Tumblr, Inc. v. Michael Hussey
Claim Number: FA1401001538278
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Michael Hussey (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblrr.com>, registered with GoDaddy.com, LLC.
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 January 9, 2014; the National Arbitration Forum received payment on January 9, 2014.
On January 9, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tumblrr.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 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@tumblrr.com. Also on January 9, 2014, the 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 3, 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.
A. Complainant
i. Respondent is not commonly known by the infringing domain name.
ii. Respondent monetizes the infringing domain name by directing the infringing domain name to a parked pay-per-click or sponsored listings website.
i. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website.
ii. Respondent undoubtedly registered the infringing domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark.
Respondent registered the <tumblrr.com> domain name on December 1, 2007.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Tumblr, Inc., is the owner of the trademark TUMBLR, which is used 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, filed October 27, 2008). Complainant also has common law rights in the TUMBLR mark which were effective before Respondent’s December 1, 2007 registration of the disputed domain name.
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 pursuant to Policy ¶ 4(a)(i) through registration with the USPTO, effective October 27, 2008, the application date. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent registered the <tumblrr.com> domain name on December 1, 2007, before Complainant applied for registration of its TUMBLR mark. However, Complainant does not need a trademark registration for the TUMBLR mark if it can establish common law rights in the mark under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The <tumblr.com> website has been one of the fastest growing social networking websites. Two weeks after launching the <tumblr.com> website in February 2007, the site had 75,000 registered users. The <tumblr.com> website has continued to enjoy exponential growth, as evidenced from the 218% increase in visitors from 4.2 million in July 2010 to 13.4 million in July 2011. The TUMBLR mark has developed worldwide recognition and has been featured in media articles throughout the United States, the United Kingdom, and the rest of the world. See Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013)(“It is also recognized that the Complainant has continuously and extensively used, advertised, marketed and promoted the Complainant’s mark both within the United States and in foreign countries.”). The Panel finds that Complainant has established secondary meaning in the TUMBLR mark. Therefore, Complainant has common law rights to the TUMBLR mark according to Policy ¶ 4(a)(i), See Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007) (“The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).”). Complainant’s common law rights in the TUMBLR mark were effective before Respondent’s December 1, 2007 registration of the disputed domain name.
Respondent’s addition of the letter “r” and gTLD “.com” to Complainant’s TUMBLR mark does not differentiate the <tumblrr.com> domain name from Complainant’s mark under Policy ¶ 4(a)(i). 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)); See also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Thus, the Panel finds that Respondent’s <tumblrr.com> domain name is confusingly similar to Complainant’s TUMBLR mark pursuant to Policy ¶ 4(a)(i).
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 <tumblrr.com> domain name according to Policy ¶ 4(a)(i). The WHOIS information identifies “Michael Hussey” as the registrant of the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)( respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark).
Respondent directs the <tumblrr.com> domain name to a parked pay-per-click or sponsored listings website. See Complainant’s Annex N. The disputed domain name redirects traffic intended for <tumblr.com> to other commercial websites. Id. Respondent’s disputed domain name links to a webpage featuring links titled “Anything you want?,” “Public Arrest Records,” “Ellis Vener Photography,” and more. Id. A respondent’s use of a disputed domain name to provide a hyperlink directory 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 Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. The links to sponsored listings located on the <tumblrr.com> domain name are designed to attract customers for commercial gain. See Complainant’s Ex. N. See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006)(respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Therefore, the Panel finds that Respondent registered and is using the <tumblrr.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Respondent had actual knowledge of Complainant’s common law rights in the TUMBLR mark when he registered the <tumblrr.com> domain name. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <tumblrr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 17, 2014
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