Zillow, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1502001604451
Complainant is Zillow, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zilllow.com> and <wwwzillo.com>, registered with Internet.bs Corp. and TLD Registrar Solutions Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2015; the Forum received payment on February 11, 2015.
On Feb 16, 2015, Internet.bs Corp. and TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <zilllow.com> and <wwwzillo.com> domain names are registered with Internet.bs Corp. and TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the names. Internet.bs Corp. and TLD Registrar Solutions Ltd. has verified that Respondent is bound by the Internet.bs Corp. and TLD Registrar Solutions Ltd. 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 February 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2015 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@zilllow.com, postmaster@wwwzillo.com. Also on February 16, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the disputed domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a company based in Seattle, Washington engaged in the provision of online real estate and mortgage services. Complainant uses the ZILLOW and ZILLOW.COM marks in connection with its online real estate and mortgage business. Complainant has registered the ZILLOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,437,690, Registered May 27, 2008 with an Application date of March 17, 2005) and has registered the ZILLOW.COM mark with USPTO (e.g., Reg. No. 882476, Registered September 28, 2005 with an Application date of September 8, 2005) which demonstrate Complainant’s rights in the marks. The <zilllow.com> and <wwwzillo.com> domain names are confusingly similar to the ZILLOW and ZILLOW.COM marks as the <zilllow.com> domain name merely adds an additional letter “l” to the trademark, the <wwwzillo.com> domain name merely adds the letters “www” before the trademark and omits the final letter “w” in the trademark , and both domain names include the generic top-level domain “gTLD”. Each of the disputed domain names is confusingly similar to the ZILLOW and ZILLOW.COM trademarks.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the <zilllow.com> or the <wwwzillo.com> domain name nor is it known by any variant of the ZILLOW or ZILLOW.COM mark. Further, Respondent is not making a bona fide offering of goods or services through the disputed domain names, nor a legitimate noncommercial or fair use. Instead, the disputed domain name <zilllow.com> resolves to a “Zillow Visitor Survey” which is a means by which Respondent is “phishing” for personal user account data and the disputed domain name <wwwzillo.com> resolves to other websites which provide pay-per-click links to Complainant’s competitors, presumably for financial gain.
Respondent has registered and used the disputed domain names in bad faith. Respondent’s phishing activity disrupts Complainant’s business under paragraph 4(b) (iii) of the Policy and using a domain name for pay-per-click advertisements related to Complainant’s industry is a breach of paragraphs 4(b)(iv). Moreover, Respondent has continued to use the <wwwzillo.com> domain name for content that is competitive with Complainant after receiving a letter of demand from Complainant. Registration and use of domain names that are mere typographical variations on a complainant’s mark are clear examples of bad faith. Respondent has also acquired multiple domain names similar to Complainant’s ZILLOW mark which has obliged Complainant to bring UDRP proceedings that have resulted in the transfer of those domain names to Complainant, showing a pattern of bad faith registration and use by Respondent. In any event, Respondent is a serial cybersquatter that routinely and intentionally squats on domain names that are similar to well-known marks and has been the subject of more than a hundred adverse UDRP decisions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of online real estate and mortgage services.
2. Complainant has registered the ZILLOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,437,690, Registered May 27, 2008 with an Application date of March 17, 2005) and has registered the ZILLOW.COM mark with USPTO (e.g., Reg. No. 882476, Registered September 28, 2005 with an Application date of September 8, 2005), together with many other registrations for ZILLOW which demonstrate Complainant’s rights in the marks.
3. Respondent acquired and therefore registered the two disputed domain names on October 23, 2014 in the case of <zilllow.com> and on January 14, 2014 in the case of <wwwzillo.com>.
4. The disputed domain name <zilllow.com> resolves to a “Zillow Visitor Survey” by which Respondent is “phishing” for personal user account data and the disputed domain name <wwwzillo.com> resolves to other websites which provide pay-per-click links to Complainant’s competitors, presumably for financial gain.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it uses the ZILLOW and ZILLKOW.COM marks in the provision of its online real estate and mortgage services. Complainant has adduced evidence which the Panel accepts that it registered the ZILLOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,437,690, Registered May 27, 2008 with an Application date of March 17, 2005) and the ZILLOW.COM mark with USPTO (e.g., Reg. No. 882476, Registered September 28, 2005 with an Application date of September 8, 2005) which demonstrate Complainant’s rights in the marks. Complainant has adduced other evidence that the Panel accepts to the effect that Complainant has also registered the ZILLOW and ZILLOW.COM marks in other registrations in the United States and internationally (collectively “the Zillow marks”). The Panel finds that Complainant’s registration of the ZILLOW and ZILLOW.COM marks with the USPTO and internationally evidences rights in the mark for purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”). It is also apparent from the evidence that Complainant has established common law trademark rights to ZILLOW and ZILLOW.COM from at least March 17, 2005.The Panel also finds that Complainant’s trademark rights were established several years prior to the dates on which Respondent acquired the two disputed domain names, namely October 23, 2014 in the case of <zilllow.com> and January 14, 2014 in the case of <wwwzillo.com>.
The next question that arises is whether the disputed domain names are identical or confusingly similar to the ZILLOW marks. Complainant argues that the <zilllow.com> and <wwwzillo.com> domain names are confusingly similar to the ZILLOW marks as, in the case of the <zilllow.com> domain name, it incorporates the entirety of the ZILLOW mark and simply adds an additional letter “l” to the trademark and, in the case of <wwwzillo.com> the domain name adds the letters “www” before the ZILLOW trademark and omits the final letter “w”. In each case, the objective bystander could not come to any conclusion other than that the domain names are obvious reference to the ZILLOW marks and that they are confusingly similar to those marks. Each domain name also adds the .gTLD top level domain, but previous panels have found that the addition of gTLDs to registered trademarks are unpersuasive in overcoming a Policy ¶ 4(a)(i) finding of confusing similarity that is otherwise present, as it is in the present case. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). In any event, even if in the present case the .gTLD top level domain were taken into account, it would only underline the confusing similarity found by the Panel, in view of the presence of the ZILLOW.COM mark which itself invokes a domain name ending in the .gTLD top level domain.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ZILLOW and ZILLOW.COM trademarks and to use them in its domain names, making only minor alterations;
(b) Respondent acquired and therefore registered the two disputed domain names on October 23, 2014 in the case of <zilllow.com> and on January 14, 2014 in the case of <wwwzillo.com>;
(c) The disputed domain name <zilllow.com> resolves to a “Zillow Visitor Survey” which Respondent uses for “phishing” for personal user account data and the disputed domain name <wwwzillo.com> resolves to other websites which provide pay-per-click links to Complainant’s competitors, presumably for financial gain;
(d) Complainant, in arguing that Respondent has no rights or legitimate
interests in the disputed domain names, submits that Respondent is not commonly known by the disputed domain names or either of
them or any variation of the ZILLOW mark. The Panel notes that the WHOIS information lists “Ryan G Foo / PPA Media Services”as registrant. As Respondent has failed to adduce any evidence to the contrary for the Panel’s consideration, the Panel finds no basis on the evidence for concluding that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
(e)Complainant also claims Respondent is not using the domain names in connection with making a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The evidence is that the <zilllow.com> domain name resolves to a “Zillow Visitor Survey” that asks users for personal information and which is a clear attempt at “phishing” which is itself illegitimate and which can never be bona fide .See the almost identical decision in Zillow, Inc. v. Domain Admin/Whois Privacy Corp., FA159809 (Nat. Arb. Forum Jan.13, 2015) to that effect. The evidence is also that the <wwwzillow.com> domain name resolves to other websites which provide pay-per-click links to Complainant’s direct competitors; that activity is clearly cybersquatting and is not a bona fide offering of or a legitimate noncommercial or fair use that may give rise to a legitimate interest. See the decision cited by Complainant, Ameritrade Holdings Corp. v. Polanski, FA 102715 ( Nat. Arb. Forum Jan.11, 202 .Therefore, the Panel finds on the evidence that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and that consequently Respondent has no rights or legitimate interests in either domain name pursuant to Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in either of the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, as has already been noted, the evidence is that the <zilllow.com> domain name resolves to a “Zillow Visitor Survey” that asks users for personal information and which is a clear attempt at “phishing”. Likewise, this use of a domain name for phishing disrupts the business of Complainant within the meaning of Policy ¶ 4(b)(iii) and is evidence of bad faith registration and subsequently of bad faith use. See Zillow, Inc. v.Domain Admin/Whois Privacy Corp., FA159809 (Nat. Arb. Forum Jan 13, 2015).
Secondly, as has also been noted, the evidence is that the <wwwzillow.com> domain name resolves to other websites which provide pay-per-click links to Complainant’s direct competitors. Likewise, this is also evidence of bad faith registration and use within the meaning of Policy ¶ 4(b)(iv): Zillow, Inc., v. Yue Li, FA 1585065 ( Nat. Arb Forum Nov. 26, 2014). That view has long been accepted in UDRP proceedings as showing bad faith registration and use. The Panel finds that Respondent has attempted to divert Internet users from Complainant’s website to its own website for commercial gain and the Panel therefore finds that Respondent has demonstrated bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Thirdly, the evidence is that Respondent continued to use the domain names for content that is competitive with Complainant after receiving a letter of demand from Complainant. That use of the domain names is further evidence of bad faith use and enables the inference to be drawn that the registration of the domain names was itself motivated by bad faith. See Ray Marks Co., LLC v. Singh, FA 1321441 (Nat. Arb. Forum Jun. 10, 2010).
Fourthly, each of the disputed domain names is a typographical variation on Complainant’s marks which is clear evidence of bad faith registration and use. See Tumblr, Inc. v. Platic, FA 1543767 ( Nat. Arb. Forum Jan. 13, 2015).
Fifthly, previous UDRP proceedings which have resulted in the transfer of disputed domain names to Complainant shows a pattern of bad faith registration and use within the meaning of Policy ¶ 4(b)(ii) which suggests the nature of Respondent’s conduct in the present case. See Zillow, Inc. V. Domain Admin/Whois Privacy Corp., FA 1592809 (Nat. Arb Forum Feb. 2, 2015) and Zillow, Inc., v. Domain Admin/Whois Privacy Corp., FA 1596560 (Nat. Arb Forum Feb 2, 2015). Evidence of Respondent’s conduct in the registration and use of other prominent trademarks in domain names also strengthens the notion that Respondent is a serial cybersquatter: see for example Nat’l G eographic Soc’y v. Foo, FA 159516 9 (Nat. Arb Forum Jan 2, 2015) and the other decisions cited by Respondent.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the ZILLOW and ZILLOW.COM marks and in view of their use since Respondent became the registered owner of the domain names, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zilllow.com> and <wwwzillo.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 19, 2015
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