Zillow, Inc. v. Chris Storseth / Chris L Storseth
Claim Number: FA1409001578264
Complainant is Zillow, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Chris Storseth / Chris L Storseth (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zillowadvice.com>, <zillowinc.com>, <zillowinc.net>, <zillowleases.com>, <zillowlocal.com>, <zillowrents.com>, <zillowhomedesign.com>, <zillowrentalpro.com>, <zillowhomerentals.com>, <zillowrentalsapi.com>, <zillowpremieragent.info>, <zillowpremieragent.net>, <zillowpremieragent.co>, <zillowrentconnect.com>, <zillowallstar.com>, <zillowcomingsoon.com>, <zillowhub.com>, <zillowmontanarentals.com>, <zillowmt.com>, <zillowrentalhelena.com>, <zillowrentalshelena.com>, <zillowrentalsusa.com>, <yahoozillow.com>, <yahoo-zillow.com>, <zillow-trulia.com>, <zillowdigspro.com>, <digspro.com>, <zdigspro.com>, <zallstar.com>, <zealestateagent.com>, <zealtors.com>, and <zrentalpro.com>, registered with GODADDY.COM, INC. and WILD WEST DOMAINS, LLC.
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 National Arbitration Forum electronically on September 4, 2014; the National Arbitration Forum received payment on September 4, 2014.
On September 5, 2014, GODADDY.COM, INC. and WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <zillowadvice.com>, <zillowinc.com>, <zillowinc.net>, <zillowleases.com>, <zillowlocal.com>, <zillowrents.com>, <zillowhomedesign.com>, <zillowrentalpro.com>, <zillowhomerentals.com>, <zillowrentalsapi.com>, <zillowpremieragent.info>, <zillowpremieragent.net>, <zillowpremieragent.co>, <zillowrentconnect.com>, <zillowallstar.com>, <zillowcomingsoon.com>, <zillowhub.com>, <zillowmontanarentals.com>, <zillowmt.com>, <zillowrentalhelena.com>, <zillowrentalshelena.com>, <zillowrentalsusa.com>,<yahoozillow.com>, <yahoo-zillow.com>, <zillow-trulia.com>, <zillowdigspro.com>, <digspro.com>, <zdigspro.com>, <zallstar.com>, <zealestateagent.com>, <zealtors.com>, and <zrentalpro.com> domain names are registered with them and that Respondent is the current registrant of the names. GODADDY.COM, INC. and WILD WEST DOMAINS, LLC has verified that Respondent is bound by the respective registration agreements 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 September 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@zillowadvice.com, postmaster@zillowinc.com, postmaster@zillowinc.net, postmaster@zillowleases.com, postmaster@zillowlocal.com, postmaster@zillowrents.com, postmaster@zillowhomedesign.com, postmaster@zillowrentalpro.com, postmaster@zillowhomerentals.com, postmaster@zillowrentalsapi.com, postmaster@zillowpremieragent.info, postmaster@zillowpremieragent.net, postmaster@zillowpremieragent.co, postmaster@zillowrentconnect.com, postmaster@zillowallstar.com, postmaster@zillowcomingsoon.com, postmaster@zillowhub.com, postmaster@zillowmontanarentals.com, postmaster@zillowmt.com, postmaster@zillowrentalhelena.com, postmaster@zillowrentalshelena.com, postmaster@zillowrentalsusa.com, postmaster@yahoozillow.com, postmaster@yahoo-zillow.com, postmaster@zillow-trulia.com, postmaster@zillowdigspro.com, postmaster@digspro.com, postmaster@zdigspro.com, postmaster@zallstar.com, postmaster@zealestateagent.com, postmaster@zealtors.com, and postmaster@zrentalpro.com. Also on September 9, 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.
A Response was received and determined to be deficient on September 30, 2014, because the Response was received after the September 29, 2014 deadline.
On October 3, 2014, Complainant filed a timely additional submission pursuant to The Forum's Supplemental Rule #7. The Panel has considered the additional submission and taken it into account in reaching its decision.
On October 3, 2014, Respondent filed a timely additional submission pursuant to The Forum's Supplemental Rule #7. The Panel has considered the additional submission and taken it into account in reaching its decision.
On October 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Policy ¶ 4(a)(i): Complainant’s Rights in the Trademarks
Complainant submits that it was founded in 2005, but began operating under the ZILLOW name in February 2006. Complainant operates the <zillow.com> domain name as the main hub for its business. See Compl., at Attached Exs. 6a–6b. Complainant boasts many unique visitors to its websites and applications. See Compl., at Attached Exs. 7b–7a, 10. Complainant’s revenue under ZILLOW has grown greatly over the years. See Compl., at Attached Exs. 6b, 7b. Complainant has registered ZILLOW with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,201,269 registered September 4, 2012, filed November 3, 2011; Reg. No. 3,150,074 registered September 26, 2006, filed March 17, 2005); see also Compl., at Attached Ex. 8a.
Complainant also uses the DIGS (e.g., Reg. No. 4,479,990 registered February 11, 2014, filed January 21, 2013), DUELING DIGS mark (e.g., Reg. No. 4,055,217, registered November 15, 2011, filed November 16, 2010) and Z as a mark “consist[ing] of the letter ‘z’ within a house design” (e.g., Reg. No. 3,420,126, registered April 29, 2008, filed September 28, 2005) and ZESTIMATE (e.g., Reg. No. 3,320,467, registered October 23, 2007, filed September 22, 2005).
Policy ¶ 4(a)(i): Confusing Similarity of the Disputed Domain Names
These domain names take various marks owned by Complainant and tag on a plethora of generic or descriptive terms along with top-level domain names. In some instances, Respondent combines the ZILLOW family of marks with third-party marks such as YAHOO or TRULIA. The combination of marks has long been recognized as being insufficient to avoid a finding of confusing similarity.
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests in these Names
Respondent has never been known by the ZILLOW family of marks, based on the disputed domain names’ WHOIS information. Furthermore, Complainant has not licensed this individual’s free use of the marks in Internet domain names.
Respondent is using the domain names to send Internet users to website to which the <aclueforyou.com> domain name resolves wherein Respondent provides a critical perspective of the ZILLOW brand. Respondent does have a right to criticize products and services it dislikes, but these rights do not extend to the use of confusingly similar domain names for such purposes. There is a distinction between the rights to content on a website and rights to the terms underlying the domain name itself.
Respondent has repeatedly offered to sell all of the domain names to the public in excess of registration costs.
Policy ¶ 4(a)(iii): Respondent has Registered and Used the Domain Names in Bad Faith
Complainant claims that as seen in Exhibit 9b, there is evidence that Respondent seeks to sell off all of the domain names for a profit.
Respondent’s registration of these many domain names shows that Respondent has engaged in a pattern of bad faith registrations of domain names encompassing Complainant’s marks.
Complainant claims Respondent profits through a likelihood of confusion by shuttling visitors of some of the domain names to Complainant’s competitors. See Compl., at Attached Ex. 9a.
In particular, the <zillow-trulia.com> domain name was registered shortly after Complainant and Trulia announced their intent to seek the approval of a merger from American federal regulators. Such a registration is evidence of an intent to capitalize opportunistically on the prospective merger of two companies by registering a domain name that merely combines both of the Companies’ foremost trademarks.
B. Respondent
Respondent made the following contentions.
Policy ¶ 4(a)(i):
Respondent submits that domain names such as the <zealestateagent.com> and <zealtors.com> simply lack confusing similarity to any trademark held by Complainant. The <yahoozillow.com>, <zillow-trulia.com>, and <yahoo-zillow.com> domain names cannot be controlled by Complainant alone as Complainant has no claim to a YAHOO mark and its holding of the domain names would create confusing similarity, especially when the TRULIA merger has not been approved.
Policy ¶ 4(a)(ii):
Respondent has rights to his freedom of speech in setting the domain names to resolve to Respondent’s “gripe site.” There is no commercial motive here beyond providing the public with Respondent’s perspective on ZILLOW. Respondent was not attempting to profit through the sale of the domain names as they were offered from $2 to $15 max.
Policy ¶ 4(a)(iii):
There is nearly no likelihood of confusion because the domain names all resolve to <aclueforyou.com>, wherein Respondent offers critical commentary. No reasonable Internet user would believe Complainant is behind a website on an unrelated domain name that is very critical of Complainant’s own business—it would be absurd and self-defeating.
C. Additional Submissions
Complainant
On October 3, 2014, Complainant filed a timely additional submission which elaborated on contentions advanced in the Complaint.
Respondent
On October 3, 2014, Respondent filed a timely additional submission which elaborated on contentions advanced in the Response.
Preliminary Issue: Deficient Response
Respondent submitted its Response one day after the September 29, 2014 deadline and the Response is therefore not in compliance with ICANN Rule 5. The Panel, however, at its discretion, may choose whether to accept and consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Nat. Arb. Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). On this occasion, the Panel exercises its discretion to accept the Response and to take it into consideration. The Panel’s reasons for doing so are that the delay was comparatively short, no harm seems to have been done by the delay, it is in the interests of both parties to have the matter resolved as soon as possible and, as the matter clearly raises issues of importance, it is better for the Panel to consider the matter with the benefit of submissions from both sides.
1. Complainant is a United States company that is a prominent online enterprise engaged in real estate.
2. Complainant has registered the ZILLOW trademark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,201,269 registered September 4, 2012, filed November 3, 2011; Reg. No. 3,150,074 registered September 26, 2006, filed March 17, 2005); Complainant also has numerous international trademark registrations for ZILLOW.
3. Complainant has also registered the DIGS trademark with the USPTO (e.g., Reg. No. 4,479,990 registered February 11, 2014, filed January 21, 2013), the DUELING DIGS mark (e.g., Reg. No. 4,055,217, registered November 15, 2011, filed November 16, 2010) , Z as a mark “consist[ing] of the letter ‘z’ within a house design” (e.g., Reg. No. 3,420,126, registered April 29, 2008, filed September 28, 2005) and ZESTIMATE (e.g., Reg. No. 3,320,467, registered October 23, 2007, filed September 22, 2005).
4. Respondent is engaged in various businesses in real estate and related industries.
5. Respondent registered the disputed domain names on various dates that are not in dispute, the earliest being July 4, 2014.
6. Respondent uses the disputed domain names principally to resolve to a website that is critical of Complainant and containing material relating to Respondent’s experience and his business activities.
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.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant submits and has shown that its online real estate business was founded in 2005 and began operating under the ZILLOW name in February 2006. Complainant operates the <zillow.com> domain name as the main hub for its online business. See Compl., at Attached Exs. 6a–6b. Complainant boasts many unique visitors to its websites and applications. See Compl., at Attached Exs. 7b–7a, 10. Complainant’s revenue under ZILLOW has grown greatly over the years and it is clear from the evidence that it has been a very successful company. See Compl., at Attached Exs. 6b, 7b. Complainant has registered and used ZILLOW as a trademark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 4,201,269 registered September 4, 2012, filed November 3, 2011; Reg. No. 3,150,074 registered September 26, 2006, filed March 17, 2005); see also Compl., at Attached Ex. 8a. Complainant also has numerous international trademark registrations for ZILLOW. Complainant has also registered and used the DIGS trademark with the USPTO (e.g., Reg. No. 4,479,990 registered February 11, 2014, filed January 21, 2013), the DUELING DIGS trademark (e.g., Reg. No. 4,055,217, registered November 15, 2011, filed November 16, 2010) , Z as a mark “consist[ing] of the letter ‘z’ within a house design” (e.g., Reg. No. 3,420,126, registered April 29, 2008, filed September 28, 2005) and ZESTIMATE (e.g., Reg. No. 3,320,467, registered October 23, 2007, filed September 22, 2005). The Panel finds that the USPTO registrations for the ZILLOW, DIGS, DUELING DIGS, Z, and ZESTIMATE marks are evidence of Complainant’s rights in the trademarks relied on by Complainant under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The second question that arises is whether the disputed domain names are identical or confusingly similar to any of Complainant’s ZILLOW, DIGS, DUELING DIGS, Z, and ZESTIMATE marks. Complainant submits that the disputed domain names take various marks owned by Complainant and tag on a variety of generic or descriptive terms along with one of the top-level domains “.com”, “.net”, “.info” and “.co”.
Of the 32 domain names at issue, 26 of them incorporate the ZILLOW mark. Those domain names are <zillowadvice.com>, <zillowinc.com>, <zillowinc.net>, <zillowleases.com>, <zillowlocal.com>, <zillowrents.com>, <zillowhomedesign.com>, <zillowrentalpro.com>, <zillowhomerentals.com>, <zillowrentalsapi.com>, <zillowpremieragent.info>, <zillowpremieragent.net>, <zillowpremieragent.co>, <zillowrentconnect.com>, <zillowallstar.com>, <zillowcomingsoon.com>, <zillowhub.com>, <zillowmontanarentals.com>, <zillowmt.com>, <zillowrentalhelena.com>, <zillowrentalshelena.com>, <zillowrentalsusa.com>, <yahoozillow.com>, <yahoo-zillow.com>, <zillow-trulia.com>, and <zillowdigspro.com>. It is presumably those domain names to which Respondent is referring when he submits that “The Domain Names in dispute as listed above are similar only in similarity of the word “Zillow” in most cases.”. However, it is the very fact that these domain names incorporate the ZILLOW trademark that gives rise to the confusing similarity that is at the centre of the Policy. That is so because an objective bystander, being presented with, in each case, any one of the domain names and the trademark ZILLOW, would naturally conclude that the two were similar, as they both include the word ZILLOW and also that they are confusingly similar, as they raise the question whether the “zillow” of the domain name is invoking or referring to the ZILLOW of the trademark.
The same conclusion is strengthened and underlined in particular in 22 cases of the 26 domain names incorporating the ZILLOW mark, namely <zillowadvice.com>, <zillowinc.com>, <zillowinc.net>, <zillowleases.com>, <zillowlocal.com>, <zillowrents.com>, <zillowhomedesign.com>, <zillowrentalpro.com>, <zillowhomerentals.com>, <zillowrentalsapi.com>, <zillowpremieragent.info>, <zillowpremieragent.net>, <zillowpremieragent.co>, <zillowrentconnect.com>, <zillowallstar.com>, <zillowcomingsoon.com>, <zillowhub.com>, <zillowmontanarentals.com>, <zillowmt.com>, <zillowrentalhelena.com>, <zillowrentalshelena.com>, <zillowrentalsusa.com>. That is so because when it is seen that in those cases Respondent has added to the ZILLOW trademark the generic expressions seen above, the conclusion must be that the domain names are, respectively, referring to advice given by Complainant, in the case of <zillowadvice.com>, the company name of Complainant in the cases of <zillowinc.com> and <zillowinc.net>, the business of Complainant dealing with real estate leases in the case of <zillowleases.com>, the regular activities of Complainant as a real estate company in the cases of <zillowrents.com>, <zillowhomedesign.com>, <zillowrentalpro.com>, <zillowhomerentals.com>, <zillowrentalsapi.com>, <zillowpremieragent.info>, <zillowpremieragent.net>, <zillowpremieragent.co> , <zillowrentconnect.com>,<zillowmontanarentals.com>, <zillowmt.com>, <zillowrentalhelena.com>, <zillowrentalshelena.com> and <zillowrentalsusa.com>, Complainant’s activities in its All Star agent accreditation system in the case of <zillowallstar.com> and the network and expansion of its activities in the cases <zillowlocal.com>, <zillowcomingsoon.com> and<zillowhub.com>. Finding confusing similarity in such cases, where the addition to the trademark is a generic expression, especially one naturally associated with the business activities of the trademark owner, is not new and is a principle regularly applied by UDRP panels. Adding in various descriptive, geographic, or generic terms cannot overcome the fact that the domain names rely upon the presence of the ZILLOW mark as the dominant feature of all of the above domain names. See Cargill, Incorporated v. Domain Privacy Grp., FA 1501652 (Nat. Arb. Forum Jul. 5, 2013) (determining that the disputed domain name, which contains the complainant’s mark, along with two generic terms and a generic top-level domain, is the equivalent of the mark itself for the purposes of Policy ¶ 4(a)(i)).
One other domain name,<zillowdigspro.com>, is confusingly similar to the Zillow trademark as it combines that trademark and also Complainant’s DIGS trademark.
In some instances, the remaining 3 of the 26 domain names incorporating the ZILLOW trademark, Respondent combines the mark with additional third-party marks such as YAHOO or TRULIA, as in <yahoozillow.com>, <yahoo-zillow.com> and <zillow-trulia.com>. Complainant claims that the combination of marks has long been recognized as being sufficient to give rise to a finding of confusing similarity. The Panel makes particular reference to this group of domain names as Respondent has submitted with respect to them that:
”The Domain Names Yahoo-Zillow are not available to Zillow, INC., to file in the UDRP. There are no marks, Zillow, INC does not own Yahoo, nor does Yahoo own Zillow…”and “The Domain names such as Yahoo-Trulia, TruliaYahoo, and similar names do not contain the Complainants Name, Marks, or any other intellectual, Patented, or other property that could possibly be presumed. To the contrary, Zillow is making a forward looking statement that a Merger of Zillow and Trulia will be approved by the SEC. This has been a hot topic for the SEC and Zillow was warned on July 2, 2014 to stop making forward looking statements. This Complaint is not only forward looking, but is in fact a Claim that Zillow has the right to file with the UDRP on behalf of Trulia. This is a flagrant dismissal of the requirements of the SEC, as shown in Exhibit A.”
The Panel has given careful attention to those submissions as it has to all of Respondent’s submissions, but it is, with respect, not correct in several respects. First, Complainant does not allege that Zillow owns Yahoo, vice versa, or that it is bringing the Complaint on behalf of Trulia. Its case is based on its own trademarks and the sole question before the panel at this stage is whether the domain names are confusingly similar to the ZILLOW trademark, not whether they are confusingly similar to any other trademark. See, e.g., Lorillard Licensing Company, LLC v. safd / sdfdf; sdf / sdf d; sd / d df, FA 1530394 (Nat. Arb. Forum Dec. 30, 2013) (transferring the complainant the <marlboroandnewportcigarettes.com> domain name when the complainant held the NEWPORT mark and the MARLBORO mark was held by another company). Secondly, contrary to Respondent’s submission, each of the domain names in question does in fact contain Complainant’s ZILLOW trademark. Thirdly, the fact that Respondent relies on the merger between Complainant and Trulia and was clearly aware of it at the time he registered the domain names shows, not only that the domain names appear to be official ZILLOW domain names, but that Respondent intended to mislead internet users into thinking they were official domain names of ZILLOW; this simply increases the confusing similarity already created by using the ZILLOW trademark at all.
The foregoing findings apply to each of the 26 domain names incorporating the ZILLOW trademark.
With respect to the remaining 6 of the 32 domain names, namely <digspro.com>, <zdigspro.com>, <zallstar.com>, <zealestateagent.com>, <zealtors.com>, and <zrentalpro.com> domain names, those domain names do not incorporate the ZILLOW trademark. Complainant’s submission with respect to those domain names is that they are confusingly similar to Complainant’s DIGS and Z trademarks. In reply, Respondent’s principal submission on this group seems to be: “In many of the other names, such as Zealtors, ZealEstateAgents, Zallstar, they bear no resemblance whatsoever.” However, in fairness to Respondent it seems that the following submission is also related to the domain names under consideration: “Zallstar was actually my Zillow Premier OFFICIAL name, as shown in the addendums. Zallstar, or ZealEstate does not belong to Zillow, nor does Trulia, Yahoo, or the alphabetical letter “Z” in all of its variations.” Having given consideration to the submissions of each side and the totality of the evidence the Panel finds that each of the foregoing 6 domain names is confusingly similar to Complainant’s DIGS trademark, in the cases of <digspro.com> and <zdigspro.com> , to Complainant’s Z trademark in the case of the <zallstar.com>, <zealestateagent.com>, <zealtors.com>, and <zrentalpro.com> domain names and in the case of <zallstar.com> for the additional reason that Complainant uses ZILLOW ALL STAR , which it claims is a common law trademark and which is at least a business name of Complainant, for top contributors in the Zillow community. The domain names <digspro.com> and <zdigspro.com> incorporate Complainant’s DIGS trademark and the latter of the two also incorporates Complainant’s Z trademark. Comparing in each case the domain name with the trademarks, the Panel finds that the domain names are confusingly similar to the respective trademarks, because they incorporate the trademarks and because there is, in the use of the word “digs” an albeit colloquial allusion to real estate which is the genre in connection with which both trademarks are registered; in the particular circumstance of the domain name <zdigspro.com> it is also artificial to ignore the fact that “z” is probably by now synonymous with Complainant’s name which is , on the evidence, prominent in real estate, thus making it more likely than not that internet users would regard the domain name as referring to a real estate activity of Complainant. The domain names <zallstar.com>, <zealestateagent.com>, <zealtors.com>, and <zrentalpro.com> would also in the opinion of the Panel be taken as raising the question in the mind of the internet user whether they were referring to the Complainant and its prominent business, the first domain name because it adopts the letter Z and Complainant’s Allstar real estate activity and the remaining 3 domain names because they specifically refer to real estate activities. Moreover, in all of the foregoing, although the comparison between domain name and trademark is traditionally made without reference to extrinsic evidence such as the contents of a website, in the present case the Panel cannot ignore the fact that Respondent has also registered numerous domain names that clearly invoke Complainant’s name, a fact not only conceded but relied on by Respondent.
Finally, the Panel notes that all of the domain names adopt one or the other of several top level domains and hyphenation and the removal of spacing. It is now universally recognized that those features are irrelevant for the purpose of the present comparison. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to one or other of Complainant’s trademarks.
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 taken Complainant’s ZILLOW, DIGS and Z trademarks and used them in his domain names, making the addition of various generic and other words discussed above, thus implying that the domain names are official domain names of Complainant and that they will lead to official websites of Complainant, neither of which is true;
(b) Respondent has then caused the domain names to resolve principally to a website which is used to criticise Complainant and its alleged business activities as well as to promote Respondent and his business activities, although in limited cases to an error page or to a competitor of Complainant, namely Respondent himself;
(c) Respondent has engaged in these activities and by that means has been using Complainant’s trademarks without the consent or approval of Complainant;
(d) Complainant argues that Respondent has never been known by the ZILLOW family of marks, based on the disputed domain names’ WHOIS information. Furthermore, Complainant has not licensed Respondent’s free use of the marks in Internet domain names. The Panel notes that Respondent identifies as “Chris Storseth” and does not claim rights in ZILLOW or those marks, but Respondent does say that his official name when working with customers through ZILLOW is that of the <zallstar.com>, <zealestateagent.com>, and <zealtors.com> domain names. On balance, the Panel does not accept on the evidence that Respondent was commonly known by any of these names and the Panel finds as such under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
These matters establish a prima facie case that Respondent has no right or legitimate interest in the disputed domain names. It is then a matter of considering the Response of Respondent and his additional submission to see if he has rebutted the prima facie case against him.
Respondent’s argument in this case is that he is using the domain names so that Internet users will be directed to the website based on his own domain name <aclueforyou.com> where he provides criticism of Complainant and its alleged business practices. The way Respondent puts it is to submit, first: “ All sites point to a “Gripe Site” as protected by the First Amendment of the US Constitution and upheld in Court and the UDRP on multiple occasions. I had no bad intent, nor intent to sell to the brand name holder.” He also submits: ”Aclueforyou is a site to show Real Estate Agents and the public the criminal nature of Zillow.”. Respondent elaborates on his argument by submitting:
“The ACPA does not prevent the fair use of trademarks or any use protected by the First Amendment, which includes gripe sites.[12] In Mayflower Transit, L.L.C. v. Prince, 314 F. Supp. 2d 362 (D.N.J 2004), the court found that the first two prongs of Mayflower's ACPA claim were easily met because (1) their registered trademark was distinctive and (2) Defendant’s “mayflowervanline.com” was confusingly similar to Plaintiff’s Mayflower trademark.[13] However, when the court was examining the third prong of Plaintiff’s ACPA claim, whether Defendant registered its domain name with the bad faith intent to profit from Plaintiff, the court found Defendant had a bona fide noncommercial use of the mark, therefore, the ACPA claim failed.[14] “Defendant’s motive for registering the disputed domain names was to express his customer dissatisfaction through the medium of the Internet.”
Again, in the case of Lamparello V Falwell {In Lamparello v. Falwell, 420 F.3d 309, Jerry Falwell sued the owner of Fallwell.com, Christopher Lamparello, for trademark infringement and cybersquatting. The court didn’t buy the cybersquatting argument because it found that Lamparello had no bad faith intent to profit. The court decided that he “clearly employed www.fallwell.com simply to criticize Reverend Falwell’s views.” He was allowed to keep the domain name.”
Respondent returns to the argument in the section of his Response dealing with bad faith by submitting:
“The domains I registered should not be considered as being registered in bad faith. I have them all pointing to aclueforyou.com. This is a gripe site and in no way could possibly be construed as Zillow.com. It has nothing to sell, nor does it make any inference of something to sell in the future. It is solely a “Gripe Site”. It does get a lot of traffic through direct link. People are indeed interested in the audio and video of Zillow sales breaking every antitrust law ever instituted on Audio. All of this, and much more is on aclueforyou.com. While Zillow may not like aclueforyou, it is federally protected. This statement was for the sites including the term “Zillow”.”
The Panel finds that the submissions advanced by Respondent do not give rise to a right or legitimate interest in any of the disputed domain names. That is so essentially for two reasons.
First, the free speech defence that Respondent relies on could not on any interpretation of the general principle involved attract the benefit of that defence. None of the disputed domain names could ever form the basis of a claim to free speech as none of them suggest that they are devoted to free speech or criticism or have been composed in such a way as to indicate that they deal with or contain criticism and all of them simply adopt the name and trademark of Complainant, in many cases adding generic and other expressions such as “homerentals” and ”premieragent” which give the false impression that they are Complainant’s domain names dealing with Complainant’s own business, which clearly they are not. If anything, the composition of the domain names underlines and emphasises the suggestion that they are Complainant’s own official domain names, which they are not and that they will lead to a website dealing with Complainant’s own business. For instance the domain name <zillowinc.com>, can mean only one thing, that it is a domain name of the incorporated Zillow company; and the domain name <zillowhomerentals.com> can mean only one thing, that it is a domain name of the Zillow company whose website will deal with Zillow’s home rental business. All of the implications in the domain names are false and are really misleading assertions that the domain names are Complainant’s domain names, the websites of which will speak for Complainant. See Philip Morris USA Inc. v. DAVID DELMAN, FA 155882 (Nat. Arb. Forum Apr. 29, 2014); Philip Morris USA Inc. v. DAVID DELMAN / DAVID@DELMAN.TV, FA 155881 (Nat. Arb. Forum Apr. 29, 2014); Philip Morris USA Inc. v. Lori Wagner, FA 1534894 (Nat. Arb. Forum Jan. 29, 2014). The Panel in this regard agrees with the remarks of the panelist in those cases when he said:
“Respondent’s free speech protections do not come into play with respect to the content of the Internet domain name itself. Free speech is only found to extend to the content of a website. Respondent cannot defend its use of the domain name by claiming that it has freedom of speech rights in the use of another party’s trademarks in Internet domain names. Respondent. . . may not be defended by any claim that using a confusingly similar domain name is protected by free speech rights. See Watson Pharm., Inc. v. WhoisGuard, FA 588321 (Nat. Arb. Forum Dec. 19, 2005) (“Even if the goal of providing a free speech forum for criticizing Complainant is commendable, that goal cannot be reached by usurping Complainant’s marks and posing as Complainant.”).
That is an apt description of what has happened in the present case, as Respondent has created domain names that usurp Complainant’s marks, are confusingly similar to those marks and are the means of Respondent posing as Complainant. Accordingly, on the facts of the present case, the Panel finds that the disputed domain names, adopting and incorporating one or other of Complainant’s trademarks as they do, cannot attract the benefit of free speech protection and are not protectable under Policy ¶ 4(a)(ii).
Secondly, even if the disputed domain names attracted any such protection, that protection would clearly be negated in the present case by the content of the website to which they lead. It has often been said that if a respondent establishes that a domain name is being used to support a genuine criticism site, known more popularly as a gripe site, it may be able to show that it has a right or legitimate interest in the domain name or may also be able to rebut an allegation of bad faith as in Sutherland Institute v. Continuative LLC, WIPO Case No.D2009-0693. Likewise, if a respondent establishes a genuine fan site or tribute site it may also be able to show a right or legitimate interest. That principle is often said in American cases to flow from the First Amendment to the United States Constitution and has been applied in several UDRP cases and by this Panelist. Freedom of speech is a valuable and important principle and when it is pleaded, as Respondent has done, it should be carefully considered, as the Panel has done in this case. However, an essential part of the principle is that the website in question must be a genuine gripe site, devoted solely to the subject under complaint and must not be used for commercial, financial or indeed any other purpose than promoting the issue which is the subject of the criticism. The Panel had occasion to consider this issue in Ginn Real Estate Company LLC v. Hilton Wiener Nat. Arb.Forum, 1211342 (Aug. 20, 2008), a case that is not dissimilar to the present case and in which the Respondent used the domain name <ginnlawsuit.com> to resolve to a website where he engaged in trenchant criticism of the Complainant real estate developer. On that occasion, the Panel cited remarks in Asset Loan Co. Pty Ltd v. Rogers, D2006-0300 (WIPO May 2, 2006) that: “[w]hat is clear, however, from all of the discussion on this issue is that a respondent must not be seen to be using the criticism site for commercial gain. If that is really what the respondent is doing, the conduct is contrary to the plain words of paragraph 4(c)(iii) of the Policy and hence it cannot give rise to a legitimate interest.” In the Ginn Real Estate Case the respondent had used the website in part to promote himself and the conclusion was reached that:
“Accordingly, the website, at least in the past, has been used not solely as a criticism or ‘gripe’ site, but as a site to promote the Respondent’s commercial and financial interests. It is not really too fine a point to say that at least one of the purposes of the website has been to solicit work for the Respondent.”
Those remarks are equally applicable in the present case where Respondent has used the website to which the domain names resolve for the same purpose as in the Ginn Real Estate Case, namely to promote himself and to solicit business. Accordingly, the website cannot be relied on to excuse the unauthorised use by Respondent of Complainant’s trademarks.
The website at <aclueforyou.com> carries criticism of Complainant’s alleged business activities, detailed criticism which is expressed in graphic language and criticism which is repeated and elaborated on in both the Response and the additional submission. However, the content of the website goes well beyond that. On its home page is states that Respondent is a broker and realtor broker by using the words:” Chris Storseth Broker / Realtor MT FL” and contains a link to a segment of the website titled: “About Chris Storseth.” When the internet user goes to that segment, the heading is seen to be “Chris Storseth, Realtor, Broker, Land Developer, Web Developer” with a description of Respondent’s experience and success as a “Guru of Real Estate” and a link to a local newspaper describing him in that manner and also noting his success in several ventures and the fact that he runs a rental business called Queen City Property Management. One of the statements on Respondent’s website is “Chris will not let you down, and exceeds expectations”. This is a clear promotion of Respondent’s business and a solicitation for business. The website also contains a blog which itself carries links to various commercial enterprises, one of which uses Complainant’s Z trademark and advertises houses and apartments for rent. It also promotes Respondent as an experienced broker and as “Listing Agent, Consulting, Commercial R.E.,Property Management.” The website also carries a form for contacting Respondent which shows clearly that Respondent wants people to contact him if they wish to use his business services. This and other content is purely commercial as are many of the numerous links on the site and in the blog and are designed to promote Respondent and solicit business for him. This material would be legitimate advertising if it were carried by legitimate means, but what is fatal to Respondent’s defence in the present case is that he uses Complainant’s trademarks to promote himself and his various businesses and to solicit business. All of this is done under the guise of conducting an alleged gripe site which in the present case is a transparently false suggestion.
Respondent, in his additional submission, returns to the issue and submits with reference to the website at <aclueforyou.com> that “Claims this is a Real Estate Brokerage are simple lies.” The Panels finds that Respondent’s claim is a very dubious proposition, in view of the fact that its opening words are “Chris Storseth Broker / Realtor MT FL” and the heading of a prominent section of the website is “Chris Storseth, Realtor, Broker, Land Developer, Web Developer” with a description of Respondent’s experience and success as a “Guru of Real Estate.” However, even if the site itself is not the site of a real estate brokerage, which in the opinion of the Panel it is, it is used to promote Respondent as a real estate broker and an accomplished practitioner in this and related fields.
Respondent in his additional submission also submits: “Anyone who goes to
aclueforyou is not going to even find my phone number, let alone Real Estate.” The Panel has already pointed out that the website carries a form that is available to be activated by internet users so that they may contact Respondent; even if his telephone number is not on the website, an adequate means of contacting him is there and is a facility for users to contact him if they wish. Moreover, contrary to Respondent’s submission, the site carries many references to real estate.
Accordingly, the use of the disputed domain names to support the website <aclueforyou.com> cannot give Respondent a right or legitimate interest in any of the disputed domain names.
In limited cases, where a disputed domain name has resolved to an error page or a competing real estate business of Respondent, there is also no basis for finding a right or legitimate interest in such domain names.
Respondent has not relied on any other ground to rebut the prima facie case against him and accordingly he has not rebutted that case.
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, Complainant essentially claims that Respondent’s registration of the many domain names in this case shows that Respondent has engaged in a pattern of bad faith registrations of domain names encompassing Complainant’s marks. This Panel finds find that the sheer number of domain names involved proves that Respondent knowingly engaged in a pattern of bad faith registrations of Internet domain names, in each case with the intention of preventing Complainant from reflecting its trademark within a corresponding domain name within the meaning of Policy ¶ 4(b)(ii) bad faith. See Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”).
Secondly, Complainant claims that Respondent registered the domain names for the purpose of disrupting the business of a competitor, namely Complainant. The Panel agrees. Having regard to the evidence as a whole, the number of domain names involved, their composition and the intentions of Respondent as shown from his website at <aclueforyou.com>, his blog, the Response and his additional submission, the Panel has no hesitation in finding that Respondent’s conduct comes squarely within the meaning of Policy ¶ 4(b)(iii).
Thirdly, the Panel notes that the domain names were apparently used to promote a Florida-based real estate concern for some time and are now used to send Internet users to the <aclueforyou.com> website, which promotes Respondent’s business as well as criticising Complainant’s business. See Compl., at Attached Ex. 9a. Accordingly, the Panel finds also on that ground that Respondent’s activities disrupted Complainant’s business in violation of Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Fourthly, Complainant also relies on Policy ¶ 4(b)(iv) and in that regard
claims Respondent profits through a likelihood of confusion by shuttling visitors to some of the domain names onto Complainant’s competitors. See Compl., at Attached Ex. 9a. The Panel finds that this use rises to the level of Policy ¶ 4(b)(iv) or similar bad faith, and find accordingly. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); Steven J. Schwartzapfel and Schwartzapfel Lawyers, P.C. v. Barrett Sharpe, FA 1523900 (Nat. Arb. Forum Nov. 19, 2013) (refusing an argument that free speech rights precluded bad faith).
Complainant claims in particular, the <zillow-trulia.com> domain name was registered shortly after Complainant and Trulia announced their intent to seek the approval of a merger from American federal regulators. Complainant suggests that such a registration is evidence of an intent to capitalize opportunistically on the prospective merger of two companies by registering a domain name that merely combines both of the Companies’ foremost trademarks, in the case of Complainant the trademark ZILLOW. The Panel finds in this regard that the registration of the <zillow-trulia.com> domain name was in bad faith pursuant to Policy ¶ 4(a)(iii) bad faith. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”).
Such is the overwhelming nature of the evidence showing that Respondent registered and used each of the disputed domain names in bad faith, that it is not necessary to decide if Respondent registered them primarily for the purpose of resale or the other objectives stated in Policy ¶ 4(b)(i). However, having regard to the totality of the evidence, including the material submitted by Respondent in his Response and in his additional submission, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the Complainant’s ZILLOW, DIGS, and Z trademarks and its subsequent use of the respective disputed domain names, including Respondent’s demonstrated preparedness to sell them, he registered and used the domain names in bad faith within the generally accepted meaning of that expression.
This finding applies to all of the disputed domain names including the limited number that either resolve to an error page or to the website of a competitor of Complainant, namely Respondent, as well as to those domain names where Respondent has adopted as his main defence that they have been used for protected free speech purposes. In particular, on the main defence claimed by Respondent , the Panel has already decided that the transparently false suggestion that Respondent registered and used the domain names for purposes of genuine criticism does not give rise to a right or legitimate interest in the domain names. The Panel also finds that it establishes that Respondent registered and used the domain names in bad faith. Indeed, it is apparent from the evidence that Respondent has embarked on a sustained exercise to misappropriate the trademarks of Complainant, to do so for his own financial ends and to dress it up with a false allegation that it was all being done principally in the interests of free speech.
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 <zillowadvice.com>, <zillowinc.com>, <zillowinc.net>, <zillowleases.com>, <zillowlocal.com>, <zillowrents.com>, <zillowhomedesign.com>, <zillowrentalpro.com>, <zillowhomerentals.com>, <zillowrentalsapi.com>, <zillowpremieragent.info>, <zillowpremieragent.net>, <zillowpremieragent.co>, <zillowrentconnect.com>, <zillowallstar.com>, <zillowcomingsoon.com>, <zillowhub.com>, <zillowmontanarentals.com>, <zillowmt.com>, <zillowrentalhelena.com>, <zillowrentalshelena.com>, <zillowrentalsusa.com>,<yahoozillow.com>, <yahoo-zillow.com>, <zillow-trulia.com>, <zillowdigspro.com>,<digspro.com>, <zdigspro.com>, <zallstar.com>, <zealestateagent.com>, <zealtors.com>, and <zrentalpro.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 3, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page