WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
ZipRecruiter Inc. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / vina chongwiboon
Case No. D2021-3787
1. The Parties
The Complainant is ZipRecruiter, Inc., United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / vina chongwiboon, United States.
2. The Domain Name and Registrar
The disputed domain name <ziprecruiter.work> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 11, 2021. On November 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2021, 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 November 17, 2021.
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 December 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2022.
The Center appointed A. Justin Ourso III as the sole panelist in this matter on January 14, 2022. 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 is an American company founded in 2010 that has provided since 2011, through an Internet web site at “www.ziprecruiter.com”, and later also through a mobile and tablet application, services, namely, a platform and resources for recruiting, for employers and potential employees to facilitate hiring. It has physical operations in the United States, Canada, and the United Kingdom, and an international social media presence with a substantial following on the major platforms.
The Complainant owns a United States trademark registration, No. 3,934,310, issued on March 22, 2011, its earliest trademark registration, for its well-known word trademark ZIPRECRUITER, in Class 42, for, inter alia, recruiting services offered via a web site. The Complainant also owns registrations for this mark in New Zealand, Australia, the European Union, and Canada, which it obtained in 2016 and 2017, for recruiting and related services.
The Complainant registered its <ziprecruiter.com> domain name on February 23, 2010, and subsequently registered and owns the following additional domain names: <ziprecruiter.co.nz>, <ziprecruiter.com.au>, <ziprecruiter.fr>, <ziprecruiter.co>, and <ziprecruiter.co.uk>, all prior to the Respondent’s registration, using a privacy service, of the Domain Name <ziprecruiter.work> on February 27, 2020. Prior to the filing of the Complaint, the Domain Name resolved to a pay-per-click (“PPC”) web site featuring direct or indirect links to competitors of the Complainant in the recruiting industry.
5. Parties’ Contentions
In addition to facts set forth in the Factual Background in Part 4, regarding the element of confusing similarity with a mark in which it has rights, the Complainant contends that it holds trademark rights in its distinctive, well-known brand, ZIPRECRUITER, by virtue of its trademark registrations; at least five other previous UDRP panels have recognized its trademark rights in its ZIPRECRUITER mark, e.g., ZipRecruiter, Inc. v. Privacy service provided by Withheld for Privacy ehf / Carolina Rodrigues, WIPO Case No. D2021-2184; disregarding the generic Top-Level Domain (“gTLD”), “.work,” the Domain Name is identical to its ZIPRECRUITER trademark; and, in any event, the gTLD is likely to heighten confusion with its mark.
Regarding the element that the Respondent has no rights or legitimate interests in the Domain Name, the Complainant contends that it holds all of the active trademark registrations for the mark ZIPRECRUITER; the Respondent has not registered any trademarks for the term “ZipRecruiter”; no evidence exists that the Respondent holds any unregistered rights in this term; the Complainant has not licensed any rights to its mark to the Respondent; the Respondent is not making a bona fide offering of goods and services at the website to which the Domain Name resolves, instead merely hosting PPC links featuring recruiting that redirect to third-party websites offering directly competitive services; the Respondent is not, and has never been, commonly known by the Complainant’s distinctive trademark and no evidence exists to show otherwise; the Respondent’s use of PPC links to misleadingly redirect Internet users is a commercial use of the Domain Name, but not a bona fide use and not a fair use.
Regarding the element of registration and use of the Domain Name in bad faith, the Complainant contends that its earliest trademark registration predates the creation date of the Domain Name by nine years; the Complainant’s trademark is well-known and easily found on public trademark databases on the Internet; popular search engines such as Google show the Complainant’s brand and services as the first result; the Respondent registered the Domain Name to target the Complainant intentionally and no other reason for its registration is conceivable; the Respondent’s use of the Domain Name to host PPC links to generate a commercial gain from confusion with the Complainant’s trademark is an unfair attempt to capitalize on the reputation of the mark; and the Complainant sent a cease-and-desist letter to the Respondent, to which the Respondent failed to respond, further evidencing its bad faith.
The Complainant requested transfer of the Domain Name.
The Respondent did not submit a response to the Complaint.
6. Discussion and Findings
A. The Effect of the Respondent’s Default
The Respondent has not responded to the Complaint. If a respondent does not submit a response, a panel decides the dispute based upon the complaint. Rules, paragraphs 5(f) and 14(a). Panels decide a complaint on the basis of the statements and documents submitted. Rules, paragraph 15(a).
The Respondent’s default, i.e., the Respondent’s failure to submit a response to the Complaint, does not mean that the Complainant necessarily prevails. Because the Complainant has the burden of proof, Policy, paragraph 4(a), notwithstanding the Respondent’s default, the Complainant must prove the elements of a claim to obtain the requested relief. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3.
In the absence of exceptional circumstances, a respondent’s failure to respond to the Complaint requires that a panel draw the inferences from this failure that it considers proper. Rules, paragraph 14(b). The Panel finds that no exceptional circumstances exist for the failure of the Respondent to submit a response. Accordingly, the Panel infers that the Respondent does not deny the facts alleged and the contentions urged by the Complainant based upon these facts, and will draw all reasonable inferences that are proper from the evidence and the facts found by the Panel. Id.
Although the Panel may draw negative inferences from the Respondent’s default, the Complainant may not rely on conclusory allegations and must support its allegations with evidence to prove the three elements. WIPO Overview 3.0, section 4.3.
B. Elements of a Claim
The Complainant must prove the following three elements to obtain the requested relief: (i) the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in the Domain Name; and (iii) the Respondent registered and is using the Domain Name in bad faith. Policy, paragraph 4(a).
(i) Identical or Confusingly Similar
To prove the first element, the Complainant must prove that (1) it has rights in a trademark, and (2) the Domain Name is identical or confusingly similar to this trademark. Policy, paragraph 4(a)(i).
The Panel finds that the Complainant’s trademark registrations in the United States, New Zealand, Australia, the European Union, and Canada establish the Complainant’s trademark rights in its ZIPRECRUITER mark. WIPO Overview 3.0, section 1.2.1.
Panels typically decide identity or confusing similarity with a side-by-side comparison of the domain name and the textual elements in the trademark, including an aural and phonetic comparison. WIPO Overview 3.0, section 1.7. In doing so, unless it contributes to confusing similarity, panels generally disregard the generic Top-Level Domain (“gTLD”). WIPO Overview 3.0, section 1.11. Here, when disregarding the gTLD, the Domain Name is identical to the Complainant’s trademark.
The Panel finds that the Domain Name is identical to the trademark. Accordingly, the Panel concludes that the Complainant has proven the first element, namely, that the Domain Name is identical or confusingly similar to a trademark in which it has rights.
(ii) Rights or Legitimate Interests
The Policy provides a non-exclusive list of circumstances that, if a panel finds proved, demonstrates that a respondent has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy: (i) before any notice to a respondent of the dispute, its 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) a respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) a 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. Policy, paragraph 4(c).
The Panel finds, on the basis of the Complainant’s trademark registrations and the date of the Domain Name registration, that the Complainant has trademark rights that precede the registration of the Domain Name.
The Complainant has alleged that it has not licensed the Respondent to use its trademark. Because the Respondent has not contested this allegation and the Complainant has certified that the information in the Complaint is complete and accurate, the Panel accepts this allegation as proven for the purposes of the Policy. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 4.3.
Additionally, the Respondent has not claimed that (1) it is using, or has made any preparations to use, the Domain Name in connection with a bona fide offering of goods or services; or (2) it is commonly known by the Domain Name; or (3) it is making a noncommercial or fair use of the Domain Name. For the reasons set forth in this paragraph and the preceding paragraph, the Panel finds that the Complainant has shown, prima facie, the second element – that the Respondent lacks rights or legitimate interests in the Domain Name.
Where a complainant shows prima facie that a respondent lacks rights or legitimate interests, the burden of production on this second element shifts to the respondent to come forward with relevant evidence proving rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1. The Respondent here has not submitted any evidence to rebut the prima facie showing. If a respondent fails to come forward with relevant evidence to rebut the prima facie showing, a complainant is deemed to have proven that the respondent has no rights or legitimate interests in the domain name, satisfying the second element. Id.
Moreover, the Respondent’s use of a PPC site trading on the reputation and goodwill in the Complainant’s trademark to generate revenue for the Respondent is demonstrably a commercial use, but not a bona fide use, and not a fair use. WIPO Overview 3.0, section 2.9. Furthermore, the Respondent’s combination of the targeted trademark with the “.work” gTLD supports this Panel’s finding that the Respondent lacks rights or a legitimate interest in the Domain Name. WIPO Overview 3.0, section 2.14.
Accordingly, the Panel concludes that the Complainant has proven the second element, namely, that the Respondent lacks rights or legitimate interests in the Domain Name.
(iii) Registered and Used in Bad Faith
The Policy provides that the following circumstances are “evidence of the registration and use of a domain name in bad faith: […] (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Policy, paragraph 4(b). WIPO Overview 3.0, section 3.1.3.
Because the scenarios enumerated in paragraph 4(b) of the Policy are without limitation, panels have applied the concept of a “competitor” beyond an ordinary business competitor, to include “a person who acts in opposition to another” for commercial gain. WIPO Overview 3.0, section 3.1.3.
The Complainant has alleged that the Respondent should have been aware of its trademark when it registered the Domain Name. The Respondent has not denied this allegation, and, therefore, the Panel accepts this allegation as proven. Rules, paragraph 14(b) and 10(d); WIPO Overview 3.0, section 3.2.2 and 4.3.
Noting the composition and use of the Domain Name, the Panel cannot conceive of any fair or legitimate reason for the registration of the Domain Name. The selection of the Domain Name, therefore, demands an explanation. Panels have found a respondent’s lack of an explanation, coupled with an absence of rights or legitimate interests, to be a factor tending to show bad faith. WIPO Overview 3.0, section 3.2.1.
Here, the Complainant’s mark is distinctive, the Respondent has failed to submit a response to the Complaint, the Respondent has used a privacy service, the Respondent initially used the Domain Name for a competitive PPC web site for commercial gain, the Respondent selected a gTLD that increases the likelihood of confusion of the Domain Name with the Complainant’s trademark, and the Panel cannot conceive of any plausible good faith use to which the Domain Name might be put, all of which, collectively, compel the Panel to find that the Respondent intentionally chose the Domain Name to take unfair advantage of the Complainant’s trademark and that its use of the Domain Name has disrupted the business of the Complainant in violation of the Policy, paragraph 4(b)(iii) and (iv). WIPO Overview 3.0, sections 3.1.4, 3.2.1, 3.3, and 3.5.
Accordingly, the Panel concludes that the Complainant has proven the third element, namely, that the Respondent registered and has used the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <ziprecruiter.work> be transferred to the Complainant.
A. Justin Ourso III
Date: January 23, 2022