class 42;

b) European Union Trademark Registration No. 015070873, ZIPRECRUITER, registered on June 13, 2016, for a range of goods and services in International Classes 9, 36, 41, and 42; and

c) Canadian Trademark Registration No. TMA979480, registered on August 28, 2017, claiming use in Canada at least as early as March 04, 2010, for a range of goods and services in International Classes 9, 41, and 42.;

7) Complainant is the registrant of a number of domain names which incorporate its ZIPRECRUITER Mark, including , which it registered on February 23, 2010, and from which it operates its web-based platform through its website located at “www.ziprecruiter.com”, as well as country code Top-Level Domains such as registered May 2015, registered June 2015, and registered January 2016;

8) Complainant’s web-based platform “is the foundation of their business, allowing employers to post jobs and mage the applicant process, as well as permitting job seekers to search and/or receive alerts regarding the latest job posts.”; and

9) The Disputed Domain Name was registered by Respondent on November 9, 2019, and resolves to a “website that hosts a Pay-Per-Click (PPC) advertising page, which contains links thematically similar to the Complainant’s expertise and is also used to advertise its sale” and “some of the links hosted on the website redirect to websites of competitors.” 5. Parties’ Contentions A. Complainant

The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because:

a) “[W]here a Complainant holds a registered trademark in any country, this prima facie satisfies the threshold of having trademark rights for the purpose of standing to file a UDRP case.”;

b) “Complainant holds numerous trademark registrations for the [ZIPRECRUITER Mark] registered in various jurisdictions.” since as much as 8 years prior to Respondent’s registration of the Disputed Domain Name.

c) “[P]revious Panels have recognized the value of the [ZIPRECRUITER Mark] and its association with the Complainant”;

d) “Complainant submits that their registered trademark is recognizable within the limits of the second level of the Disputed Domain Name”;

e) “[T]he addition of descriptive terms, such as ‘careers’, which is descriptive of the Complainant’s business, does not change the overall impression of the designation as being a domain name connected to the Complainant and its trademark.”;

f) “[T]he addition of the generic term to the Disputed Domain Name does not diminish the confusing similarity of the Domain Name with the Complainant’s trademark.”; and

g) “Complainant requests that the Panel disregards [the Top-Level Domain ‘.com’] under the first element as it is a standard registration requirement.”

Respondent has no rights or legitimate interests in the Disputed Domain Name because:

a) “Respondent has not registered any trademarks for the term ‘ZIPRECRUITER’, and there is no evidence that the Respondent holds any unregistered rights to the term ‘ZIPRECRUITER’.”;

b) “Respondent has not received any license from the Complainant to use a domain name which features the [ZIPRECRUITER Mark].”;

c) “[P]arked pages comprising PPC links [do] not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark”;

d) “Respondent has deliberately used the distinctive [ZIPRECRUITER Mark] to create an impression of association with the Complainant, in order to earn revenue generated from redirections.”;

e) “Respondent is not known, nor have they ever been known as ‘ZIPRECRUITER’.”;

f) “[T]here is no plausible reason for the registration and use of other than to take advantage of the goodwill and valuable reputation attached to the ‘ZIPRECRUITER’ brand”;

g) “Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the mark in any way.”; and

h) “[T]he evidence shows that the Respondent is not making legitimate noncommercial or fair use of the Domain Name.” because “Respondent is generating monetary revenue through misleadingly diverting online users to the Disputed Domain Name, which is confusingly similar to the Complainant’s trademark.”

The Disputed Domain Name has been registered and is being used in bad faith because:

a) “[B]ad faith is understood to occur where the Respondent has “taken unfair advantage of or has otherwise abused a Complainant’s mark”;

b) “Complainant’s earliest ‘ZIPRECRUITER’ trademark registration predates the creation date of the Disputed Domain Name by at least 8 years.”;

c) “[A]nyone who has access to the Internet can find the Complainant’s trademark on public trademark databases” and in “results on popular search engines such as Google for the term.”;

d) “[A] cease and desist letter was sent out to the Respondent on the [January 27,] 2020” as well as “a final reminder was sent on [February 4,] 2020.” Complainant received no response.;

e) “Respondent’s use to host PPC links […] constitutes a clear attempt to generate a commercial gain by creating a likelihood of confusion with the Complainant’s trademark” which demonstrates the Disputed Domain Name has been used in bad faith; and

f) “While the Respondent may not be in total control of the content which appears on the website [accessed through the Disputed Domain Name], the Respondent is still responsible for the content, and a ‘not me’ defence is not accepted under the UDRP.” B. Respondent

Respondent did not reply to Complainant’s contentions.

Respondent’s default does not automatically result in a decision in favor of Complainant. Complainant must establish each of the three elements required by paragraph 4(a) of the Policy. Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof is on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.”

Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. 6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested:

(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) the Disputed Domain Name has been registered and is being used in bad faith.

The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See section 4.2, WIPO Overview 3.0. A. Identical or Confusingly Similar

Based upon the trademark registrations cited by Complainant, as well as supporting documents, the Panel finds that Complainant has established trademark rights in and to the ZIPRECRUITER Mark used by Complainant in connection with, inter alia, its job posting and recruitment services. Complainant’s rights in its ZIPRECRUITER Mark existed and were used for many years prior to the registration of the Disputed Domain Name.

Complainant contends that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights because the Disputed Domain Name contains the ZIPRECRUITER Mark in its entirety and the addition of the term “careers”, a descriptive term for Complainant’s business of providing a web-based platform for job posting, job search and recruitment services under the ZIPRECRUITER Mark, along with a TLD, and that neither of these additions prevent confusing similarity between Respondent’s Disputed Domain Name and the ZIPRECRUITER Mark.

For the Disputed Domain Name to be found identical or confusingly similar to the ZIPRECRUITER Mark, the relevant comparison is with the second-level portion “ziprecruitercareers” of the Disputed Domain Name, as it is well established that the TLD “.com” may generally be disregarded for this purpose. See WIPO Overview 3.0, section 1.11 (TLD as technical requirement for domain name registration is disregarded under the confusing similarity test).

Prior UDRP panels have found that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term and a TLD to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy, paragraph 4(a)(i). See Philip Morris USA Inc v. Contact Privacy Inc. Customer 1242276235 / NICHAPHA PRADABRATTANA,WIPO Case No. D2018-1138 (panel finds that dictionary word “company”, commonly defined as “a commercial business”, does not alleviate confusing similarity between the Complainant’s trade mark and disputed domain name ).

Essentially, once a disputed domain name is found to incorporate a complainant’s mark in its entirety, analysis of any appended terms on a more complex level, such as likelihood of confusion is unnecessary for a finding of confusing similarity under the first element of the Policy, but may be applied to a finding under the second or third element. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662 (The issue in the analysis of the first factor is not whether there is confusion in the trademark infringement sense (an issue more properly considered under the legitimate interest and bad faith factors), but rather whether there is sufficient similarity between the domain name and the trademark to advance to consideration of the second and third factors.).

Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

One panelist noted in a recent decision citing section 1.7, “[t]hat straightforward test is met here because the Disputed Domain Name wholly incorporates the trademark at issue”, Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC,WIPO Case No. D2019-0633; see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (“that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”);

The Disputed Domain Name here incorporates the entirety of Complainant’s ZIPRECRUITER Mark and that is sufficient for this Panel to find the Disputed Domain Name confusingly similar to Complainant’s ZIPRECRUITER Mark.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests

Under this second element of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate evidence, a complainant is generally deemed to have satisfied the second element under the UDRP. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Respondent here has failed to appear to present any evidence of its rights or legitimate interests in the Disputed Domain Name.

The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name.

First, Complainant contends that “Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the mark in any way.” Complainant also asserts and the WhoIs record submitted in the Annex to the Complaint supports, “Respondent is not known, nor have they ever been known as ‘ZIPRECRUITER’”. The Panel finds that Respondent has neither any connection with Complainant, nor has Respondent been authorized or licensed by Complainant to use and register the ZIPRECRUITER Mark or to register any domain name incorporating Complainant’s ZIPRECRUITER Mark.

Prior panels under the Policy have found that “[i]n the absence of any license or permission from the Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the Disputed Domain Name could reasonably be claimed.” See Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA,WIPO Case No. D2008-0144; see also Six Continents Hotels, Inc. v. Patrick Ory,WIPO Case No. D2003-0098 (“There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to the mark. Consequently, the Panel concludes that the Respondent has no rights nor legitimate interests in the Domain Name given there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Domain Name.”).

Complainant contends Respondent is not commonly known by the Disputed Domain Name or the ZIPRECRUITER Mark, in accordance with paragraph 4(c)(ii) of the Policy. The Panel finds upon review of the record and evidence submitted by Complainant that Respondent is not commonly known by the Disputed Domain Name.

Since Respondent elected to submit no evidence in these proceedings, there is no evidence from Respondent to the contrary, i.e., that Respondent has been authorized or licensed to use Complainant’s ZIPRECRUITER Mark or is commonly known by the Disputed Domain Name.

It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857; see also Marriott International, Inc. v. Thomas, Burstein and Miller,WIPO Case No. D2000-0610 (no rights or legitimate interests when there is no evidence that respondent is commonly known by the domain name).

The Panel accepts Complainant’s contentions that Respondent is not commonly known by the Disputed Domain Name and that Respondent has never been authorized by Complainant to use Complainant’s ZIPRECRUITER Mark. The Panel is therefore satisfied that Complainant has provided sufficient prima facie evidence that Respondent has no rights or legitimate interests in the Disputed Domain Name.

Complainant also contends “[P]arked pages comprising PPC links [do] not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark”.

Complainant has submitted evidence in the record to support its contention that the Disputed Domain Name at the time of filing the Complaint, resolved to a “website that hosts a Pay-Per-Click (PPC) advertising page, which contains links thematically similar to the Complainant’s expertise and is also used to advertise its sale” and “some of the links hosted on the website redirect to websites of competitors”.

Prior UDRP panels have consistently held that respondents that monetize domain names using PPC links targeting the complainant, have not made a bona fide offering of goods or services that would give rise to rights or legitimate interests in a disputed domain name and, therefore, Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy. paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii).

Section 2.9 of WIPO Overview 3.0 provides:

“[P]anels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.” See, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (“when the links on the PPC landing page “are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally do constitute abusive cybersquatting.”); Champagne Lanson v. Development Services/MailPlanet.com, Inc.,WIPO Case No. D2006-0006 (PPC landing page not legitimate where ads are keyed to the trademark value of the domain name); The Knot, Inv. v. In Knot we Trust Ltd, supra; Brink’s Network, Inc. v. Asproductions,WIPO Case No. D2007-0353.

The Panel agrees with Complainant and finds that the actions taken by Respondent and PPC links promoted through its website accessed through the Disputed Domain Name do not confer rights or legitimate interests on Respondent.

In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent has not submitted any argument or evidence to rebut Complainant’s prima facie case. The Panel determines, therefore, that Respondent does not have rights or legitimate interests in the Disputed Domain Name and that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy, paragraph 4(b):

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

(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or

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

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

The Panel finds that Respondent has registered the Disputed Domain Name in bad faith for at least the following reasons.

Complainant contends that given its worldwide use by Complainant of its well-known ZIPRECRUITER Mark, that has been registered for over eight years prior to registration of the Disputed Domain Name and easily found through a simple search on Google, it is implausible that Respondent was unaware of Complainant when it registered the Disputed Domain Name, and, therefore, Respondent’s knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the Disputed Domain Name proves bad faith registration.

The Panel finds that Respondent’s registration of the Disputed Domain Name with awareness of Complainant and the ZIPRECRUITER Mark, and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019-0624.

The Panel also finds that Respondent’s use of the Disputed Domain Name is in bad faith.

Complainant contends “Respondent’s use to host PPC links […] constitutes a clear attempt to generate a commercial gain by creating a likelihood of confusion with the Complainant’s trademark” which demonstrates the Disputed Domain Name has been used in bad faith.

Based on the website to which the Disputed Domain Name resolves, as discussed in detail under Section 6B above, Complainant submits that prior UDRP panels have found bad faith registration and use under Policy paragraph 4(b)(iv) where, as here, a respondent uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”).

In light of the 8 year history of Complainant’s ZIPRECRUITER Mark and Complainant’s significant renown and brand recognition in the United States, where Respondent is located, the Panel finds it is likely that Respondent knew of Complainant’s mark and by incorporating it in its entirety into the Disputed Domain Name, Respondent sought to obtain a commercial benefit by attracting Internet users based on the confusion he created between the Disputed Domain Name and the ZIPRECRUITER Mark. See Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850.

The Panel finds Complainant’s arguments and evidence persuasive and no arguments or evidence submitted by Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the Disputed Domain Name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to Complainant.

Scott R. Austin
Sole Panelist
Date: May 7, 2020

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