Tumblr, Inc. v. Yingfeng Wang / Wang
Claim Number: FA1401001541403
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Yingfeng Wang / Wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblr.mobi>, registered with Moniker Online Services LLC (228).
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2014; the National Arbitration Forum received payment on January 29, 2014.
On February 3, 2014, Moniker Online Services LLC (228) confirmed by e-mail to the National Arbitration Forum that the <tumblr.mobi> domain name is registered with Moniker Online Services LLC (228) and that Respondent is the current registrant of the name. Moniker Online Services LLC (228) has verified that Respondent is bound by the Moniker Online Services LLC (228) 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 February 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 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.mobi. Also on February 4, 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 March 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant, Tumblr, Inc. uses the 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 Trademark and Patent Office (“USPTO”) for the TUMBLR mark (e.g., Reg. No. 3,714,214, registered November 24, 2009).
The addition of the generic top-level domain “.mobi” to the TUMBLR mark does not differentiate the infringing domain name from Complainant’s mark.
Respondent has no rights or legitimate interests in the <tumblr.mobi> domain name. Respondent is not commonly known by the disputed domain name. Respondent uses the disputed domain name to divert Internet users to an adult-oriented dating website for commercial gain.
Respondent has registered and is using the <tumblr.mobi> domain name in bad faith. Respondent is a cybersquatter preventing Complainant from commercially exploiting its mark on the Internet. Respondent’s registration of the confusingly similar infringing domain name is intended to divert Internet users from Complainant’s website for the purpose of financial gain by exploiting the goodwill and recognition
Complainant gained in its mark. Respondent registered the infringing domain name with the intent to cause confusion and to capitalize on Complainant’s rights.
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—and likely famous—and is registered in the United States, Europe, and elsewhere throughout the world.
Respondent registered the <tumblr.mobi> domain name on December 20, 2009.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for the TUMBLR mark as well as other registrations for TUMBLR worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the TUMBLR mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in TUMBLR.
Respondent uses the <tumblr.mobi> domain name to divert Internet users to an adult-oriented dating website for commercial gain.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the TUMBLR mark. Such rights also flow from Complainant’s other registrations for the TUMBLR worldwide. For the purposes of Policy ¶4(a)(i), it is irrelevant that Respondent may operate outside the jurisdiction of the relevant trademark registrars. 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, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <tumblr.com.co> domain name consists of Complainant’s entire TUMBLR trademark with “.mobi” appended thereto. Adding the “.mobi” –a top-level domain name- to Complainant’s mark does not distinguish the domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <tumblr.com.co> domain name is identical to Complainant’s TUMBLR mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “Yingfeng Wang” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <tumblr.mobi> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s at-issue domain name redirects to <ihookup.com> an adult-oriented website, and using a domain name identical to Complainant’s trademark in this manner shows Respondent’s underlying intent to divert consumers from Complainant’s legitimate web presence. Therefore, Complainant’s use of the at-issue domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
As mentioned above, Respondent’s at-issue identical domain name links to <ihookup.com>, an adult-oriented website. Therefore, it is clear that Respondent registered the <tumblr.mobi> domain name with the intent to cause confusion and to capitalize on Complainant’s rights, presumably for commercially benefit. Respondent’s use of the domain name demonstrates that Respondent has registered and is using <tumblr.mobi> domain name in bad faith pursuant to 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)). Additionally, since Respondent has registered the <tumblr.mobi> domain name to provide adult-oriented material on its website, a use that is disruptive to Complainant’s business, bad faith use and registration is also demonstrated under Policy ¶ 4(a)(iii).See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site).
Finally, Respondent registered the <tumblr.com.co> domain name after Complainant’s TUMBLR mark had gained worldwide recognition and well after Complainant had applied for and/or obtained registration for its TUMBLR mark in the United States and elsewhere. Therefore, it is evident that Respondent had actual knowledge of Complainant’s trademark prior to registering the at-issue domain name. Respondent’s prior knowledge of Complainant's trademark shows Respondent’s 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").
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.mobi> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 5, 2014
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