DECISION

 

MFTB Holdco, Inc. dba Zillow v. Saqib Latif

Claim Number: FA2402002084151

 

PARTIES

Complainant is MFTB Holdco, Inc. dba Zillow ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Saqib Latif ("Respondent"), Pakistan.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zillowtrends.com> ("Domain Name"), registered with Name.com, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 16, 2024; Forum received payment on February 16, 2024.

 

On February 19, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <zillowtrends.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 February 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2024 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@zillowtrends.com. Also on February 20, 2024, 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 February 21, 2024 Forum received three e-mail communications from Respondent but did not receive a formal response.

 

Having received no formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 12, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a United States company that offers a range of real estate marketplace services and is particularly known for a website providing a range of real estate listings across the United States at www.zillow.com. Complainant has rights in the ZILLOW mark through its registration of the mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,175,031, registered November 21, 2006). Respondent's <zillowtrends.com> domain name is confusingly similar to Complainant's mark as Respondent merely adds the generic term "trends" and the ".com" generic top-level domain ("gTLD") to the wholly incorporated mark.

 

Respondents has no rights or legitimate interests in the <zillowtrends.com> domain name as Respondent is not commonly known by the Domain Name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant's mark. Furthermore, Respondent's use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is attempting to pass off as Complainant to further a phishing scheme to persuade users to provide it with their personal information, under the misapprehension that they are to receive services from Complainant.

 

Respondent registered and used the <zillowtrends.com> domain name in bad faith. Specifically, Respondent is attempting to pass off as Complainant to engage in phishing, which is disruptive to Complainant and provides commercial benefit to Respondent. Finally, Respondent had actual or constructive knowledge of Complainant's rights in the ZILLOW mark given the content of the website to which the Domain Name resolves ("Respondent's Website").

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.  However, on February 21, 2024 Forum received 3 informal e-mails from Respondent. In summary Respondent states that:

-       The Domain Name was acquired as an expired domain and at the time of registration was not reserved or flagged as being in conflict with any intellectual property rights.  The Respondent did not intend to cause any harm to the Complainant.

-       The Respondent's goal was to engage in affiliate marketing related to real estate properties. 

-       The Respondent's team has been working diligently to create a website that would be supported by advertisements once traffic has created.

-       The Respondent has removed any website from the Domain Name and lost its data. It would like to seek compensation for its loss.

 

FINDINGS

Complainant holds trademark rights for the ZILLOW mark.  The Domain Name is confusingly similar to Complainant's ZILLOW mark.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant has rights in the ZILLOW mark through its registration with the USPTO (e.g., Reg. No. 3,175,031, registered Nov. 21, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, "Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

The Panel finds that the <zillowtrends.com> domain name is confusing similar to Complainant's ZILLOW mark as it wholly incorporates the ZILLOW mark and then adds the descriptive word "trends" and the ".com" generic top-level domain ("gTLD"). Addition of generic or descriptive words and a gTLD does not sufficiently distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where "[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term 'outlet' to Complainant's registered SKECHERS mark, and appends the '.com' top-level domain.").

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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 holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ZILLOW mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where "Privacy Service" was listed as the registrant of the disputed domain name).  The WHOIS lists "Saqib Latif" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to the Respondent's Website that, under the Complainant's ZILLOW mark, purports to offer competing real estate marketplace services. The Respondent's Website, without permission of Complainant, copies copyrighted photos from Complainant's official website and as such cannot be a bona fide offering of services. However, Complainant's evidence is that the Respondent's Website is fraudulent, given its use of fake contact information and fictious real estate agents and that this use is part of a part of a phishing scheme whereby Respondent, through the Respondent's Website, attempts to pass off as Complainant to acquire personal information from misled visitors to the Respondent's Website. The Panel accepts Complainant's evidence and does not accept Respondent's unsupported claim that Respondent's Website was a legitimate website for the purposes of engaging in marketing; no legitimate website would use Complainant's well-known mark, copyrighted material and contain a large amount of fake information.

 

Given the reputation of the Complainant, its position in the real estate marketing industry, the nature of the Respondent's Website and an absence of a supported alternative explanation from the Respondent, the Panel accepts Complainant's contention and finds that, on its face, the Domain Name appears to have been used to create a website that purports to be an official website of Complainant, most likely for illicit purposes best characterized as "phishing".  The use of a domain name to deceive Internet users into believing an affiliation exists between a respondent and a complainant so to further a phishing scheme is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) ("Respondent uses the at-issue domain name to pose as Complainant's CEO by means of email addresses at the confusingly similar domain name in an attempt to determine Complainant's ability to process a transfer.  Using the domain name in this manner is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy  ¶ 4(c)(iii)"); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum March 7, 2018) ("Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).");

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that at the time Respondent registered the Domain Name, September 11, 2023, Respondent had actual knowledge of Complainant's ZILLOW mark. The ZILLOW mark is well known and there is no obvious reason (and none has been provided) as to why an entity would register the Domain Name containing the ZILLOW mark and redirect it to the Respondent's Website (which reproduces Complainant's ZILLOW Mark and copyrighted material and purports to offer identical services) other than to deceive Internet users into believing an affiliation exists between Complainant and Respondent. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith as Respondent uses or has used the Domain Name to impersonate Complainant in furtherance of a phishing scheme. Use of a disputed domain name to impersonate a complainant in furtherance of a phishing scheme is evidence of bad faith per Policy ¶ 4(a)(iii). See Google Inc. v. Domain Admin / Whois Privacy Corp., FA 1622862 (Forum Aug. 10, 2015) (finding that the respondent's apparent use of the disputed domain name in furtherance of a 'phishing' scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)).  Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶ 4(b)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zillowtrends.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 13, 2024