ZipRecruiter Inc. v Danny Yun

WIPO Case No. D2022-1087

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ZipRecruiter Inc. v. Danny Yun

Case No. D2022-1087

1. The Parties

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

Ltd., United Kingdom.

Respondent is Danny Yun, United States.

2. The Domain Name and Registrar

The disputed domain name <metaziprecruiter.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2022. On March 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2022, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on April 5, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 6, 2022.

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 April 8, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was April 28, 2022. Respondent did not submit any response. Accordingly, the
Center notified Respondent’s default on May 9, 2022.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 18, 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.

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4. Factual Background

Complainant is a company based in Santa Monica, California, in the United States. For over a decade, Complainant has offered online recruitment services under its ZIPRECRUITER mark. Complainant has several registered trademarks for this mark. These include, among others, United States Trademark

Registration No. 3934310 (registered March 22, 2011) and European Union Trademark Registration No.
015070873 (registered June 13, 2016).

Complainant owns the registration for a number of domain names that incorporate its ZIPRECRUITER mark. associated URL to connect with consumers of its online recruiting services.

The disputed domain name was registered on November 8, 2021. Respondent has used the URL associated with the disputed domain name to resolve to a “pay per click” website, including links to services that appear to compete with the online recruiting services offered by Complainant under its ZIPRECRUITER mark.

Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that the (i) disputed domain name is identical or confusingly similar to Complainant’s
trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii)
Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has a “widely known” mark and a “strong reputation” in the field of online recruiting. Complainant contends that Respondent has merely added the “dictionary term ‘meta’“ to Complainant’s registered ZIPRECRUITER mark, which is likely to confuse prospective consumers into thinking that the disputed domain name is affiliated with, or endorsed by, Complainant.

Complainant further contends that Respondent has used the disputed domain name for Respondent’s own commercial gain, when Respondent clearly knew of Complainant’s rights.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <metaziprecruiter.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark ZIPRECRUITER, and adds the term “meta,” which, without regard to any third-party use, is a known dictionary term.

Numerous UDRP panels have agreed that supplementing or modifying a trademark with dictionary terms does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Inter Ikea Systems B.V. v. Polanski, WIPO Case No. D2000-1614; General Electric Company v. Recruiters, WIPO Case No. D2007-0584; Microsoft

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Corporation v. Step-Web, WIPO Case No. D2000-1500; CBS Broadcasting, Inc. v. Y2K Concepts Corp.,
WIPO Case No. D2000-1065.

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the

bona fide

domain name “in connection with a offering of goods or services;” (ii) demonstration that of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used the disputed domain name to divert Internet users to a “pay per click” website with links to potentially competing services. Accordingly, the Panel finds that Complainant has

made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain

name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel’s decision, Respondent has set up a URL associated with the disputed domain name to resolve to a “pay per click” website, including links to services that appear to compete with the online recruiting services offered by Complainant under its ZIPRECRUITER mark. Respondent is thus trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Prior UDRP panels have commented on the strong nature of Complainant’s ZIPRECRUITER mark. See for
example, ZipRecruiter Inc. v. Grace Phillips, WIPO Case No. D2019-2880; ZipRecruiter Inc. v. Ismail
Mechbal, Unik, WIPO Case No. D2020-3383; ZipRecruiter Inc. v. Privacy service provided by Withheld for
Privacy ehf / Carolina Rodrigues, WIPO Case No. D2021-2184.

Given the nature of the disputed domain name which incorporates Complainant’s well-known ZIPRECRUITER mark, the Panel finds sufficient evidence that Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy.

7. Decision

For all 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 <metaziprecruiter.com> be transferred.

/Lorelei Ritchie/
Lorelei Ritchie
Sole Panelist
Dated: June 1, 2022