The Complainant is ZipRecruiter Inc., United States of America (“United States” or “U.S.”), represented by SafeNames Ltd., United Kingdom (“United Kingdom” or “U.K.”).
The Respondent is Gabrielly Santos Rodrigues, Chargepal S.L., Brazil.
The Disputed Domain Name <zipprecruiter.com> is registered with Key-Systems GmbH (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2020. On February 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 25, 2020, the Registrar 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 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 February 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 19, 2020.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on March 30, 2020. 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. Founded in 2010, the Complainant serves both individuals and companies, and it conducts its marketing operations in the U.S., Canada, and the U.K.
The Complainant owns the following trademark registrations
|
Trademark |
Office |
Registration Number |
Date of Registration |
Class |
|
ZIPRECRUITER |
United States Patent and Trademark Office |
3934310 |
March 22, 2011 |
42 |
|
ZIPRECRUITER |
European Union Intellectual Property Office |
015070873 |
June 13, 2016 |
9, 36, 41, 42 |
|
ZIPRECRUITER |
Canadian Intellectual Property Office |
TMA979480 |
August 28, 2017 |
9, 41, 42 |
The Complainant has also registered a number of domain names, including <ziprecruiter.com>, which it uses to provide and fulfill its job recruitment business. Moreover, the Complainant has registered country-code top-level domains (“ccTLDs”) which enables users to access to its services, using their local TLD. As such, <ziprecruiter.fr>, <ziprecruiter.co> or, <ziprecruiter.co.nz>.
The Complainant has also established a social media presence and uses the ZIPRECRUITER trademark to promote its services under this term.
The Complainant send a cease and desist letter sent to the Respondent on January 27, 2020. No answer was received by the Respondent. A reminder was sent on February 4, 2020 with no answer.
The Disputed Domain Name is currently inactive.
The Respondent registered the Disputed Domain Name <zipprecruiter.com> on August 25, 2013. Reportedly, the Respondent is the owner of a domain portfolio, which includes several third-party trademarks such as such <airpnb.com> or <barciaycardus.com>.
Previous panel decisions have recognized that the ZIPRECRUITER trademark is widely known. See ZipRecruiter, Inc. v. Domain Admin, Hush Whois Protection Ltd., On behalf of ziprecuiter.com OWNER, c/o whoisproxy.com / Amir Cohen, Hush Privacy Protection Ltd., WIPO Case No. D2019-2273.
The Complainant has provided evidence to be the owner of the registered trademark ZIPRECRUITER in different jurisdictions. The trademark is recognizable within the limits of the second level of the Disputed Domain Name. Therefore, by applying the requirement of identical or confusing similarity of the test under the Policy, the Disputed Domain Name is confusingly similar to the Complainant’s trademark due to the Respondent’s addition of the letter “p” between the Complainant’s trademark term “zip” and “recruiter” in the Disputed Domain Name. The Complainant further looks at the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9 to affirm that for the purposes of the first element it is a general consensus that a domain name which consists of a common, obvious or intentional misspelling of a trademark is considered by Panels to be confusingly similar.
With regard to the second element, the Complainant contends that the Respondent has not registered any trademarks for the term “ziprecruiter”, and there is no evidence that the Respondent holds any unregistered rights to such term. Moreover, the Complainant asserts that the Respondent has not received any license or authorization from the Complainant to use a domain name which features the ZIPRECRUITER trademark.
The Complainant submits that there is no bona fide offering of goods or services attached to the Disputed Domain Name because it is inactive. Thus, the failure to make active use of a domain name is “not a use indicative of a right or legitimate interest”.
The Complainant asserts that the Respondent is not known or nor has she ever been known as “ziprecruiter”.
Finally, the Complainant contends that the Respondent registered and used the Disputed Domain Name in bad faith. The Complainant’s ZIPRECRUITER trademark has accrued substantial goodwill and recognition. For such, it provides evidence that a Google search of the “ziprecruiter” term lists the Complainant’s brand and services as the first result. Accordingly, the Complainant affirms that the registration of the Disputed Domain Name was done in connection with the Complainant’s brand and in bad faith.
The Complainant submits that the Respondent has listed the Domain Name for sale on domain aftermarket site “www.afternic.com”, for the price of USD 7,688. Such price is beyond what would reasonably be expected to be within the Respondent’s out-of-pocket costs related to the Domain Name
The Complainant further alleges that the Respondent has engaged in a pattern of bad faith conduct, preventing owners of trademarks from reflecting their mark in a corresponding domain name. This is evidenced by the fact the Respondent has been subject to several UDRP proceedings, all of which ruled in favor of the Complainant.
Moreover, the Complainant asserts that the Respondent did not take any positive action to avoid abusive domain registration of a well-known trademark. The Complainant refers to the WIPO Overview 3.0, section 3.2.3 which states “domainers undertaking bulk purchases or automated registrations have an affirmative obligation to avoid the registration of trademark abusive domain names”.
The Complainant also refers to the passive holding doctrine regarding domain names as set up in the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. See WIPO Overview 3.0, section 3.3.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed the complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”.
This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.
The Panel will also take into consideration the WIPO Overview 3.0.
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the trademark.
The Disputed Domain Name incorporates the ZIPRECRUITER trademark in its entirety, with the additional letter “p” in between “zip” and “recruiter”. Where a domain name incorporates the entirety of a trademark, it will normally be considered confusingly similar to the mark (see section 1.7 of WIPO Overview 3.0). Moreover, for the purposes of the first element 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 trademark (see section 1.9 of WIPO Overview 3.0).
It is well established that generic top-level domains are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Accordingly, the Panel considers that the Disputed Domain Name <zipprecruiter.com> is confusingly similar to the ZIPRECRUITER trademark and therefore that the Complainant has succeeded on the first element of the Policy.
The Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Indeed, the Respondent does not hold any registered or unregistered trademark to the term “ziprecruiter”, the Complainant has not licensed or otherwise authorized the Respondent to use or register ZIPRECRUITER in a corresponding domain name, The Disputed Domain Name is held passively where no bona fide offering of goods or services may arise and, the Respondent is not commonly known by the term “ziprecruiter” or “zipprecruiter”.
While the Panel can find no rights or legitimate interests in the Respondent, the lack of response to the Complainant’s contentions and the cease and desist letter, support a finding that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
Upon previous panel decisions, the ZIPRECRUITER trademark is to be considered well known for the purposes of the Policy. See ZipRecruiter Inc. v. Lynda Drysdale, WIPO Case No. D2019-3068 where the learned panelist stated: “The Panel is satisfied that the Complainant’s ZIPRECRUITER mark is well known in its industry”.
The Panel also notes the subsequent attempt to sell the Disputed Domain Name. Such attempt strengthens a finding of previous knowledge of the ZIPRECRUITER trademark by the Respondent. Under these circumstances, the Panel finds that the Respondent knew or should have known about the Complainant and its trademarks when registering the Disputed Domain Name.
With regard to the use in bad faith of the Disputed Domain Name, the Panel finds appropriate to apply the passive holding doctrine. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. While the registration took place years ago, no evidence has been provided to demonstrate a legitimate use in any manner. Neither does the attempt to sell the Disputed Domain Name demonstrate legitimate use.
The Panel notes that a pattern of abusive registrations by the Respondent in a number of UDRP cases has been produced in the case file. The Complainant has alleged other bad faith domain name registrations by the Respondent, such as <airpnb.com>.
Besides, nothing in the file allows to infer that the Respondent fulfilled a trademark search to avoid conflict with the corresponding trademark owner. See Intocable, Ltd. v. Paytotake LLC, WIPO Case No. D2016‑1048 “a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks”.
Consequently, the third element of the Policy set up in paragraph 4(a)(iii) is met.
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 <zipprecruiter.com> be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: April 7, 2020