ZipRecruiter, Inc. v Carolina Rodrigues, Fundacion Comercio Electronico
WIPO Case No. D2024-2237
•29-07-2024
ARBITRATION
AND
| MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
ZipRecruiter, Inc. v. Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2024-2237
1. The Parties
The Complainant is ZipRecruiter, Inc., United States of America (“United States”), represented by
SafeNames Ltd., United Kingdom.
The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrar
The disputed domain names <oneziprecruiter.com> and <oziprecruiter.com> (the “Disputed Domain
Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2024. On May 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On June 1 and 3, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent (Registration Private) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 4, 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 June 6, 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 June 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 15, 2024.
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The Center appointed Nicholas Weston as the sole panelist in this matter on July 24, 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 was incorporated in the United States in 2010 and operates an online recruitment business that attracts more than 7 million active job seekers and over 10,000 companies each month. The Complainant offers a popular mobile application, available on both Google Play and the Apple Store that has been downloaded more than five million times on Google Play. The Complainant holds a number of registrations for the trademark ZIPRECRUITER, including United States Trademark Registration No. 3934310, registered on March 22, 2011.
The Complainant owns several domain names that comprise of, or contain, the trademark ZIPRECRUITER, including the domain name <ziprecruiter.com> registered in February 2010.
The Respondent registered both of the Disputed Domain Names on February 12, 2024. The Disputed including “Staffing Agencies Nearby”, “Job Recruitment Agencies”, and “Recruitment Platforms”.
Domain Name <oneziprecruiter.com> resolves to a Pay Per Click (“PPC”) landing-page displaying
sponsored links related to recruitment including “Recruitment Platforms”, “Find Jobs”, and “Recruiting
Agencies” at least one of which resolves to a webpage offering an app for download. The Disputed Domain
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 Names.
Notably, the Complainant cites its trademark registrations in various jurisdictions for the mark
ZIPRECRUITER and variations of it, as prima facie evidence of ownership.
The Complainant submits, in essence, that its rights in that the mark ZIPRECRUITER mark predate the confusingly similar to its trademark, because the Disputed Domain Names are comprised of the ZIPRECRUITER trademark and that the addition of the word “one”, and the letter “o”, respectively, before the trademark, are not sufficient to avoid the confusing similarity.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because none of the circumstances set out in paragraph 4(c) of the Policy apply and “[n]either has the Respondent received any license from the Complainant to use a domain name featuring the ZIPRECRUITER trademark”. The Complainant also submits that “the Respondent currently uses the [Disputed] Domain Name <oziprecruiter.com> and previously used the [Disputed] Domain Name <oneziprecruiter.com> to display Pay-Per-Click (PPC) advertisement links that redirect users to third-party websites that offer services competitive to the Complainant …[which]…cannot confer a bona fide offering of goods and services.”
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name were, and currently are, in bad faith, contrary to the Policy and the Rules having regard to the prior use and well-known nature of the Complainant’s trademark. It submits that the Complainant was targeted having regard to the prior use and well-known nature of the Complainant’s trademark, and submits that the use of the Disputed Domain Names for PPC advertising of services that compete with the Complainant, and to induce Internet users to download possible malware or software from an unauthorized source, is use in bad faith.
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B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) that the Disputed Domain Names have been registered and are being used 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 Names. 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. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country. WIPO Overview 3.0, section 1.2.1. The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ZIPRECRUITER in numerous countries.
Turning to whether the Disputed Domain Names are identical or confusingly similar to the ZIPRECRUITER trademark, the Panel observes that each Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ZIPRECRUITER; (b) with, respectively, the addition of the word “one”, and the letter “o” before the trademark; (c) followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of each of the two Disputed Domain Names, specifically: “oneziprecruiter” and “oziprecruiter.”, respectively.
The Panel finds that the entirety of the mark is reproduced within the Disputed Domain Names. Accordingly,
the Disputed Domain Names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.
Although the addition of the word “one”, and the letter “o” before the trademark may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.
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
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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 Disputed Domain Names (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 Names. 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 Names such as those
enumerated in the Policy or otherwise.
The Panel notes the evidence that the Disputed Domain Names resolve to PPC landing pages, which supports the Complainant’s submission on that point and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the evidenced reputation and
goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.
The Panel finds the second element of the Policy has been established for all of the Disputed Domain
Names.
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.
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.
In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Names in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Names and the distinctive nature of the Complainant’s trademark, the Panel is satisfied that the Respondent knew of and targeted the Complainant’s trademark ZIPRECRUITER when it registered the Disputed Domain Names (see
| Complainant’s ZIPRECRUITER Mark is well-known in its industry”); ZipRecruiter, Inc. v. Postoffice Mailing | ZipRecruiter Inc. v. Lynda Drysdale, WIPO Case No. D2019-3068 (“[t]he The Panel is satisfied that the its sector”)). |
| This Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Names other than to trade off the reputation and goodwill of the Complainant’s well-known trademark. WIPO Overview 3.0, section 3.1.4. | |
| Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Names some 13 years after the Complainant established registered trademark rights in the ZIPRECRUITER mark. |
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On the issue of use, the Complainant’s evidence is that each of the Disputed Domain Names resolve to a PPC landing page. The Disputed Domain Name <oneziprecruiter.com> resolves to a PPC landing-page displaying sponsored links related to recruitment including “Recruitment Platforms”, “Find Jobs”, and
WIPO Overview 3.0, sections 3.1.4 and 3.2.1. The Respondent has not come forward to rebut the Complainant’s allegations or offer any alternative explanation.
“Recruiting Agencies” at least one of which resolves to a webpage offering an app for download. The related to recruitment including “Staffing Agencies Nearby”, “Job Recruitment Agencies”, and “Recruitment Platforms”. Targeting of this nature is a common example of bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions.
The Panel finds that the Complainant has established the third element of the Policy.
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 Names <oneziprecruiter.com> and <oziprecruiter.com> be transferred to the Complainant.
/Nicholas Weston/
Nicholas Weston
Sole Panelist
Date: July 29, 2024
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