Tumblr, Inc. v. Viet Blogs
Claim Number: FA1401001539462
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Viet Blogs (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblr.info>, registered with eNom, Inc. (R126-LRMS).
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2014; the National Arbitration Forum received payment on January 15, 2014.
On January 16, 2014, eNom, Inc. (R126-LRMS) confirmed by e-mail to the National Arbitration Forum that the <tumblr.info> domain name is registered with eNom, Inc. (R126-LRMS) and that Respondent is the current registrant of the name. eNom, Inc. (R126-LRMS) has verified that Respondent is bound by the eNom, Inc. (R126-LRMS) 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 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 5, 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@tumblr.info. Also on January 16, 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 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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.
1. Complainant
a) Complainant is the owner of the TUMBLR mark which it reflects via the <tumblr.com> domain name in connection with a microblogging and social sharing platform initially launched in 2007. Complainant’s mark is protected in countries around the world, including through registrations with the United States Patent and Trademark Office (“USPTO”) for the TUMBLR mark (e.g., Reg. No. 3,714,214 filed Oct. 27, 2008; registered Nov. 24, 2009).
b) Complainant’s trademark registrations list a first use date of February 19, 2007. Complainant’s trademark registrations also exist in countries throughout the world, as Complainant is dedicated to protecting its mark which has no meaning other than as a trademark denoting Complainant’s goods and services. Complainant’s TUMBLR platform allows individuals to post content to an Internet-accessible blog. Complainant has created one of the fastest growing social networking websites—two weeks after the TUMBLR website launch there were 75 thousand registered users. By May 2009, Complainant was hosting one million blogs via the TUMBLR website. Complainant owns many domain names incorporating the TUMBLR mark. As a result of Complainant’s extensive investment and promotion, the TUMBLR mark enjoys a substantial degree of public recognition.
c) The <tumblr.info> domain name is identical to the TUMBLR mark. The disputed domain name is merely Complainant’s mark and the generic top-level domain (“gTLD”) “.info.”
d) Respondent has no rights or legitimate interest in the <tumblr.info> domain name.
a. Respondent is not commonly known by the disputed domain name. Nothing in the WHOIS information for the <tumblr.info> domain name suggests that Respondent is known by the <tumblr.info> domain name or any derivative, and Complainant has not authorized Respondent to use its TUMBLR mark.
b. The <tumblr.info> domain name resolves to a DNS error page rather than to an active website.
e) Respondent’s actions are a product of bad faith.
a. Respondent registered the <tumblr.info> domain name with Complainant’s TUMBLR mark in mind and with intent to cause confusion. The conceptual and commercial strength of the TUMBLR mark further supports the argument that Respondent registered the <tumblr.info> domain name with the intent to cause confusion and capitalize on Complainant’s rights.
b. Respondent obviously registered the <tumblr.info> domain name with actual knowledge of Complainant’s rights in the TUMBLR mark. Respondent registered the disputed domain name on July 19, 2008, during a period in which the TUMBLR website experienced exponential growth, and Complainant’s mark has garnered worldwide recognition and fame.
2. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 argues that it is the owner of the TUMBLR mark which it reflects via the <tumblr.com> domain name in connection with a microblogging and social sharing platform initially launched in 2007. Complainant states that its mark is protected in countries around the world, including through registrations with the USPTO for the TUMBLR mark (e.g., Reg. No. 3,714,214 filed Oct. 27, 2008; registered Nov. 24, 2009). The Panel notes that a trend of precedent has been established that, regardless of the location of the parties, the registration of a mark is evidence of having rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Panels have expanded this to make clear that these rights extend back to the date the registration application was filed. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). The Panel finds that Complainant has trademark registration-based rights in the TUMBLR mark dating back to October 27, 2008 pursuant to Policy ¶ 4(a)(i).
Complainant provides the Panel with arguments and support for its use of the TUMBLR mark prior to its filing of a trademark application. Complainant notes that its trademark registrations list a first use date of February 19, 2007. Complainant states that its trademark registrations also exist in countries throughout the world, as Complainant is dedicated to protecting its mark which has no meaning other than as a trademark denoting Complainant’s goods and services. Complainant notes that its TUMBLR platform allows individuals to post content to an Internet-accessible blog. Complainant argues that it has created one of the fastest growing social networking websites—two weeks after the TUMBLR website launch there were 75 thousand registered users. Complainant notes that, by May 2009, Complainant was hosting one million blogs via the TUMBLR website. Complainant asserts that it owns many domain names incorporating the TUMBLR mark, and contends that, as a result of Complainant’s extensive investment and promotion, the TUMBLR mark enjoys a substantial degree of public recognition. Therefore, the Panel finds that Complainant’s rights in the TUMBLR mark actually date back to February 19, 2007 by virtue of common law rights under Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Next, Complainant alleges that the <tumblr.info> domain name is identical to the TUMBLR mark. Complainant points out that the disputed domain name is merely Complainant’s mark and the gTLD “.info.” It has been established that the addition of the gTLD “.info” to a mark reproduced in its entirety does not undo the fact that the disputed domain name is identical to the allegedly-infringed-upon mark. See PepsiCo, Inc. v. Shah, FA 103934 (Nat. Arb. Forum Mar. 4, 2002) (finding the <pepsico.info> domain name identical to the complainant’s PEPSICO mark). Therefore, the Panel finds that Respondent’s <tumblr.info> domain name is identical to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interest in the <tumblr.info> domain name. According to Complainant, Respondent is not commonly known by the disputed domain name. Nothing in the WHOIS information for the <tumblr.info> domain name, Complainant argues, suggests that Respondent is known by the <tumblr.info> domain name or any derivative, and Complainant has not authorized Respondent to use its TUMBLR mark. The Panel notes that the WHOIS record for the disputed domain name lists “Viet Blogs” as the domain name registrant. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the 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 the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. The Panel finds that Respondent is not commonly known by the <tumblr.info> domain name under Policy ¶ 4(c)(ii).
Complainant asserts that the <tumblr.info> domain name resolves to a DNS error page rather than to an active website. The Panel notes that the domain name evidently resolves to an error message reading “Unavailable Shop.” The Panel in Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005), found that that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds that Respondent’s non-use of the <tumblr.info> domain name cannot qualify as a Policy ¶¶ 4(c)(i) and 4(c)(iii) bona fide offering of goods or services, or legitimate noncommercial or fair use, which could establish rights or legitimate interests.
Complainant has proven this element.
Complainant contends that Respondent’s actions are a product of bad faith. Complainant asserts that Respondent registered the <tumblr.info> domain name with Complainant’s TUMBLR mark in mind and with intent to cause confusion. Complainant claims that the conceptual and commercial strength of the TUMBLR mark further supports the argument that Respondent registered the <tumblr.info> domain name with the intent to cause confusion and capitalize on Complainant’s rights. In Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000), the panel found no bad faith where the respondent operated the fan club website without commercial gain, therefore the requirements of Policy ¶ 4(b)(iv) could not be established. The Panel finds that, given that the disputed domain name resolves to an inactive website, Respondent cannot be profiting from the domain name’s registration. Therefore, the Panel finds that, as the elements of Policy ¶ 4(b)(iv) require a showing of commercial gain, the Panel disregards Complainant’s arguments relating to Policy ¶ 4(b)(iv) bad faith.
Policy ¶ 4(b) sets out a list of factors which are to be considered when making a determination of bad faith. However, panels have consistently held that this list is not meant to be exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name based on a review of the totality of the circumstances.
Complainant alleges that the <tumblr.info> domain name resolves to a DNS error page. Panels have previously held that the registration and non-use of a disputed domain name is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent’s registration and non-use of the <tumblr.info> domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
Complainant contends that Respondent obviously registered the <tumblr.info> domain name with actual knowledge of Complainant’s rights in the TUMBLR mark. Complainant notes that Respondent registered the disputed domain name on July 19, 2008, during a period in which the TUMBLR website experienced exponential growth, and Complainant’s mark has garnered worldwide recognition and fame. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant has proven this element.
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 <tumblr.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: February 12, 2014
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