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WIPO Arbitration and Mediation Center


ZipRecruiter Inc. v. Mark Barrows

Case No. D2020-2735

1. The Parties

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

Respondent is Mark Barrows, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <ziprecruiteramerica.com> (“the Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 19, 2020. On October 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 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 November 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 24, 2020.

The Center appointed Marina Perraki as the sole panelist in this matter on December 1, 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

Per Complaint, Complainant is an 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. Complainant currently has marketing operations in the United States, Canada, and the United Kingdom, and its services and products are used by job seekers and employers in multiple countries around the world. Complainant is also active in India, where over 40,000 open positions are currently available.

Complainant is recognized as one of the fastest growing technology companies in North America, ranking at 231 in Deloitte (2017) technology Fast 500. Complainant was also featured in Forbes (2017), amongst the top 100 world’s best cloud companies.

Complainant operates its web-based platform from its website located at “www.ziprecruiter.com”, 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 holds various trademark registrations consisting of or including the word combination “ZIPRECRUITER””, including:

- the United States trademark registration No. 3,934,310, ZIPRECRUITER (word), filed on July 17, 2010, registered on March 22, 2011 for services in International class 42, with first use in commerce April 3, 2010; and

- the European Union Trade Mark registration No. 015070873, ZIPRECRUITER (word), filed on February 3, 2016, registered on June 13, 2016, for goods and services in International classes 9, 36, 41 and 42.

Complainant is also the owner of domain name registrations for its trademark ZIPRECRUITER, such as <ziprecruiter.fr> registered in January 2016, <ziprecruiter.co> registered in May 2013, and <ziprecruiter.co.uk> registered in September 2010.

The Domain Name was registered on October 5, 2020 and leads to an inactive page.

Respondent had registered also the domain name <ziprecruiterusa.com> that was found to have been made in bad faith (ZipRecruiter Inc. v. Mark Barrows, WIPO Case No. D2020-1486). On March 20, 2020 and March 30, 2020, Complainant sent cease and desist letters to Respondent in respect of that domain name registration, alerting Respondent to Complainant’s prior rights.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name:

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

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

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

A. Identical or Confusingly Similar

The Domain Name incorporates Complainant’s mark ZIPRECRUITER in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

The addition of the word “america”, does not prevent a finding of confusing similarity as the ZIPRECRUITER mark remains clearly distinguishable (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. Craig J. Lovik, WIPO Case No. D2002-0122).

The Panel finds that the Domain Name is confusingly similar to the ZIPRECRUITER mark of Complainant.

Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your 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

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

The Panel finds that Respondent lacks rights or legitimate interests in respect of the Domain Name.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.

Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrated, the Domain Name leads to a parked page. The absence of any active use of the Domain Names does not in this instance amount to a bona fide offering of goods and services (Philip Morris USA Inc. v. Gabriel Hall, WIPO Case No. D2015-1779; Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186).

Furthermore, there is no evidence on record giving rise to any rights or legitimate interests in the Domain Name on the part of Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.

In addition, the Domain Name incorporates in entirety Complainant’s mark combined with the word “america” and thus carries a risk of implied affiliation (WIPO Overview 3.0 , section 2.5.1 ).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration 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 its documented out of pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’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 Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent has registered and uses the Domain Name in bad faith. As per Complaint, Complainant’s mark ZIPRECRUITER is widely used in the sector of online recruitment services. Because the ZIPRECRUITER mark had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering this Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754).

Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark was widely known when the Domain Name was registered, as repeatedly recognized (ZipRecruiter, Inc. v. Perfect Privacy, LLC / Jan Everno, The Management Group II, WIPO Case No. D2019-2274; ZipRecruiter, Inc. v. Domain Admin, Hush Whois Protection Ltd., On behalf of ziprecuiter.com OWNER, c/o whoisproxy.com / Amir Cohen, Hush Privacy Protection Ltd., WIPO Case No. D2019-2273). Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of the ZIPRECRUITER mark on the Internet, namely at “www. ziprecruiter.com” (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). This also in view of the nature of Complainant’s services, namely services provided through an online platform.

Respondent could have searched the United States and European Union trademark registries and would have found Complainant’s prior registrations in respect of the ZIPRECRUITER’s trademark (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata, WIPO Case No. D2012-1338).

Furthermore, the Domain Name incorporates in its entirety Complainant’s mark plus the word “america”, that corresponds to Complainant’s registered seat in America.

As regards bad faith use, Complainant demonstrated that the Domain Name leads to a parked page. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3).

Lastly, the Panel notes that Respondent had registered also the domain name <ziprecruiterusa.com> that was found to have been registered and used in bad faith (ZipRecruiter Inc. v. Mark Barrows, WIPO Case No. D2020-1486).

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name in bad faith.

Complainant has established Policy paragraph 4(a)(iii).

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<ziprecruiteramerica.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: December 15, 2020