Zillow v. Chris Storseth NAF Case No. FA1409001578264, 3 Oct 2014
It is interesting – and great fun- when the argument is put in a domain name case that the site is a gripe site or a fan site or, as they are sometimes called- a tribute site. It is sometimes said that the party who registered the domain name has a freedom of speech defence, giving rise to a right or legitimate interest in the domain name.
In essence, the United States First Amendment protection is quite limited unless used properly. Simply asserting that you have the right to free speech will not automatically allow you to use another’s trademark. If a respondent uses the disputed website for anything other than ‘genuine criticism’, and instead as a vehicle to further their own interests, they will not be afforded constitutional projection. The decision below, Zillow v. Chris Storseth, exemplifies that invoking freedom of speech will not provide a respondent with an impenetrable defence. As usual, we repeat the point that evidence is needed.
The Complainant, Zillow, Inc, is an online US real estate company that has registered <Zillow.com>. The website attracts much traffic, and revenue generated has grown greatly in the period since its commenced operation. The complainant registered ZILLOW as a trademark with the USPTO in 2012. Further USPTO registrations include ZESTIMATE, DIGS, the DUELLING DIGS mark, as well as a Z mark “consisting of the letter ‘z’ within a house design.
The Respondent was Chris Storseth, both a broker and realtor by occupation. The respondent had registered 32 domain names using variations of ZILLOW marks owned by the complainant. Once a user clicked on one of the domain names below, they were re-routed to <acluefor you.com>, a website in which the respondent provided critical commentary of the complainant’s business activities.
Disputed Domain Names
<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>
The Complainant tendered evidence arguing it could satisfy the necessary elements of paragraph 4(a) as required under the Policy. Regarding the first element, the complainant put forward that the disputed domain names were confusingly similar to the ZILLOW mark, as they were simply the complainant’s registered mark with the addition of a generic or descriptive term, such as “ premieragent” or a new top-level domain like “.com”. Because the respondent has never been known by the ZILLOW marks, the complainant further argued that the respondent lack rights and legitimate interests in the disputed names. The complainant contended the circumstances warranted bad faith, providing evidence that the respondent sought to make a profit by selling the disputed domain names. Additionally, the sheer volume of variations of the complainant’s mark that were registered was indicative of bad faith..
The predominant argument put forward by the respondent was that he was entitled to the protection of the free speech amendment to the American Constitution. The respondent contended the disputed domain names were entitled to constitutional protection because they were ‘gripe sites’, as they put-forward unfavourable views regarding the complainant’s real estate operations, and were therefore shielded from censorship for providing critical commentary of the complainant’s business activities. Therefore, despite the fact he was using elements of the complainant’s mark, the respondent argued he had a right or a legitimate interest in the domain names.
The Panel’s Decision: Complainant Successful
Navigating its way through the numerous issues it was confronted with due to the vast quantity of domain names in dispute, the panel ultimately found in favour of the complainant, ordering the domain names to be transferred. The panel held that despite employing numerous variations of marks owned by the complainant, all the domain names were nonetheless identical and/or confusingly similar. The respondent simply utilised the complainant’s name and mark to confuse users into believing the domain names were genuine and that they would be re-directed to a related website of the ZILLOW real estate business. The reasoning outlining why, in spite of using a “plethora” of variations relating to the Zillow mark all were considered to be in contravention of Paragraph 4(a)(i), provides a great insight into how panellists will apply the UDRP to unravel the complex issues involved, but unfortunately is beyond the scope of this article.
Having found that the complainant had made out a prima facie case that the Respondent did not have rights or legitimate interests in the disputed domain names, the burden was then shifted to the respondent to rebut the case against him. In finding that the respondent was not entitled to rely on the constitutional principles, the panel held that none of the disputed domain names were dedicated to free speech or criticism. The panel was quite emphatic in its rejection of the respondent’s free speech defence, labelling it a “transparently false suggestion” due to evidence indicating the disputed domain names had been used to promote and solicit business. As the content of the site was not exclusively devoted to criticising ZILLOW’s business, but rather used in combination with the exploitation of commercial opportunity, the respondent was found to lack rights or legitimate interests in the disputed domain names.
Finally, the panel held the respondent had engaged in bad faith pursuant of 4(a)(iii) of the Policy. In addition to facilitating the disruption of the complainant’s business, the large quantity of domain names registered by the respondent had acted to prevent the complainant from utilising its mark in a domain name. The evidence also showed the respondent not only employed the <aclueforyou.com> domain name and website as a means to criticise the complainant, but also as a way to promote his own business. Further, the respondent also appeared to be profiting from the goodwill generated by the mark and the subsequent confusion caused, as in some circumstances users were re-directed to competitors of the complainant. Accordingly, ‘”due to the overwhelming nature of the evidence”, the third element of bad faith was satisfied.
When is a Gripe Site Not a Gripe Site?
The decision highlights that for the purposes of the UDRP, a gripe site will only be allowed to continue in situations of “genuine criticism”. If a respondent can show the website is being utilised solely for the purpose of expressing criticism, mockery, or disapproval, they may be able to prove they have a right or legitimate interest in the domain name. Consequently, the key point in determining the boundaries of a gripe site, and where they end, will be decided by the content of the website. If a respondent steps outside the clearly delineated borders of authentic denunciation, not even the powerful shield of the First Amendment will save them.
Commercial gain is not prohibited under the Policy, but what is not permitted is the use of another’s trademark in furtherance of one’s own business activities.
There was no doubt that the <aclueforyou.com> website expressed strong criticism of the complainant’s business activities. Had the respondent limited his website to disparaging Zillow’s real estate business, for the purposes of the Policy it would likely have constituted a gripe site. However, the fact the respondent used the websites to facilitate the promotion of his own business as well as a conduit to solicit business from others was critical in the panel ruling against him. In this case, the website included personal information about himself, provided links to positive newspaper articles, and had a blog that contained the complainant’s ‘Z’ mark. Because the content of the <aclueforyou.com> website was clearly not restricted to providing critical perspectives of the complainant’s operations, the respondent could not be found to have any right or legitimate interest in the disputed domain names.
First Amendment protection of a website’s content is not excluded under the UDRP. However, the Policy will not allow the right to free speech to be used as a cloak, shielding the defendant’s in circumstances where their true intent is commercial gain. Panels have upheld the right to free speech defence on many occasions. As long as the disputed domain name is a legitimate gripe site, solely dedicated to critiquing or criticising an individual or person, the condemning content will probably be shielded by the First Amendment. Accordingly, defendants may shout the words ‘freedom of speech’ at the top of their lungs for all to hear, but in situations where they have used the website for commercial, financial or any other gain, the words will fall upon deaf ears.
NOTE: Jacob Bayley assisted with the research on this article but the views and opinions expressed are those of the Editor.