Zillow, Inc. v. YUE LI
Claim Number: FA1410001585065
Complainant is Zillow, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is YUE LI (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zillow.co>, registered with CCI REG S.A.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 16, 2014; the National Arbitration Forum received payment on October 16, 2014.
On October 17, 2014, CCI REG S.A. confirmed by e-mail to the National Arbitration Forum that the <zillow.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name. CCI REG S.A. has verified that Respondent is bound by the CCI REG S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 20, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zillow.co. Also on October 20, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant uses the ZILLOW mark to promote its real estate listing services. The mark has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,437,691, registered May 27, 2008). The <zillow.co> domain name is identical to the mark in that it only adds the country code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interest in the domain names. Respondent has not been commonly known by the <zillow.co> domain name. The domain name directs Internet users to competing Coldwell Banker services. Further, Respondent has offered to sell off this domain name.
Respondent registered and is using the domain name in bad faith. Respondent seeks to sell the domain name for profit in bad faith. Further, directing users to competing realtor-related services is evidence of bad faith under Policy ¶ 4(b)(iii) through commercial disruption. Likewise, using the domain name to shuttle users to competing websites evidences Respondent’s intent to profit on the likelihood Internet users would associate the domain name with the identical ZILLOW mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. The Panel notes that the <zillow.co> domain name was registered on August 31, 2010.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the ZILLOW mark to promote its real estate listing services. Complainant notes that the mark has been registered with the USPTO (e.g., Reg. No. 3,437,691, registered May 27, 2008). In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel agreed that a USPTO registration satisfied Policy ¶ 4(a)(i), even though the respondent resided in another country. Here, this Panel similarly agrees that the USPTO registration is evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i).
Complainant claims that the <zillow.co> domain name is identical to the mark in that it only adds the top-level domain “.co.” The Panel agrees that Respondent’s domain name is identical to the ZILLOW mark under Policy ¶ 4(a)(i), given that only a ccTLD was added to Complainant’s mark. See ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Nat. Arb. Forum May 6, 2011) (“[T]he addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es’ [does not] have a distinctive function”).
Thus, Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent has not been commonly known by the <zillow.co> domain name. The Panel notes that in its e-mail to the Forum, Respondent identifies itself as “Yue Li.” The Panel agrees that there is no basis for making a finding in favor of Respondent under Policy ¶ 4(c)(ii).
Complainant notes that the domain name is directing Internet users to competing Coldwell Banker services. The Panel notes that the domain name redirects Internet users to a listing service offered by Coldwell Banker. The use of the domain name to promote a competing web service is indicative of Respondent’s lack of any Policy ¶ 4(c)(i) bona fide offering with respect to the domain name or non-commercial or fair use under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“The Panel finds that appropriating the AOL mark to [ … ] link to complainant’s competitor is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s sending users to competing realtor-related services is evidence of Policy ¶ 4(b)(iii) bad faith through commercial disruption. The Panel infers Policy ¶ 4(b)(iii) bad faith registration and use through commercial disruption because Respondent is using the identical domain name to send Internet users to a competitor’s website. See Am. Online, Inc., supra (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zillow.co> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 26, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page