The Complainant is ZipRecruiter Inc., United States of America (“United States” or “U.S.”), represented by Safenames Ltd, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. / Named Redacted . 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2020, regarding both the Disputed Domain Name as well as an additional domain name. On July 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 27, 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. Further, the Registrar indicated that the additional domain name was available for registration. The Center notified the Complainant about the additional domain name on July 29, 2020, after which the Registrar pushed said domain name into an account specified by the Complainant. The Center sent an email communication to the Complainant on August 5, 2020, providing the registrant and contact information disclosed by the Registrar for the Disputed Domain Name, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 7, 2020, which amended Complaint referenced only the Disputed Domain Name. 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 August 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 31, 2020. However, on August 12, 2020, the Center received an email from a third-party, stating in full: “Hi. I received a statement stating a complaint has been filed against me but I have no idea why or who. I do not own a business and some of my personal information included in the statement is incorrect. I am really confused as to what this complaint is and need some clarification.” Accordingly, for the reasons set forth in footnote 1 of this Decision, the Panel has redacted the Respondent’s name from the caption and body of this decision. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on September 8, 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 states that it was founded in 2010 and is “a well-known American online recruitment company, attracting over seven million active job seekers, over 40 million job alert email subscribers, and over 10,000 new companies every month”; that it “provid[es] its services for both individuals and commercial entities”; and that it “has marketing operations in the United States, Canada and the United Kingdom”. The Complainant states that it is the owner of the trademark ZIPRECRUITER in the United States, the European Union, and Canada, including U.S. Reg. No. 3,934,310 (registered March 22, 2011). These trademarks are referred to herein as the “ZIPRECRUITER Trademark”. The Disputed Domain Name was created on May 8, 2020. The Complainant states that the Disputed Domain Name was previously used to redirect to a “fraudulent prize/survey site at a different domain” urging “Internet users to complete a survey on the pretence that they will receive a ‘gift’” and that the Disputed Domain Name “no longer resolves to an active site”. The Complainant states that it sent a cease and desist letter to Respondent on June 1, 2020, and a follow-up notice on June 9, 2020, but Respondent has never replied. 5. Parties’ Contentions A. Complainant The Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the ZIPRECRUITER Trademark because “a side-by-side comparison of the Disputed Domain Name and textual components of the relevant trademark” makes “clear that the Disputed Domain Name is identical to the Complainant’s ‘ZIPRECRUITER’ trademark” given that the “Disputed Domain Name incorporates the ‘ZIPRECRUITER’ mark without the rearrangement or addition of characters”. - The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]o the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term ‘ZIPRECRUITER’”; “the Complainant also cannot find any evidence to suggest the Respondent retains unregistered trademark rights in the term ‘ZIPRECRUITER’”; “the Respondent has not been licensed by the Complainant to use domain names featuring the ‘ZIPRECRUITER’ trademark”; by “us[ing] the Disputed Domain Name to redirect Internet users to fraudulent sites that promise visitors various awards”, “the Respondent has not used, nor prepared to use, the Disputed Domain Name in connection with a bona fide offering of goods or services”; “the Respondent’s use of the Disputed Domain Name, redirecting Internet users to fraudulent prize/survey sites, clearly does not amount to noncommercial or fair use”; and “the Respondent has capitalised on the Complainant’s distinctive ‘ZIPRECRUITER’ mark by redirecting unsuspecting Internet users (otherwise attempting to reach the Complainant’s goods and services) to sites which are attempting to make a commercial gain”. - The Disputed Domain Name was registered and is being used in bad faith because, inter alia, “the Complainant’s earliest ‘ZIPRECRUITER’ trademark registration predates the registration of the Disputed Domain Name by over nine years”; “the Respondent unequivocally knew of the Complainant’s mark and international reputation when it registered the Disputed Domain Name in May 2020”; “the mere registration of a domain name that is identical or confusingly similar […] to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”; “no good faith use could be made of the Disputed Domain Name by the Respondent, and that any Internet users searching the Disputed Domain Name in a browser will be doing so with a view to reaching a site endorsed by the Complainant”; “UDRP panels have consistently found a respondent’s use of a domain name to redirect Internet users to a fraudulent prize/survey site to constitute evidence of bad faith”; and Respondent’s current passive holding of the Disputed Domain Name constitutes bad faith under the doctrine set forth in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, 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. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registrations cited by the Complainant, it is apparent that the Complainant has rights in and to the ZIPRECRUITER Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the ZIPRECRUITER Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “ziprecruiter”) because “[t]he applicable Top-Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”, section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, UDRP, Third Edition (“WIPO Overview 3.0). The Disputed Domain Name contains the ZIPRECRUITER Trademark (and only the ZIPRECRUITER Trademark) in its entirety. As set forth in section 1.7 of WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or 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”. Further, where, as here, a disputed domain name contains a complainant’s trademark, and only such trademark, “it is apparent without the need for elaboration, that the Disputed Domain Name is identical or confusingly similar to” the trademark, Société Air France v. /Indra Armansyah,WIPO Case No. D2016-2027, because in such case “[t]he disputed domain name is obviously identical to the Complainant’s mark”. Icebug AB v. Domain Administrator,WIPO Case No. D2013-1823. Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests The Complainant has argued that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, “[t]o the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for the term ‘ZIPRECRUITER’”; “Complainant also cannot find any evidence to suggest the Respondent retains unregistered trademark rights in the term ‘ZIPRECRUITER’”; “the Respondent has not been licensed by the Complainant to use domain names featuring the ‘ZIPRECRUITER’ trademark”; by “us[ing] the Disputed Domain Name to redirect Internet users to fraudulent sites that promise visitors various awards”, “Respondent has not used, nor prepared to use, the Disputed Domain Name in connection with a bona fide offering of goods or services”; “Respondent’s use of the Disputed Domain Name, redirecting Internet users to fraudulent prize/survey sites, clearly does not amount to noncommercial or fair use”; and “Respondent has capitalised on the Complainant’s distinctive ‘ZIPRECRUITER’ mark by redirecting unsuspecting Internet users (otherwise attempting to reach the Complainant’s goods and services) to sites which are attempting to make a commercial gain”. WIPO Overview 3.0, section 2.1, states: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” The Panel finds that the Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that the Complainant has satisfied the second element 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: (i) circumstances indicating that the registrant has registered or 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 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 a 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 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 the 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. Policy, paragraph 4(b). The Panel agrees with the decision cited by the Complainant, Red Bull GmbH v. Above.com Domain Privacy / Shu Lin,WIPO Case No. D2016-1121, in which the panel found bad faith where “[t]he disputed domain name has been used to deceptively attract Internet users to Respondent’s website. Once an Internet user enters Respondent’s website, it automatically redirects to a page which redirects the user to different webpages, which appear to be phishing for information (e.g., personal details) by offering rewards of considerable value including smart phones and laptop computers”. The Panel also agrees that the passive holding doctrine set forth in the landmark Telstra decision cited above is applicable. In that regard, the strength of the ZIPRECRUITER Trademark, the Respondent’s failure to provide any evidence of good faith use, the Respondent’s use of a privacy service, and its apparent engagement in identity theft support a finding of bad faith registration and use of the Disputed Domain Name. Further, the Respondent’s failure to respond to the Complainant’s demand letter and follow-up notice is additional evidence of bad faith. Encyclopedia Britannica v. Zucarini,WIPO Case No. D2000-0330; and RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242. Accordingly, the Panel finds that the Complainant has proven the third 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 name Douglas M. Isenberg 1 It appears that the Respondent has engaged in identity theft to register the Disputed Domain Name in the name of an uninvolved person. Accordingly, the Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name that includes the named Respondent, and hereby authorizes the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, thatAnnex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788.
Sole Panelist
Date: September 10, 2020
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