WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ZipRecruiter, Inc. v. James Hoe

Case No. DNL2019-0008

1. The Parties

The Complainant is ZipRecruiter, Inc. of Santa Monica, California, United States of America (“United States”), represented by SafeNames Ltd., United Kingdom.

The Respondent is James Hoe of Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <ziprecruiter.nl> (the “Domain Name”) is registered with SIDN through PDR Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2019. On March 25, 2019, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On March 26, 2019, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 28, 2019. In accordance with the Regulations, article 7.1, the due date for Response was April 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2019.

The Center appointed Willem J. H. Leppink as the panelist in this matter on April 25, 2019. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

4. Factual Background

The Complainant is an American online recruitment company that operates in the United States, Canada, and the United Kingdom. The Complainant provides recruitment services to individuals and services for commercial entities.

The Complainant owns various registrations for the ZIPRECRUITER trademark, including inter alia the European Union trademark (word mark) ZIPRECRUITER with registration number 015070873 registered on June 13, 2016, and United States trademark (word mark) ZIPRECRUITER with registration number 3934310 registered on March 22, 2011 (hereinafter referred to together as the “Trademark”).

The Complainant is the owner of various domain names that incorporate the Trademark, including inter alia <ziprecruiter.com>, <ziprecruiter.co.uk>, and <ziprecruiter.fr>.

The Respondent registered the Domain Name on August 26, 2014. The Domain Name resolves to a parking page comprising of pay-per-click links to services that compete with the Complainant’s (“the Website”). In addition, it is indicated on the Website that the Domain Name is for sale.

5. Parties’ Contentions

A. Complainant

The Domain Name is identical to the Trademark as it incorporates the Trademark in its entirety.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent has made no attempt to use the Domain Name for any legitimate business purpose. Since its registration, the Domain name has resolved to a pay-per-click parking page with links related to “job posting” and “recruitment”. The Respondent is capitalizing on the reputation and goodwill of the Complainant through numerous sponsored advertisements listed on the Website.

The Complainant refers to section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states that previous panels have held that “a PPC website 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.” ¹

The Respondent has registered the Domain Name in bad faith. The Respondent registered the Domain Name on the day that the Complainant announced that it had raised USD 64 million in funding. The Respondent must have been aware of the Complainant and the Trademark.

In addition, the Respondent is using the Domain Name in bad faith. The Respondent likely receives revenue from Internet users being redirected to third-party websites through the Domain Name, at the Complainant’s expense, by taking advantage of the reputation of the Trademark. In effect, the Respondent is using the Domain Name to attract unsuspecting visitors, looking for Complainant’s services, and to redirect them to the Complainant’s competitors.

B. Respondent

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

6. Discussion and Findings

Pursuant to article 2.1 of the Regulations the Complainant must establish each of the following three elements:

a. the Domain Name is identical or confusingly similar to:

I) a trademark or trade name protected under Dutch law in which the Complainant has rights; or

II) a personal name registered in the General Municipal Register (Gemeentelijke Basisadministratie) of a municipality in the Netherlands, or the name of a Dutch public legal entity or the name of an association or foundation registered in the Netherlands under which the Complainant undertakes public activities on a permanent basis; and

b. the Respondent has no rights to or legitimate interests in the Domain Name; and

c. the Domain Name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

Pursuant to article 2.1(a) under I of the Regulations, the Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which the Complainant has rights.

The Complainant has shown that it has rights in the Trademark.

The Domain Name incorporates the Trademark in its entirety. Previous panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. It is well-established under .nl case law that the country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations. The Panel finds that the Domain Name is identical to the Trademark under the Regulations.

The Complainant has thus established the first element of article 2.1 of the Regulations.

B. Rights or Legitimate Interests

Pursuant to article 2.1 of the Regulations, a complainant must demonstrate that a respondent has no rights to or legitimate interests in respect of the Domain Name. A respondent may demonstrate such rights or legitimate interests on its part inter alia through the following circumstances listed in article 3.1 of the Regulations:

a. before having any notice of the dispute, [respondent] made demonstrable preparations to use the domain name (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services;

b. [respondent] as an individual, business or other organization is commonly known by the domain name;

c. [respondent] is making a legitimate noncommercial use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish or otherwise damage the relevant trademark, trade name, personal name, name of a Dutch public legal entity or name of an association or foundation located in the Netherlands.

The Respondent, who appears to be an individual located in China, does not appear to be affiliated with the Complainant in any way. There is no evidence that “Ziprecruiter” or “Zip Recruiter” is the Respondent’s name or that the Respondent is commonly known as “Ziprecruiter” or “Zip Recruiter”. Neither does the record show that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever requested and been permitted in any way by the Complainant to register or use a domain name incorporating the Trademark.

As submitted by the Complainant, the use of a domain name to host a parked page comprising

pay-per-click links does not represent a bona fide offering of goods and/or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark (see, WIPO Overview 3.0, section 2.9). The pay-per-click links on the Website are titled e.g. “Job Recruiter”, “Recruiter”, “Recruiting”, “Recruiter Job Description”, “Recruiter Jobs”, “Find Resumes”, and “Army Careers”. These links clearly compete with the Complainant’s services.

It is also clear from the facts presented in this case that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.

The Respondent has failed to respond to the Complaint or to take any steps to rebut the Complainant’s arguments.

The Panel finds that the Respondent lacks rights to or legitimate interests in the Domain Name.

The Complainant has thus established the second element of article 2.1 of the Regulations.

C. Registered or Used in Bad Faith

In light of its considerations under Section 6.B, the facts presented by the Complainant and the lack of a response by the Respondent, the Panel finds that the Domain Name has been registered and is used in bad faith.

The Respondent registered the Domain Name on the exact date on which it was publicly announced that the Complainant raised USD 63 million in funding. Moreover, the Respondent is offering the Domain Name for sale. The registration date of the Domain Name therefore indicates that the Respondent either registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to the Complaint or to a competitor, or to intentionally attempted to attract, for commercial gain, Internet users to the Website.

Pursuant to section 3.1.1 of WIPO Overview 3.0, the practice of registering a domain name for subsequent resale (including for a profit) would not by itself support a claim that the respondent registered the domain name in bad faith with the primary purpose of selling it to inter alia the trademark owner. However, the above-discussed circumstances indicate that the Respondent’s intent in registering the Domain Name was in fact to illegitimately profit from or otherwise exploit the Trademark.

The Panel finds that the Complainant has also established the third element of article 2.1 of the Regulations.

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the domain name <ziprecruiter.nl> be transferred to the Complainant.

Willem J.H. Leppink
Panelist
Date: May 2, 2019

¹ In view of the fact that the Regulations are to an extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).