Zillow, Inc. v. Domain Admin / Whois Privacy Corp.
Claim Number:
FA1412001592809
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 <zillo.com>, registered with Internet.bs Corp.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 2, 2014; the National Arbitration Forum received payment on December 2, 2014.
On December 9, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <zillo.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 December 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@zillo.com. Also on December 10, 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 January 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
ZILLOW has been used to promote real estate listing services since 2005.
The ZILLOW mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,150,074, registered Sept. 26, 2006, filed March 17, 2005). The <zillo.com> domain name merely omits the “w” in from Complainant’s mark.
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by the <zillo.com> domain name. Further, the <zillo.com> domain name addresses a website purporting to provide ZILLOW-backed consumer surveys with which Complainant has no association. From this website and through the survey process Respondent collects user information.
Respondent has registered and is using the <zillo.com> domain name in bad faith. Respondent allows the domain name’s website to host a series of advertisements to competing services. Respondent seems interested in promoting the website as an official ZILLOW review site in order to profit from Internet user confusion and further to obtain user information. Respondent is “mousetrapping” Internet users who visit the website showing bad faith. Respondent is also exploiting an affiliate program run by Complainant by using a confusingly similar domain name to shuttle users to the legitimate ZILLOW website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ZILLOW mark.
Respondent acquired the the at-issue domain name after Complainant acquired rights in ZILLOW.
Respondent uses the at-issue domain name domain name to lull Internet users into participating in a survey that appears to be sponsored by Complainant when it is not, and to present pay-per-click links to third party entities including, but not limited to, Complainant’s competitors.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s USPTO registration of its ZILLOW mark establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i). This is true regardless of whether or not Respondent operates within the jurisdiction of the trademark’s registry. See Capital One Financial Corp. v. Ryan G Foo / PPA Media Services, FA 1544064 (Nat. Arb. Forum March 25, 2014) (finding that Complainant’s USPTO registration for the CAPITAL ONE mark satisfies the Policy ¶4(a)(i) rights requirement, regardless of where Respondent resides.”)
The at-issue domain name can be described as: Complainant’s ZILLOW trademark less its ‘w” with the top-level domain name “.com” appended to the resulting string. These slight differences between the <zillo.com> domain name and Complainant’s trademark are insufficient to distinguish the at-issue domain name from the trademark under Policy ¶4(a) (i). Therefore, the Panel finds that the <zillo.com> domain name is confusingly similar to Complainant’s ZILLOW mark. See Orbitz Worldwide, LLC v. MGA LIMITED / mgaenterpriseslimited , FA 151503 (Nat. Arb. Forum Oct. 4, 2013) (“Respondent’s <cheaptiekets.com> domain name is confusingly similar to Complainant’s CHEAPTICKETS.COM mark, because the domain name merely replaces the letter ‘c’ in the word “tickets” with the letter ‘e.’”); see also, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for <zillo.com> lists “Domain Admin” as the domain name’s registrant of record and there is nothing in the record that otherwise indicates that Respondent is known by the <zillo.com> domain name. Given the foregoing the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Furthermore, the <zillo.com> domain name addresses a website pretending to provide ZILLOW-sponsored consumer surveys. Respondent apparently uses the bogus survey as a ruse for collecting personal information. The website also displays hyperlinked advertising and at some point in time has shown a “warning” page. Respondent’s extensive use of the domain name is primarily for the promotion of competing links or the promotion of websites that capitalize on the similarity of <zillo.com> to Complainant’s ZILLOW trademark and Complainant’s <zillow.com> website. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Given the foregoing Complainant satisfies its burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
The <zillo.com> domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent allows the domain name’s website to host an array of advertising links. The domain name’s extensive usage includes promoting real estate listing and marketing services that compete with those services offered by Complainant. Such use clearly disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Next, Respondent’s sham “survey” maybe characterized as a “phishing scheme” whereby Respondent captures the personal data that visitors mistakenly surrender to Respondent’s deceit so that it may be exploited for unauthorized or nefarious purposes. Respondent’s phishing activity is disruptive of Complainant’s business and further demonstrates Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶ 4(b)(iii). See, Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> to “fraudulently retrieve the personal… information from [the c]omplainant’s customers”); see also, Wells Fargo & Co. v. Mihael, FA 605221 (Nat. Arb. Forum Jan. 16, 2006) (use of the domain name to redirect to a site “closely resembling a legitimate site of [the c]omplainant… to deceive Complainant’s customers into providing to Respondent their login identification… constitutes bad faith registration and use of the subject domain name pursuant to 4(a)(iii).”)
Additionally and as also mentioned above, Respondent dresses the <zillo.com> website in a fashion suggesting that the website is an official ZILLOW website. Respondent hopes to profit from those visitors who mistakenly believe they are on a website sponsored by Complainant. Such visitors engage the faux website by clicking on pay-per-click links, some of which may reference Complainant’s competition. Website visitors may also interact with Respondent’s <zillo.com> website by regrettably disclosing their personal data to the bogus “survey” which greets them upon their arrival. Thereby, Responded inappropriately benefits from the goodwill associated with Complainant’s trademark and Respondent’s Policy ¶ 4(b)(iv) bad faith is exposed. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. 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).
Finally and although not suggested by Complainant in its papers, the Panel finds that Respondent’s <zillo.com> domain name exemplifies typosquatting. Typosquatting is a practice whereby a domain name registrant such as Respondent deliberately takes unfair advantage of predictable typographical errors or misspellings of a trademark by mimicking such errors in a domain name under its control. The conniving registrant wishes and hopes that Internet users seeking the trademark holder will inadvertently type the malformed-trademark laden domain name. Mistyping accidental cyber tourists are then whisked away to a web presence controlled by the domain name’s registrant where they may be exploited through pay-per-click links or other devices such as the phishing scheme perpetrated by Respondent. In the instant case Respondent relies on the simply omission of the last letter in Complainant’s mark to waylay its victims. Respondent’s typosquatting, in itself, is gripping evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under 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 <zillo.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 13, 2015
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