The Complainant is ZipRecruiter, Inc., United Kingdom, represented by SafeNames Ltd., United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / ICS INC, ICS INC, United Kingdom.
The disputed domain name <ziprcruiter.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2019 regarding the Domain Name and two additional domain names. On September 19, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 20, 2019, the Registrar GoDaddy.com, LLC 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, and informing that one of the additional domain names was registered with the Registrar NameBright.com. On September 25, 2019, the Registrar NameBright.com transmitted by email its verification response regarding one of the additional domain names. The Center sent an email communication to the Complainant on October 1, 2019, 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 9, 2019, removing the additional domain names from the dispute.
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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019.
The Center appointed Gareth Dickson as the sole panelist in this matter on November 14, 2019. 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.
The Complainant is an online recruitment company, based in the United States and operating from its website located using the domain name <ziprecruiter.com>. It was founded in 2010 and currently has marketing operations in the United States, Canada and the United Kingdom.
The Complainant is the owner of various trade mark registrations for ZIPRECRUITER, including United States trade mark registration number 3934310, registered on March 22, 2011 (the “Mark”).
Its rights in ZIPRECRUITER have been recognized in at least five previous UDRP decisions.
The Domain Name was registered on February 12, 2013. The Respondent has used the Domain Name to direct Internet users to a pay-per-click page offering recruitment services in competition with the Complainant, seemingly for the Respondent’s financial gain, and while using a privacy service to avoid revealing its contact details. The Respondent has been found to have engaged in bad faith registration and use of domain names in over 200 prior UDRP complaints.
The Complainant contends that it has rights in the Mark and that the Domain Name is confusingly similar to the Mark, since it is plainly a misspelling on the Mark, omitting a single “e” from the Mark, i.e. “Ziprcruiter” instead of “Ziprecruiter”, and the generic Top-Level Domain (“gTLD”) suffix “.com” is incapable of distinguishing the Domain Name from the Mark.
The Complainant also asserts that the Respondent has no rights or legitimate interest in respect of the Domain Name since it has no association with the Complainant, and the Complainant has not authorised the Respondent to make any use of the Mark, nor is it commonly known by the Domain Name. The registration is said not to be a bona fide or legitimate business or a noncommercial or fair use of the Domain Name since it is being used for financial gain by (mis)directing Internet users to pay-per-click links.
Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith given its confusing similarity to the Mark, the likelihood of confusion between the Mark and the Domain Name, and, in light of the Complainant’s significant earlier use of the (non-generic and non-descriptive) Mark online, the likelihood that the Respondent was aware of the Mark at the time of registration of the Domain Name.
The Complainant argues that the Respondent’s use of the Domain Name is in bad faith since it is an example of typosquatting, intended to lead Internet users to the Respondent’s website instead of the website in fact sought by them. The Complainant also notes that the Respondent has been involved in over 200 UDRP proceedings where it was found to have registered domain names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
The Panel accepts that the Complainant is the owner of and has rights in the Mark.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
Section 1.9 of the WIPO Overview 3.0 further provides that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
The Panel therefore accepts that the Domain Name is confusingly similar to the Mark, it being an obvious or intentional misspelling of the Mark in which the Mark remains immediately recognisable. The addition of the gTLD “.com” does not alter this conclusion.
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case, having alleged that it has not authorised the Respondent to use the Mark, whether in the Domain Name or otherwise.
Furthermore, there is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Domain Name in any descriptive manner: the evidence before the Panel is that the Mark is neither generic nor descriptive but enjoys a degree of inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely.
Finally, the Respondent is not making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it, since the redirection of Internet users to a website offering pay-per-click links to competitors does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “Panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Panel accepts that the Domain Name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or unintended, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The Domain Name is also being used in bad faith in that it is being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to competitors of the Complainant. The existence of over 200 other UDRP proceedings having been won against the Respondent does not create a presumption of bad faith registration and use per se, but it very much supports such a finding where the Respondent has not taken any steps to rebut it.
As a result of the above, the Panel finds that the Domain Name was registered and is being used 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, <ziprcruiter.com>, be transferred to the Complainant.
Date: November 28, 2019
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