Zillow, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1805001784943
Complainant is Zillow, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <trulia.co>, registered with 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.
David A. Einhorn as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2018; the Forum received payment on May 3, 2018.
On May 8, 2018, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <trulia.co> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the 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 May 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2018 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@trulia.co. Also on May 10, 2018, 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 June 4, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant, Zillow, Inc., is one of the largest providers of real estate and mortgage-related online services and uses the TRULIA mark in connection with its goods and services. Complainant has rights in the TRULIA mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,210,548, registered on February 20, 2007). Respondent’s <trulia.co> is identical or confusingly similar to Complainant’s TRULIA mark as the Respondent merely adds the “.co” country-code top-level domain (“ccTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <trulia.co> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the TRULIA mark for any purpose. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, the <trulia.co> domain name redirects Internet users to websites that offer services that compete directly with Complainant’s business.
Respondent registered and is using the disputed domain name in bad faith. Respondent has engaged in a pattern of bad faith registration, as Complainant has prevailed against the listed Respondent in prior UDRP proceedings. In addition, Respondent is using the <trulia.co> domain name to disrupt Complainant’s business and profit off Complainant’s established goodwill. Further, Respondent failed to respond to Complainant’s cease and desist letter. Finally, Respondent registered the <trulia.co> domain name using a privacy service.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the disputed domain name was created 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(f), 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 (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 claims rights in the TRULIA mark based upon its registration with the USPTO (e.g. Reg. No. 3,210,548, registered on February 20, 2007). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the TRULIA mark per Policy ¶ 4(a)(i).
Complainant asserts that the <trulia.co> domain name is identical or confusingly similar to Complainant’s TRULIA mark as the Respondent merely adds the “.co” country-code top-level domain (“ccTLD”) to Complainant’s mark. Panels have consistently found that slight differences between domain names and registered marks, such as the addition of a “ccTLD”, do not distinguish the domain name from the mark incorporated therein. See Thomson Reuters Global Resources v Matthew Krawitz, FA 1548336 (Forum Apr. 21, 2014) (“Respondent adds the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark in the disputed domain name, which also fails to distinguish the domain name from Complainant’s mark… Accordingly, the Panel finds that Respondent’s <rueters.co> domain name is confusingly similar to Complainant’s REUTERS mark.”). The Panel agrees with Complainant and finds that the <trulia.co> domain name does not contain a change that distinguishes it from the TRULIA mark.
Complainant argues that Respondent has no rights or legitimate interests in the <trulia.co> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TRULIA mark in any way. WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Domain Admin / Whois Privacy Corp.” Additionally, lack of evidence in the record to indicate that a respondent has been authorized to register a domain name using a complainant’s mark supports a finding that the respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <trulia.co> domain name is evinced by its failure to use the name for a bona fide offering of goods or services, or legitimate noncommercial or fair use. Rather, Complainant contends that Respondent attempts to redirect Internet users to websites that compete directly with Complainant’s business. Using a confusingly similar domain name to redirect users to websites that offer competing services is not a bona fide offering or legitimate use under Policy ¶ 4(c)(i) and (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Here, Complainant asserts that the <trulia.co> domain name resolves to a variety of pages, including real-estate-related advertising and to the website of a direct competitor of the Complainant in the online real estate field. Therefore, the Panel agrees with Complainant and finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has thus also satisfied Policy ¶¶ 4(a)(ii).
Complainant contends that Respondent is using the <trulia.co> domain name to disrupt Complainant’s business and capitalize off of Complainant’s established goodwill. Using a confusingly similar domain name to redirect users to Complainant’s competitors websites is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Here, Complainant contends, and Respondent does not dispute, that Respondent is redirecting traffic to Complainant’s competitors and other pay-per-click ads for real estate services, and provides screenshots to support this assertion. Accordingly, the Panel agrees that Respondent disrupts Complainant’s business and attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Therefore, 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 <trulia.co> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: June 7, 2018
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