Zillow, Inc. v. Mossab Basir / Leo Group
Claim Number: FA1907001851612
Complainant is Zillow, Inc. (“Complainant”), represented by Matt Schneller of Schneller IP, PLLC, Tennessee, USA. Respondent is Mossab Basir / Leo Group (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zillow.realty> (“Domain Name”) registered with NameCheap, Inc..
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2019; the Forum received payment on July 11, 2019.
On July 11, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <zillow.realty> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 July 16, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zillow.realty. Also on July 16, 2019, 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.
On July 16 and July 28 2019 the Forum received e-mails from the Respondent, the second one stating, without qualifications “…I am willing to transfer the Zillow.realty domain and settle this dispute”. No formal Response was provided
On August 7, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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., provides real estate and mortgage marketplace services. Complainant has rights in the ZILLOW mark through its registration of the mark with the United States Patent and Trademark Office (“USTPO”) (e.g., Reg. No. 3,150,074 registered on Sep. 25, 2006). Respondent’s <zillow.realty> domain name is identical or confusingly similar because Respondent merely adds the “.realty” generic top-level domain (“gTLD”) to Complainant’s fully incorporated mark.
Respondent lacks rights and legitimate interests in the <zillow.realty> domain name because Respondent is not commonly known by the Domain Name and is not licensed or permitted to use Complainant’s mark in any fashion. Additionally, Respondent fails to use the Domain Name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent registered the Domain Name for the purpose of selling it.
Respondent registered and uses the <zillow.realty> domain name in bad faith because Respondent registered the Domain Name for the purpose of selling it to Complainant or a competitor. Further, Respondent had actual knowledge of Complainant’s rights in the mark because Respondent incorporates the “.realty” gTLD, where Complainant is famous in the real estate industry, and Respondent contacted Complainant to sell the Domain Name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding but in its informal communication agreed to transfer the Domain Name to the Complainant.
Respondent consents to transfer the <zillow.realty> domain name to Complainant. However, after the initiation of this proceeding, FastDomain Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the Domain Name while this proceeding is still pending.
In a circumstance such as this, where Respondent has not contested the transfer of the Domain Name, but instead agrees to transfer the Domain Name to Complainant, the Panel is authorized to forego the traditional UDRP analysis. This Panel, in recognition of the common request of the parties, in the interests of judicial expedience, and in the absence of any aggravating circumstances, has so decided to forego the traditional UDRP analysis and to order an immediate transfer of the <zillow.realty> domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
As the remedy of the Complainant and the request of the Respondent both sought to transfer the Domain Name from the Respondent to the Complainant, the Panel concludes that such relief shall be GRANTED.
Accordingly, it is Ordered that the <zillow.realty> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 9, 2019
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