San Diego brokerage claims referral site violates its trademarks

Ascentrealestate.com refers traffic to ZipRealty.com

Editor’s note: This story has been updated to correct that ascentrealestate.com is part of a third-party affiliate marketing program.

A San Diego-based brokerage with 123 sales agents is trying to stop a domain that incorporates the brokerage’s name from being used as a referral site to direct traffic to ZipRealty.com.

Gavel image via Shutterstock.
Gavel image via Shutterstock.

Ascent Real Estate Inc. claims Emeryville, Calif.-based ZipRealty and the Web developer that owns the domain, ascentrealestate.com, are infringing on the company’s trademarks.

The Web developer — Santa Rosa, Calif.-based Electronic Creations Corp. — has filed suit against Ascent Real Estate in the hopes of obtaining a ruling that it has not infringed on the brokerage’s trademarks or violated the Anticybersquatting Consumer Protection Act.

In its complaint, ECC says it’s owned the domain ascentrealestate.com for more than 13 years — long before Ascent Real Estate registered the domain name of the website it uses to market itself to consumers, ascentrealestate.net.

Visitors who search for property on ascentrealestate.com, or click on “find an agent” or home valuation links are redirected to ZipRealty.com. ZipRealty.com is the website for the company’s brokerage operations in 19 markets, and also provides referrals to partner brokerages in 17 additional “Powered by Zip” markets.

ZipRealty, which is neither a plaintiff nor defendant in the lawsuit, says ascentrealestate.com is part of a third-party affiliate marketing program operated by Commission Junction.

A ZipRealty spokeswoman declined to comment on the lawsuit, because the company does not comment on third-party lawsuits.

ECC’s two-count suit against Ascent Real Estate calls for declarations of no trademark infringement and no cyberpiracy on the part of ECC in order to “establish whether ECC and its business partner ZipRealty Inc. may continue using the ascentrealestate.com domain name.”

According to court filings, ECC has been the owner of the ascentrealestate.com domain name since April 2000, well before Ascent Real Estate registered its current ascentrealestate.net domain in March 2005 and before the brokerage was issued its first trademark in January 2007. A second trademark was issued in October 2012.

“(ECC) acquired the domain name because the Ascent brand is positive and uplifting, and has religious connotations for one of the principals of ECC,” the complaint said.

The Web developer also owns AscendRealEstate.com, AscensionHomes.com, AscensionProperties.com, AscensionProperty.com, AscensionRealEstate.com and AscensionRealty.com.

In a cease-and-desist letter sent to ZipRealty in April, Ascent Real Estate alleged ZipRealty was infringing on Ascent’s trademark.

“The similarities of the trademarks, target markets, customers and channels of trade indicate that your use of  ‘Ascent Real Estate’ is likely to cause confusion or deception in the marketplace,” the letter said.

“Clients may believe our companies are associated or connected in some manner. Your company’s target audience is identical to Ascent’s target audience. The customers and clientele are the same. The channels of trade are the same.”

In a response letter that same month, ECC denied any infringement and said Ascent’s assertions appeared to be “attempted reverse domain name hijacking.”

ECC also noted that Ascent’s trademark rights did not exist at the time ECC registered its domain name. But in a subsequent June letter, Ascent claimed that ascentrealestate.com had been dormant for several years and that ECC had begun to use the term “Ascent Real Estate” on the site only recently and after Ascent’s trademarks had been issued.

In the complaint, ECC said it has used and/or licensed the ascentrealestate.com domain name continuously since acquiring it, and has used the domain to display Web pages with information about real estate-related services.

The complaint asks for a declaration that ECC’s use of the ascentrealestate.com domain name “does not infringe or dilute any valid trademark registrations owned by Ascent or any common law rights Ascent may have accrued through the use of the Ascent (trademarks) and does not violate any applicable common law or statutory unfair competition law,” including the Lanham Act.

The complaint also requests that the court declare that ECC’s registration and use of the ascentrealestate.com domain name does not violate the Anticybersquatting Consumer Protection Act, which is part of the Lanham Act, and was designed to prevent “cybersquatting” — the act of registering a domain name in bad faith.

An attorney for ECC, Anthony Son, and Ascent Real Estate co-founders Penny Nathan and Ken Pecus did not respond to requests for comment for this story.