The Complainant is Zillow, Inc., of Seattle, Washington, United States of America, represented by Griffith Hack Patent and Trade Mark Attorneys, Australia.
The Respondent is Felix-Hoffman Anne-Simone, of Paddington, New South Wales,
Australia.
2. The Domain Name and Registrar
The disputed domain name <zillow.com.au> is registered with Enetica Pty
Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2006. On November 23, 2006 and subsequently, the Center transmitted by email to Enetica Pty Ltd a request for registrar verification in connection with the domain name at issue. On December 7, 2006, Enetica Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”) and the WIPO Supplemental Rules for .au Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraph 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2006. In accordance with paragraph 5 of the Rules, the due date for Response was December 28, 2006. The Respondent did not submit any response. Accordingly, the Center subsequently notified the Respondent’s default on January 10, 2007.
The Center appointed John Swinson as the sole panelist
in this matter on February 12, 2007. The Panel finds that it was properly constituted.
The Panel has submitted the Statement of Acceptance and Declaration of Impartiality
and Independence, as requested by the Center to ensure compliance with the Rules,
paragraph 7.
4. Factual Background
The Complainant operates an online real estate service at “www.zillow.com”. The service aims to help consumers by giving them access to the same kinds of information and tools that a real estate agent or broker would use. The website is branded “Zillow.com” with the tag line “Your Edge in Real Estate”.
The Complainant launched its beta website on February 8, 2006. (Prior to this, the Complainant’s website at “www.zillow.com” was active and was used to recruit staff for the business.)
Prior to the launch, the Complainant and its service received significant publicity in newspapers and magazines in the United States. After the launch on February 8, 2006, the Complainant and its service received publicity in well-known Australian newspapers and magazines.
The Complainant owns a large number of domain names that include the word “zillow”.
The Complainant owns a number of ZILLOW-related registered trade marks in various countries around the world, including a registered trade mark in Australia for ZILLOW.COM which was registered as effective from September 28, 2005.
The Respondent registered the disputed domain name on February 2, 2006. The Respondent resides in Sydney, Australia and operates a relocation service to assist people who are moving to Sydney find a place to live.
Currently, the website at the disputed domain name states that it is under construction, and shows a series of photographs. This website is virtually identical to the first page of another website operated by the Respondent at “www.exclusiverelocation.com”.
The Complainant’s trade mark attorney firm wrote to the Respondent in February 2006 demanding transfer of the disputed domain name. The Respondent’s solicitor responded, rejecting the demand and suggesting that the Respondent intended to offer relocation services under the ZILLOW name.
Soon thereafter, in early March 2006, the Respondent
filed an Australian trade mark application for “zillow”. This application
was accepted for registration, but is currently being opposed by the Complainant
and so has not issued as a registered trade mark. The address for service of
this trade mark application is listed as “Exclusive Relocation”
at an address in Sydney.
5. Parties’ Contentions
A. Complainant
The Complainant contents that:
a) The Complainant has been operating an online real estate service since February 8, 2006, that provides consumers with access to the same types of information and tools used by real estate professionals to determine property values. This service is accessible via a website on the domain name <zillow.com>. This domain was registered by the Complainant on September 16, 2004.
b) From the date of the launch of <zillow.com> in February 2006, to the
date of submitting the Complaint, the Complainant has earned worldwide revenue
amounting to approximately US$4,000,000 from goods and services bearing the
ZILLOW.COM trademark.
c) From the date of the launch of <zillow.com> in February 2006 to the date of submitting the Complaint, the worldwide advertising, public relations and promotional expenditures for goods and services bearing the ZILLOW.COM trademark amounts to approximately US$2,000,000.
d) The website <zillow.com> has received over 29,000,000 unique site visitors since its launch with 24,000 of these visitors from Australian IP addresses.
e) The Complainant was the subject of considerable media attention prior to and shortly after the launch of <zillow.com> in February 2006. This included reports from media in the United States and Australia, in particular, the area where the Respondent operated her business.
f) The disputed domain name <zillow.com.au> is identical to the ZILLOW.COM registered Australian mark. The ZILLOW.COM mark is highly distinctive and consumers would be likely to think that there is an association between that mark and the disputed domain name <zillow.com.au>.
g) The Respondent does not have any rights or legitimate interests in the disputed domain name because the Respondent has no connection with the Complainant and is not licensed or authorized to use the disputed domain name.
h) The Respondent has never been commonly known by ZILLOW.
i) The Respondent has not registered the business name ZILLOW in New South Wales.
j) The Respondent did not have any registered trademark rights in the ZILLOW mark as at the date of submission of the Complaint.
k) The Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and is intending to operate the existing business EXCLUSIVE RELOCATIONS under the name ZILLOW.
l) The Respondent is engaging in conduct which is misleading to consumers by diverting internet traffic away from the Complainant’s website. In addition, the Respondent is exploiting the publicity and confusion amongst consumers as to the association or affiliation of the Respondent with the Complainant.
m) The Respondent has registered and/or uses the disputed domain name in bad faith. The Respondent was aware of the publicity surrounding the launch of the website in February 2006 and intended to benefit. The Respondent registered the disputed domain name to divert internet traffic away from the Complainant to the disputed domain name.
n) The Complainant’s mark has acquired a reputation within a short period of time in many jurisdictions including Australia. The Respondent is intentionally attracting internet users to the disputed domain name by creating a likelihood of confusion with the Complainant’s ZILLOW.COM mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.
o) The Respondent never intended to operate a legitimate business under the disputed domain name and registration was designed to obstruct the Complainant’s business.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
To succeed in its Complaint, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has valid trademark rights in respect of the mark ZILLOW.COM.
The domain name <zillow.com.au> is identical to ZILLOW.COM except for
the addition of “.au”. It is well established that the insertion
of a country code top-level domain is without legal significance in determining
how identical or confusingly similar a domain name is to a trademark. See BT
Financial Group Pty Ltd v. Basketball Times Pty Ltd WIPO
Case No. DAU2004-0001, Bayerische Motoren Werke A G v. bmwcar. com WIPO
Case No. D2002-0615, Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor
Corporation v. S&S Enterprises Ltd WIPO
Case No. D2000-0802 and Telstra Corporation Limited v. Nuclear Marshmallows
WIPO Case No. D2000-0003.
Accordingly, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent had the opportunity to respond and present evidence but chose
not to do so. The Complainant is not entitled to relief simply by default, but
the Panel can and does draw evidentiary inferences from the failure to respond.
See Supre Pty Ltd v Paul King WIPO
Case No. DAU2004-0006. The Panel has considered the available evidence to
determine if the Respondent lacks rights or a legitimate interest in the disputed
domain name.
There is no evidence that shows that the Respondent has used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has not established a corporation in Australia that includes ZILLOW in its name and has not registered any State business name for or relating to ZILLOW.
The only evidence that the Respondent has made preparations to use, or has any intention of using, the disputed domain name is that the Respondent has applied to register an Australian trade mark for “zillow”. However, this application was made shortly after the Complainant wrote to the Respondent putting her on notice of the Complainant’s rights and demanding transfer of the disputed domain name. Accordingly, the Respondent cannot assert that “before any notice to [her] of the subject matter of the dispute” she had made demonstrable preparations to use the disputed domain name or a name corresponding to the domain name. See paragraph 4(c)(i) of the Policy.
The Panel concludes that the Respondent does not have any right or a legitimate interest in respect of the disputed domain name. Accordingly, for the above reasons, the Panel finds that the Complainant has satisfied element 4(a)(ii) of the Policy.
C. Registered or subsequently used in bad faith
In accordance with paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name has been registered or subsequently used in bad faith. Paragraph 4(b) of the Policy lists four examples of what may be regarded as the registration or use of a domain name in bad faith. These examples are not exhaustive and other factors, in addition to those set out in paragraph 4(b), may also be presented as evidence of the Respondent’s bad faith.
On the evidence, it is difficult to determine the exact reason why the Respondent registered the disputed domain name. The Complainant, in a well researched and clearly written Complaint, has a suggested a number of theories, and has explained why such theories are probable.
One other possibility is that it was a coincidence that the Respondent registered the disputed domain name six days prior to the beta launch of the Complainant’s service. For a number of reasons, this seems unlikely. The name ZILLOW is unusual and highly distinctive. The Complainant’s service received significant media exposure prior to launch, some of which would have made it across the Pacific Ocean to Australia. The Respondent is in the real estate business, and appears to focus on attracting clients from outside Australia. It is highly likely that the Respondent was aware of the Complainant’s service prior to February 2, 2006 and decided to register the disputed domain name in order to prevent the Complainant from reflecting the ZILLOW.COM mark in a corresponding domain name in Australia or to disrupt the business or activities of the Complainant.
As stated in the Complaint:
“The ZILLOW.COM trade mark is highly distinctive and it would be an unlikely coincidence indeed if [the Respondent] happened to independently devise such a distinctive trade mark and use it in a domain name for services relating to real estate at a time of overwhelming media attention to [the Complainant’s] business.”
The Complainant is the well-known operator of an online real estate service which provides consumers with information and tools for finding real estate mostly in the United States of America. Consumers and agents can list homes for sale on the site. More than 10,000 real estate agents have listings with the Complainant. The Complainant has submitted evidence of worldwide recognition of ZILLOW.COM and the recognition of the mark in Australia as reflected by the levels of activity on its website from Australian visitors. In addition, the Complainant has submitted extensive evidence of the international media attention before the date of the Respondent’s registration of the disputed domain name and the Respondent’s trademark application for ZILLOW. In short, it is unlikely that the Respondent independently devised the disputed domain name.
Accordingly, the Panel finds that the disputed domain name has been registered
in bad faith by the Respondent. The Complainant has satisfied paragraph 4(a)(iii)
of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraph 4(a) of the Policy, the Panel orders that the domain name <zillow.com.au> be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: March 1, 2007
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