ZipRecruiter, Inc. v Lisa J Compton

WIPO Case No. D2024-4386

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

ZipRecruiter, Inc. v. Lisa J Compton

Case No. D2024-4386

1. The Parties

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

SafeNames Ltd., United Kingdom (“UK”).

The Respondent is Lisa J Compton, United States.

2. The Domain Name and Registrar

The disputed domain name <m-ziprecruiter.com> is registered with CNOBIN Information Technology Limited

(the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2024. On October 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 October 29, 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 October 30, 2024.

The Center verified that the Complaint together with the amendment to 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 the Respondent of the
Complaint, and the proceedings commenced on October 31, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 20, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 22, 2024.

page 2

The Center appointed Steven Auvil as the sole panelist in this matter on November 26, 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

According to the Complaint, the Complainant is a well-known United States online recruitment company that provides services for both individuals and commercial entities and is one of the fastest growing technology companies in the United States. The Complainant attracts millions of active job seekers and thousands of companies each month, and it also has over 40 million job alert email subscribers. The Complainant has also been recognized as one of the best online job recruitment services and has an active social media following.

The Complainant owns several United States and International trademarks for its ZIPRECRUITER brand,
including: United States Registration No. 3934310, registered March 22, 2011; European Union
Registration No. 015070873, registered June 13, 2016; U.K. Registration Nos. UK00915070873, registered
June 13, 2016, UK00915070881, registered June 13, 2016, and UK00915644041, registered November 4,
2016; and Canada Registration No. TMA979480, registered August 28, 2017.

The Complainant also owns and operates the domain name <ziprecruiter.com>, which allows employers to post jobs and manage applications, and enables job seekers to search for and receive alerts regarding job posts. The Complainant also owns and operates many country code Top-Level Domains (“ccTLD”) for its ZIPRECRUITER mark allowing the Complainant to tailor its offerings to users across a number of countries,

including <ziprecruiter.co.uk>, <ziprecruiter.co.nz>, <ziprecruiter.fr>, and <ziprecruiter.us>.

The disputed domain name was registered on September 11, 2024. According to the Complaint, the disputed domain name was registered and has been used to confuse unsuspecting consumers as to the disputed domain name’s association to the Complainant by redirecting Internet traffic to the Complainant’s website at “

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.

The Complainant contends that the disputed domain name is confusingly similar to its ZIPRECRUITER mark because the disputed domain name encompasses the entirety of the Complainant’s ZIPRECRUITER mark with the only the addition being the prefix “m-”. The Complainant further alleges that its ZIPRECRUITER mark is the dominant and only distinctive element in the disputed domain name. The Complainant alleges that the addition of the letter “m” is not sufficient to mitigate the confusing similarity between the Complainant’s ZIPRECRUITER mark and the disputed domain name.

The Complainant also alleges that the Respondent lacks rights or legitimate interests in the disputed domain name. Specifically, the Complainant alleges that the Respondent does not have any trademark rights in the ZIPRECRUITER brand. The Complaint further contends that it has not given the Respondent any license to use the ZIPRECRUITER mark. The Complainant also alleges that the Respondent has not used or prepared to use the disputed domain name in connection with a bona fide offering of goods or services, and that the

Respondent is not currently known nor ever been known by the ZIPRECRUITER name.

page 3

The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith for several reasons. First, the Complainant alleges that the Complainant sent a cease-and-desist letter to the Respondent regarding the registration and use of the disputed domain name without a response. Second, the Complainant alleges that the Respondent registered the disputed domain name in bad faith with the intention of trading on the Complainant’s brand with prior notice of the Complainant’s ZIPRECRUITER brand. Third, the Complainant contends that the Respondent is using the disputed domain name to redirect Internet users, and the Respondent’s maintenance of control over the disputed domain name represents an implied ongoing threat as to interference with the Complainant’s Internet traffic, and creates confusion as to sponsorship or affiliation between the Complainant and the disputed domain name. Finally, the Complainant alleges that the Respondent has activated a mail exchange, increasing the risk that unsuspecting customers could receive phishing emails from the Respondent.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not file a Response to the Complainant’s contentions.

6. Discussion and Findings

According to 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to obtain relief:

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

the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel is entitled to accept as true the allegations set forth in the Complaint (unless the evidence is clearly contradictory), and to derive reasonable inferences from the evidence presented. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

Based on the foregoing guidance, the Panel makes the following findings and conclusions based on the allegations and evidence contained in the Complaint and amended Complaint and reasonable inferences drawn from the evidence presented.

A. Identical or Confusingly Similar

It is well accepted that the first element of the Policy 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 evidence submitted by the Complainant supports the conclusion that the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The Complainant owns several registered trademarks for the ZIPRECRUITER mark, the earliest registered in 2011. WIPO Overview 3.0, section 1.2.1.

page 4

The evidence also supports the conclusion that the disputed domain name is confusingly similar to the Complainant’s ZIPRECRUITER mark. As set forth in WIPO Overview 3.0, section 1.7, when the entirety of a mark is reproduced within the disputed domain name, or “at least a dominant feature of the relevant mark is recognizable in the domain name”, the disputed domain name is deemed confusingly similar to the mark for the purposes of the Policy.

Here, the disputed domain name includes the entirety of the Complainant’s ZIPRECRUITER mark with the prefix “m-”. This difference does not prevent a finding of confusing similarity. See Société Civile du Vignoble

de Chateau Latour v. 周建国 (Zhou Jian Guo), 成都米拉图国际贸易有限公司 (cheng dou mi la tu guo ji mao
yi you xian gong si), WIPO Case No. D2021-0222; Vue Entertainment Holdings (UK) Limited v. Xiansheng
Chen, WIPO Case No. D2022-4685.

Additionally, as set forth in section 1.11.1 of WIPO Overview 3.0, the applicable generic TLD (e.g., “.com”, “.site”, “.info”, “.shop”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. As such, the use of the generic TLD “.com” in the disputed domain name has no bearing on the confusing similarity analysis.

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. Such circumstances include:

(i) before any notice of the dispute, the respondent used, or prepared to use, the disputed domain name or a
name corresponding to the disputed domain name in connection with a bona fide offering of goods or

services;

(ii) the respondent (as an individual, business, or other organization) is commonly known by the disputed

domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the 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.
WIPO Overview 3.0, section 2.1.

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”. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests in a disputed domain name, 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 evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the evidence of record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent, moreover, has not attempted to rebut the Complainant’s prima facie showing; in fact, the Respondent 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. Given the composition of the disputed domain name and its use to redirect to the Complainant’s website, it is clear that the Respondent sought to mislead Internet users as to the disputed domain name’s association with the Complainant and such use amounts to impersonation, which cannot constitute fair use.

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

page 5

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 that, if found by the Panel to be present, is evidence of the registration and use of a domain name in bad faith. Such circumstances include, among others, where “the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor”, and where “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location”. WIPO Overview 3.0, section 3.1.

Additionally, section 3.2.1 of the WIPO Overview 3.0 provides that “[p]articular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion); [...] (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant”.

In the present case, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith. First, the disputed domain name incorporates the entirety of the Complainant’s registered and well-known ZIPRECRUITER mark. Second, the Panel finds that the Respondent has engaged in using the disputed domain name to impersonate the Complainant in order to redirect Internet traffic. While the Respondent may currently redirect such Internet traffic to the Complainant’s website, there is still an implied ongoing threat to the Complainant through the false impression of association.

Considering this and other circumstances, including the Respondent’s failure to respond to the Complaint or amended Complaint, the Panel finds that the Respondent knew of the Complainant’s ZIPRECRUITER mark at the time of registering the disputed domain name and endeavored to unfairly capitalize on the mark for

commercial gain. The Panel therefore concludes that the disputed domain name was registered and is being

used in bad faith.

The Panel therefore 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 name <m-ziprecruiter.com> be transferred to the Complainant.

/Steven Auvil/ Steven Auvil Sole Panelist Date: December 10, 2024