ZipRecruiter, Inc. v Brian Becker

WIPO Case No. D2024-3842

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ZipRecruiter, Inc. v. Brian Becker

Case No. D2024-3842

1. The Parties

The Complainant is ZipRecruiter, Inc., United States of America, represented by SafeNames Ltd., United

Kingdom.

The Respondent is Brian Becker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <invoice-ziprecruiter.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2024. On September 20, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 20, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on September 23, 2024, 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 September 23, 2024.

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 September 27, 2024. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2024.

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The Center appointed Nels T. Lippert as the sole panelist in this matter on October 29, 2024. 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, ZipRecruiter, Inc., is a well-known American online recruitment company. The
Complainant operates an online platform which allows employers to post jobs and manage applications, and
enables job seekers to search for and receive alerts regarding the latest job posts. Since its inception in

2010, the Complainant has served more than one million employers and 120 million job seekers.

The Complainant has registered the ZIPRECRUITER mark in numerous jurisdictions for inter alia “[c]omputer
services, namely, providing a website featuring temporary use of non-downloadable software for use in
online personnel recruiting, posting job openings online, screening and interviewing job applicants online,

and storing resumes online”. Examples include:

- United States Registration No. 3934310, issued March 22, 2011, in Class 42

- European Union Registration No. 015070873, issued June 13, 2016, in Classes 9,36,41,42

- United Kingdom Registration No. UK00915070873, issued June 13, 2016, in Classes 9,36,41,42

- United Kingdom Registration No. UK00915070881, issued June 13, 2016, in Classes 9,36,41,42

- United Kingdom Registration No. UK00915644041, issued November 4, 2016, in Classes 9,36,41,42 In addition, the Complainant is the owner of registrations of the ZIPRECRUITER mark in other jurisdictions around the world. - Canada Registration No. TMA979480, issued August 28, 2017, in Classes 9,41,42

The Complainant operates its online platform from “ The Complainant registered the domain name in February 2010 and has registered other ccTLDs including the ZIPRECRUITER mark in subsequent years. In addition, the Complainant is active on social media, promoting its products and service online under the ZIPRECRUITER mark.

The disputed domain name was registered on June 24, 2024. At the time of the Complaint, the disputed domain name did not resolve to an active website or webpage but was previously used to direct Internet users to Pay-Per-Click advertisement links that redirected users to offerings that competed with the

Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the Complainant further alleges the Respondent does not have any trademark rights to the term “ziprecruiter”, “invoice-ziprecruiter” or any similar term. Furthermore, the Complainant asserts that the Respondent does not have any unregistered trademark rights to the ZIPRECRUITER mark. The Complainant notes that it has not licensed the Respondent to use either the disputed domain name or the ZIPRECRUITER mark. The Complainant further submits that the Respondent has not used, nor prepared to use, the disputed domain name in connection with a bona fide offering of goods or services nor is the Respondent known or has ever been known by the term ZIPRECRUITER.

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B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As noted above, the Respondent did not respond to the Complainant’s allegations. Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint. The Panel does not find any exceptional circumstance in this case.

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the

complainant has rights; and

(ii) The 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.

Under paragraph 15(a) of the Rules, “[a] Panel shall 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”

In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. By defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name.

Moreover, the Respondent failed to provide any information or reasoning that might rebut the Complainant’s arguments that the Respondent has acted in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “invoice”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Furthermore, it is well established that the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.

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The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent registered the disputed domain name in 2024, many years after the Complainant’s trademark was registered, and initially used the disputed domain name for the apparent purpose of redirecting Internet users to a webpage that displayed Pay-Per-Click hyperlinks to competitors of the Complainant which constitutes an attempt to generate commercial gain by creating a likelihood of confusion with the Complainant’s mark. WIPO Overview 3.0, section 3.1.4. Although the disputed domain name does not currently resolve to a functional webpage, such passive use does not preclude a finding of bad faith use.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of the Complainant’s trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case the passive holding of the disputed

domain name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <invoice-ziprecruiter.com> be transferred to the Complainant.

/Nels T. Lippert/
Nels T. Lippert
Sole Panelist
Date: November 17, 2024