Tumblr, Inc. v. zhao xiaobing
Claim Number: FA1303001492271
Complainant is Tumblr, Inc. (“Complainant”), represented by Arian Shahdadi of General Counsel and Assistant Secretary, Tumblr, Inc., New York, USA. Respondent is zhao xiaobing (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblr.us>, registered with 1API GmbH.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 29, 2013; the National Arbitration Forum received a hard copy on April 2, 2013.
On April 3, 2013, 1API GmbH confirmed by e-mail to the National Arbitration Forum that the <tumblr.us> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 4, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 24, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) Rules for the U.S. Department of Commerce’s usTLD Dispute Resolution Policy "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 usTLD Policy, usTLD Rules, the National Arbitration 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TUMBLR mark. Respondent’s domain name is confusingly similar to Complainant’s TUMBLR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tumblr.us> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 or 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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant, Tumblr, Inc., asserts that it owns and operates a social sharing platform and media network that was released in February 2007. Complainant argues that its platform allows individuals to create, post, and share digital content (such as text, photos, quotes, links, audio, and videos) online. Complainant argues that it is the owner of trademark registrations with the USPTO for the TUMBLR mark (Reg. No. 3,714,214, registered November 24, 2009). Although Respondent appears to reside in China, Policy ¶ 4(a)(i) does not require that the mark be registered in the country in which Respondent operates and it is sufficient that Complainant can demonstrate a mark in some jurisdiction. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). The Panel therefore concludes that Complainant’s registration of the TUMBLR mark with the USPTO proves its rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant contends that Respondent’s <tumblr.us> domain name is confusingly similar to Complainant’s TUMBLR mark because it consists of Complainant’s TUMBLR plus the ccTLD “us.” The addition of a ccTLD to a domain name does not negate confusing similarity under Policy ¶ 4(a)(i). See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). Thus, the Panel concludes that Respondent’s <tumblr.us> domain name is confusingly similar to Complainant’s TUMBLR mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent cannot demonstrate that it is commonly known by <tumblr.us>. The WHOIS information identifies “zhao xiaobing” as the registrant of the disputed domain name. Complainant contends that neither a Google search nor the unresolved domain found at <tumblr.us> provide any evidence that Respondent is commonly known as “tumblr” or <tumblr.us>. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent’s domain name currently resolves to a DNS error. Respondent’s disputed domain name resolves to a webpage that says “Oops! Google Chrome could not find tumblr.us.” Thus, Respondent has failed to make an active use of the disputed domain name which is not a Policy ¶ 4(c)(ii) bona fide offering of goods and services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent recently contacted
Complainant with an offer to sell the <tumblr.us> domain name at
an exorbitant price. Complainant asserts that Respondent registered the <tumblr.us>
domain name primarily for the bad faith purpose of selling the domain to the
owner of the trademark for valuable consideration in excess of Respondent’s documented
out-of-pocket costs. Complainant contends that Respondent sent a targeted
solicitation to Complainant offering to sell <tumblr.us> for
34,500 Chinese Yuan, or the U.S. equivalent of over $5,000. Respondent’s offer
of the disputed domain name to Complainant evidences bad faith use or
registration pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc.
v. McBroom,
FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent
registered and was using the <gwbakeries.mobi> domain name in bad faith
according to Policy ¶ 4(b)(i) where it offered it for sale for far more than
its estimated out-of-pocket costs it incurred in initially registering the
disputed domain name).
Complainant asserts that Respondent was “fully aware” of Complainant’s
TUMBLR mark at the time Respondent registered the <tumblr.us>
domain name, as demonstrated by its e-mail solicitations, which claim the
domain name would be “useful” to Complainant to “brand” its business and its
verbatim incorporation of the mark in the domain name. Respondent’s obvious
actual knowledge of Complainant’s TUBMLR mark prior to registering the disputed
domain name is evidence of Respondent’s bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Yahoo!
Inc. v. Butler,
FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the
respondent was "well-aware of the complainant's YAHOO! mark at the time of
registration).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumblr.us> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 14, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page