WIPO Domain Name Decision D2022-2729 for googziprecruiter.com

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION ZipRecruiter Inc. v. Domains By Proxy, LLC / Carolina Rodrigues Case No. D2022-2729 1. The Parties The Complainant is ZipRecruiter Inc., United States of America ("United States"), represented by SafeNames Ltd., United States. The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar The disputed domain name (the "Disputed Domain Name") 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 July 26, 2022. On July 26, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 26, 2022, 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 August 1, 2022 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 August 4, 2022. 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 9, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 29, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 1, 2022. The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 6, 2022. The page 2 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 an American online recruitment company, ZipRecruiter, Inc. founded in 2010. The Complainant has marketing operations in the United States, Canada, and the United Kingdom. The Complainant is the owner of many trademarks in the world, including in particular the following trademarks (the "ZIPRECRUITER Trademarks"): - The United States trademark ZIPRECRUITER, No. 3934310, registered on March 22, 2011, for products and services in class 42; - The New-Zealand trademark ZIPRECRUITER, No. 1036562, registered on August 4, 2016, for products and services in classes 9, 36, 41, 42; - The European Union trademark ZIPRECRUITER, No. 015070873, registered on June 13, 2016, for products and services in classes 9, 36, 41, 42; - The Canadian trademark ZIPRECRUITER, No. TMA979480, registered on August 28, 2017, for products and services in classes 9, 41, 42; - The Australian trademark ZIPRECRUITER, No. 1749916, registered on February 3, 2016, for products and services in classes 9, 36, 41, 42. The Complainant has also registered the domain name and country-code Top-Level Domains. The Disputed Domain Name was registered on February 11, 2022 and is linked to a Pay-Per-Click ("PPC") website, providing links thematically similar to the Complainant's activity. 5. Parties' Contentions A. Complainant First, the Complainant states that it is the owner of substantive rights and interest in the term "ZIPRECRUITER" including registered trademarks prior to the registration of the Disputed Domain Name by the Respondent. The Complainant adds that it 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. The Complainant also relies on the goodwill and recognition of the ZIPRECRUITER Trademark, as it has been recognized as one of the fastest growing technology companies in North America, ranking at 350 in Deloitte (2019) technology Fast 500. The Complainant also promotes its brand on national television and has established a strong social media presence, on Twitter, Instagram, YouTube and Facebook, to promote its services under the ZIPRECRUITER Trademarks. Then, the Complainant adds that the Disputed Domain Name incorporates the ZIPRECRUITER Trademarks in its entirety, with the only differing element being the addition of the letters "goog" which does not prevent a finding of confusing similarity as the Complaint's trademark remains recognizable. The Complainant also notes that the generic top-level domain ("gTLD") ".com" featured in the Disputed Domain Name, is a standard registration requirement. page 3 Second, the Complainant states that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. To the best of the Complainant's knowledge, the 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". Moreover, the Complainant states that the Respondent has not received any license from the Complainant to use a domain name which features the ZIPRECRUITER Trademarks and that all active trademarks for the term "ZIPRECRUITER" are held by the Complainant. The Complainant also submits there is no bona fide offering of goods or services attached to the Disputed Domain Name as the Disputed Domain Name is linked to a website currently hosting a PPC advertising page, containing links thematically similar to the Complainant's activities. The Complainant adds that there is no plausible reason for the registration and use of the Disputed Domain Name other than to take advantage of the goodwill and valuable reputation attached to the Complainant's trademarks. The Respondent attempts to generate monetary revenue by misleadingly diverting online users to the Disputed Domain Name, which is confusingly similar to the Complainant's trademarks. Third, the Complainant submits that the Respondent registered the Disputed Domain Name in bad faith as: (i) the ZIPRECRUITER Trademarks precedes the Disputed Domain Name's registration, and the Complainant has accrued substantial goodwill and recognition since its creation in 2010; (ii) the selection of the Disputed Domain Name that is so obviously connected to the ZIPRECRUITER Trademarks strongly suggests 'opportunistic bad faith'; and (iii) the Respondent has not responded to the cease-and-desist letter sent by the Complainant in order to put the Respondent on notice of the ZIPRECRUITER Trademarks and rights and with a view to resolving the matter amicably. The Complainant also asserts that the Respondent used the Disputed Domain Name in bad faith since: (i) the Disputed Domain Name is linked to a PPC website containing links thematically similar to the Complainant's activities which constitutes an attempt to generate a commercial gain by creating a likelihood of confusion with the ZIPRECRUITER Trademarks; and (ii) The Respondent has continually registered domain names pertaining to famous brands, either through typosquatting or appending terms to the mark and was already involved in 7 domain disputes with the Complainant itself. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant shall prove the following three elements: (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. page 4 A. Identical or Confusingly Similar According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. First of all, the Panel finds that the Complainant has provided evidence that it has rights in the ZIPRECRUITER Trademarks. Then, the Panel recalls that the first element of the UDRP serves essentially 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. This test 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 domain name. 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition ("WIPO Overview 3.0")). The Panel finds that the Disputed Domain Name is composed of: the ZIPRECRUITER Trademarks in their entirety; preceded by the letters "goog"; and the gTLD ".com". The Disputed Domain Name therefore mainly consists of the ZIPRECRUITER Trademark. According to prior UDRP panel decisions, it is sufficient that the domain name incorporates the entirety of a trademark, in order to consider the domain name as confusingly similar to that mark for purposes of UDRP standing. The mere addition of another word to a mark does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview 3.0). The Panel considers that, in this case, the addition of the letter "goog" to the Complainant's trademark does not prevent a finding of confusing similarity. Finally, the gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark. Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant's Trademark and that the Complainant has established the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the Disputed Domain Name. These circumstances are: - before any notice of the dispute, the respondent's 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 - the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or page 5 - the respondent is 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. According to prior UDRP panel decisions, it is sufficient that a complainant shows prima facie that a respondent lacks rights or legitimate interests in a domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Indeed, while the overall burden of proof in a UDRP proceedings is on the complainant, UDRP 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 prima facie that a 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 (see section 2.1 of the WIPO Overview 3.0). According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Indeed, it appears that the Complainant has never authorized nor licensed the use of the ZIPRECRUITER Trademark by the Respondent. Moreover, the Panel finds that there is no evidence that the Respondent is commonly known by the Disputed Domain Name or that the Respondent has the intent to use the Disputed Domain Name in connection with a bona fide offering of goods or services. On the contrary, the Disputed Domain Name resolves to a PPC website including links thematically similar to the Complainant's activities. In any case, the Respondent did not reply to the Complainant's contentions. Therefore, according to the Policy, paragraphs 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights to or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the Disputed Domain Name has been registered and is being used in bad faith. Thus, 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 online 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. page 6 First, the Panel considers that the Complainant has provided evidence of the use of the ZIPRECRUITER Trademark and that it is widely known within its sector. Thus, the Panel finds it unlikely that the Respondent did not have knowledge of the ZIPRECRUITER Trademarks at the time of registration of the Disputed Domain Name. In any event, the Panel finds that the Respondent had or should have had such knowledge because of the Complainant's registration of the trademark. Moreover, the Panel points out that the Disputed Domain Name resolves to a PPC website including links thematically similar to the Complainant's activities. In this case, the Panel believes that such use of the Disputed Domain Name proves that the Respondent acts in bad faith. In addition, the Respondent has not provided any answer to the Complainant's contentions. Moreover, it appears that the Respondent has been involved in numerous cybersquatting cases brought before the Center, including several cases against the Complainant. Considering all of the above, the Panel finds that it is not possible to conceive of any plausible actual or contemplated good faith registration and use of the Disputed Domain Name by the Respondent. Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the Disputed Domain Name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b). 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 the Complainant. /Christiane Féral-Schuhl/ Christiane Féral-Schuhl Sole Panelist Date: September 20, 2022


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