WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZipRecruiter Inc. v. Mark Barrows
Case No. D2020-1486
1. The Parties
Complainant is ZipRecruiter Inc., United States of America (“United States” or “USA”), represented by SafeNames Ltd., United Kingdom.
Respondent is Mark Barrows, Nigeria.
2. The Domain Name and Registrar
The disputed domain name is <ziprecruiterusa.com> which is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2020. On June 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 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 June 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2020.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on July 8, 2020. This Panel finds that it was properly constituted. This 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 company headquartered in the United States that operates an online recruitment business.
Complainant has rights over the ZIPRECRUITER mark for which it holds registration No. 3934310 in class 42, registered on March 22, 2011, with the United States Patent and Trademark Office; registration No. 015070873 in classes 9, 36, 41 and 42, registered on June 13, 2016, with the European Union Intellectual Property Office; and registration No. TMA979480 in classes 9, 41 and 42, registered on August 28, 2017, with the Canadian Intellectual Property Office.
Complainant is the registrant of the domain name <ziprecruiter.com> created on February 23, 2010.
The disputed domain name was registered on February 12, 2020. Before the Complaint was filed, the disputed domain name was used as an email address. The disputed domain name used to resolve to a parked page with almost no content. By the time the Complaint was filed the website associated with the disputed domain name was shut down by the Registrar as per Complainant’s request.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows.
Complainant is a well-known 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. Initially founded in 2010, Complainant currently has marketing operations in the United States, Canada and the United Kingdom.
Complainant holds numerous trademark registrations for ZIPRECRUITER, which cover multiple jurisdictions.
Complainant operates from the website located at “www.ziprecruiter.com”. Complainant’s web-based platform is the foundation of its business, allowing employers to post jobs and manage the application process, as well as permitting job seekers to search and/or receive alerts regarding the latest job posts. Complainant has also reflected its mark in other domain names, such as <ziprecruiter.co.uk> created in September 2010, <ziprecruiter.co> created in May 2013, <ziprecruiter.com.au> created in June 2015, and <ziprecruiter.fr> created in January 2016.
Complainant has established a social media presence and uses the ZIPRECRUITER mark to promote its services in Facebook, Twitter, Instagram, and YouTube.
The disputed domain name is confusingly similar to Complainant’s ZIPRECRUITER mark. The disputed domain name incorporates Complainant’s mark in its entirety, positioned immediately before the geographical indicator “USA”, in which Complainant’s headquarters are based. Any Internet users familiar with Complainant’s mark will believe they are accessing a site pertaining to Complainant’s United States operations, under Complainant’s control.
Respondent lacks rights and legitimate interests in the disputed domain name.
Respondent has no connection nor affiliation with Complainant and has not received a license nor consent to use the ZIPRECRUITER mark in any way.
Respondent has not registered any marks for the term “ziprecruiter” nor “ziprecruiterusa”. Complainant did not find any evidence suggesting that Respondent retains unregistered mark rights in the terms “ziprecruiter” or “ziprecruiterusa”. Respondent is not known, nor has ever been known, by any of those terms.
Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services. Respondent used the disputed domain name as an email address to profess itself to be an employee of Complainant, with the intention of deriving commercial gain from at least one of Complainant’s clients. Respondent engaged in the severest form of phishing (often referred to as “spear phishing”) by specifically addressing, and tailoring, its email communications to a Complainant’s client. Respondent successfully deceived Complainant’s client into providing sensitive information. Such Respondent’s use of the disputed domain name, as an illegal activity, cannot constitute fair use.
In the emails, Respondent claimed to be an “HR Manager” for Complainant. Respondent falsely professed that identity by devising and using that as an email address linked to the disputed domain name (“[...]@ziprecruiterusa.com”), as well as by including that name and title in the footer of each email. Respondent’s use of the disputed domain name to impersonate/pass itself off as an employee of Complainant cannot be considered bona fide.
Respondent’s communications comprise two emails under the guise of a “shadow shopper” scheme that Complainant’s client supposedly subscribed to. Respondent capitalized on the fact that Complainant advertises legitimate mystery shopper services, to confuse Complainant’s client into believing Respondent’s emails falsely originated from Complainant.
Respondent’s initial email, dated February 28, 2020, states that the recipient has been shortlisted as a representative “to visit wal-mart and apple stores randomly to buy merchandise and share their experience via our feedback assessment form”. It further states that the recipient would shortly receive a “Cashier’s Check, Instruction Letter and Assessment Form”, and requests confirmation of the recipient’s address and mobile number. Respondent’s second email, dated March 5, 2020, confirms that payment to cover the first assignment has been dispatched, and that Complainant’s client should proceed by following the attached instructions once it arrives. Respondent’s second email contains a USPS express mail tracking number, attached to an actual package that was apparently delivered the next day (March 6, 2020) in Evanston, IL, USA. Respondent most likely garnered this sensitive information following its deceptive request for an address in its first email. This is circumstantial evidence of actual confusion experienced by Complainant’s client.
Following a takedown request to the Registrar, the disputed domain name was placed on “clientHold” on May 20, 2020. As a result, the disputed domain name no longer presents any content. Prior to that, the disputed domain name resolved to a parked page containing little meaningful information.
Respondent registered and is using the disputed domain name in bad faith. The ZIPRECRUITER mark is distinctive and not used in commerce other than by Complainant. As such, there is no plausible reason for Respondent’s registration and use of the disputed domain name other than to profit from the goodwill of Complainant’s ZIPRECRUITER mark.
Complainant’s earliest ZIPRECRUITER mark registration predates the disputed domain name’s registration by nine years. Respondent unequivocally knew of Complainant’s mark and international reputation when it registered the disputed domain name. Respondent’s Complainant-targeted phishing correspondence was sent about two weeks after the disputed domain name was registered.
Respondent has used the disputed domain name in bad faith. Respondent intentionally attempted to attract and deceive Internet users by purporting to be an official representative of Complainant. Respondent’s email address and footer correspondence, as well as the furnishing of an apparent verification number, constitute evidence that Respondent is attempting to confuse Complainant’s clients as to the source of those email messages.
Respondent has therefore intentionally capitalized on Complainant’s services and reputation, through the use of multiple layers of deception, to create confusion with Complainant’s mark as to the source of those email communications. Previous UDRP decisions have consistently set forth that a respondent’s engagement in phishing attempts (or other deceptive practices with a view to making a commercial gain) amounts to evidence of bad faith.
Complainant sent a cease and desist letter to Respondent on March 20, 2020, and a follow-up notice on March 30, 2020. Respondent did not reply to either notice, which leads to inferences of bad faith.
A reverse WhoIs search of Respondent’s name and address presents a list of four other domain name registrations, which Respondent owned. Such registrations show Respondent to have registered domain names, which infringe on the marks of third parties. No legitimate or plausible good faith use could be made of Respondent’s trademark-infringing registration.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant.1 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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.
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the ZIPRECRUITER mark.
Since the addition of a generic Top-Level Domain suffix (i.e. “.com”) after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reproduces the ZIPRECRUITER mark, followed by the term “usa”. It is clear to this Panel that “ziprecruiter” is recognizable in the disputed domain name and that the addition of such term in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that it has no relationship with Respondent, that it has not authorized Respondent to use the ZIPRECRUITER mark, and that Respondent is not commonly known by such mark or the disputed domain name.
Although there appears to be no active website currently associated with the disputed domain name, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
Complainant asserts that Respondent is using the disputed domain name as an email address for sending phishing emails to at least one of Complainant’s customers. The evidence in the file shows that such email communications convey the impression that the sender is associated with Complainant, that is, that Respondent has used the disputed domain name to impersonate Complainant. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.2
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
It is clear to this Panel that Respondent should have been aware of the existence of Complainant and the ZIPRECRUITER mark at the time it obtained the registration of the disputed domain name. The evidence in the file leads this Panel to infer that Respondent’s choice of the disputed domain name was deliberate with the intention of impersonating Complainant and potentially deceiving Complainant’s customers.
The fact that the disputed domain name incorporates Complainant’s ZIPRECRUITER mark, conveying the impression that it belongs to Complainant or is somewhat related to Complainant, coupled with the fact that Respondent has sought to impersonate Complainant through the email communications sent from an email address associated with the disputed domain name, and that such email communications were sent to a Complainant’s client, lead this Panel to conclude that Respondent registered and used the disputed domain name in bad faith.
Although there is no evidence that an active website is associated to the disputed domain name, this Panel considers that Respondent’s use of the disputed domain name might well be characterized as phishing, that is, the deceitful obtention of sensitive information or of a payment, by trying to impersonate another by using a domain name confusingly similar to that other’s trademark.3
In this Panel’s view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name.
In light of all the above, this Panel finds that 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, this Panel orders that the disputed domain name <ziprecruiterusa.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: July 22, 2020
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.” See also section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
See CMA CGM v. Diana Smith, WIPO Case No. D2015-1774: “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”; Syngenta Participations AG v. Guillaume Texier, Gobain ltd, WIPO Case No. D2017-1147: “A registrant cannot acquire rights or legitimate interests by the use of a domain name as an email address from which to send phishing emails”.
See Yardi Systems, Inc. v. Abm Black, WIPO Case No. D2019-0057: “Respondent is not using the disputed domain name to resolve to a web site, but rather is using it for spear phishing, employing the disputed domain name in an email address […] This is classic bad faith registration and use”. See also section 3.4 of the WIPO Overview 3.0.