Tumblr, Inc. v. Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV
Claim Number: FA1312001535777
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xtumblr.com>, registered with Key-Systems 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2013; the National Arbitration Forum received payment on December 20, 2013. The Complaint was submitted in both Dutch and English.
On Jan 24, 2014, Key-Systems GmbH confirmed by e-mail to the National Arbitration Forum that the <xtumblr.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 24, 2014, the Forum served the Dutch language Complaint and all Annexes, including a Dutch language Written Notice of the Complaint, setting a deadline of February 13, 2014 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@xtumblr.com. Also on January 24, 2014, the Dutch language 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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) 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, 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.
Language of the Proceedings
The Registration Agreement is written in Dutch, thereby making the language of the proceedings in Dutch. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Dutch language Complaint and Commencement Notification, and, absent a formal and compliant Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
i. Respondent is not commonly known by the infringing domain name.
ii. Respondent uses the infringing domain name to host pornographic and adult-oriented content.
i. Respondent’s registration and use of the infringing domain name to host pornography and link to other pornographic sites constitutes a bad faith effort to capitalize on consumers’ familiarity with Complainant and its TUMBLR mark and intentionally attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its TUMBLR mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent and/or the content of Respondent’s website, as well as a likelihood of confusion as to the affiliation of Complainant with the third-party pornography sites linking to Respondent’s website.
ii. Respondent undoubtedly registered the infringing domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark because Complainant’s mark is internationally recognized.
Respondent registered the <xtumblr.com> domain name on January 7, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Tumblr, Inc., uses its TUMBLR mark in connection with a microblogging and social sharing platform initially launched in 2007. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TUMBLR mark (e.g., Reg. No. 3,714,214, registered November 24, 2009).
Respondent, Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV, registered the <xtumblr.com> domain name on January 7, 2013. Respondent allegedly uses the <xtumblr.com> domain name to host pornographic and adult-oriented content.
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 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(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.”).
Complainant has rights in the TUMBLR mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”). While Respondent appears to reside in the Netherlands, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the jurisdiction in which Respondent resides, so long as it can demonstrate rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <xtumblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i). Respondent’s addition of the letter “x” and gTLD to Complainant’s TUMBLR mark does not differentiate the <xtumblr.com> domain name from Complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). Respondent’s addition of a gTLD to Complainant’s mark is irrelevant to a Policy ¶ 4(a)(i) determination. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent is not commonly known by the <xtumblr.com> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent to use its TUMBLR mark. Although the WHOIS record identifies “Customer Domain Web-Oke.nl / WebaWere Internet Solutions BV” as the registrant of the disputed domain name, Respondent has not provided the Panel with any evidence to counter Complainant’s assertions or demonstrate that it was commonly known by the disputed domain name prior to registration. Without such evidence, the Panel finds that Respondent failed to meet its burden and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate interests in domain names because it is not commonly known by the complainant’s marks and the respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Yahoo! Inc. v. Dough, FA 245971 (Nat. Arb. Forum May 5, 2004) (finding that although “the WHOIS information for the <yasexhoo.com> domain name states that the registrant is YASEXHOO . . . this alone is insufficient to show that Respondent is commonly known by the domain name.”); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Complainant alleges that Respondent uses the <xtumblr.com> domain name to host adult-oriented material. As Respondent has not responded to Complainant’s allegation, the Panel finds that Respondent’s alleged use of the <xtumblr.com> domain name to provide adult-oriented material is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
Complainant alleges that Respondent’s registration and use of the <xtumblr.com> domain name to host adult-oriented content constitutes a bad faith effort to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant and its TUMBLR mark. The Panel concludes that Respondent’s alleged use of the <xtumblr.com> domain name to lead to adult-oriented material shows bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)).
Respondent registered the <xtumblr.com> domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent had actual knowledge of Complainant’s rights in the TUMBLR mark. 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).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xtumblr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 3, 2014
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