Tumblr, Inc. v. Above.com Domain Privacy
Claim Number: FA1402001543480
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com>, registered with Above.com Pty Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2014; the National Arbitration Forum received payment on February 12, 2014.
On February 16, 2014, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names are registered with Above.com Pty Ltd and that Respondent is the current registrant of the names. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd 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 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 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@tmblr.net, postmaster@tu7mblr.com, postmaster@tumbvlr.com, postmaster@tumhlr.com. Also on February 17, 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 13, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent is not commonly known by the infringing domain names.
ii. All of Respondent’s websites direct Internet users to the website <searchresultsguide.com>, which features links to third-party websites, some of which directly compete with Complainant’s business.
i. Respondent has demonstrated a pattern of bad faith use and registration.
ii. Respondent registered the infringing domain names with the intent to cause confusion and to capitalize on Complainant’s rights.
iii. Typosquatting alone is sufficient to prove bad faith.
iv. Respondent undoubtedly registered the infringing domain names 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.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is the owner of the TUMBLR trademark. Complainant’s TUMBLR platform allows individuals to post content such as text, photos, quotes, links, audio, and videos to an Internet-accessible blog.
2.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).
3.Respondent registered the <tumbvlr.com> domain name on August 4, 2011, the <tu7mblr.com> domain name on September 30, 2011, the <tumhlr.com> domain name on April 2, 2012, and the <tmblr.net> domain name on May 25, 2012.
4.Respondent registered the infringing domain names with actual knowledge of Complainant’s rights in its famous TUMBLR mark and with the intent to cause confusion and to capitalize on Complainant’s rights. Moreover, the domain names resolve to the website <searchresultsguide.com>, which features links to third-party websites, some of which directly compete with Complainant’s business.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it owns the trademark TUMBLR. Complainant alleges that the TUMBLR platform allows individuals to post content (such as text, photos, quotes, links, audio, and videos). Complainant asserts that its mark is used in connection with a microblogging and social sharing platform initially launched in 2007. Complainant contends that it is the owner of trademark registrations with the USPTO for the TUMBLR mark (e.g., Reg. No. 3,714,214, registered November 24, 2009). See Complainant’s Annex C. Complainant alleges that although Respondent appears to reside in Australia, since Complainant’s TUMBLR mark is registered in the United States and other international jurisdictions, Complainant has rights in the TUMBLR mark under Policy ¶ 4(a)(i). See Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Nat. Arb. Forum May 14, 2013) (finding that since Policy ¶ 4(a)(i) “does not require that the mark be registered in the country in which Respondent operates[,]… Complainant’s registration of the TUMBLR mark with the USPTO proves its rights in the mark under Policy ¶ 4(a)(i)).”). Based on Complainant’s registration of the TUMBLR mark with the USPTO, the Panel finds that Complainant has established rights in the mark pursuant to 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.”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s TUMBLR mark Complainant asserts that Respondent’s <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names are common misspellings of Complainant’s mark; specifically: (1) the <tmblr.net> domain name omits the letter “u” in Complainant’s TUMBLR mark and adds the gTLD “.net,” (2) the <tu7mblr.com> domain name adds the number “7” in between the “u” and “m” of Complainant’s TUMBLR mark and adds the gTLD “.com,” (3) the <tumbvlr.com> domain name adds the letter “v” between the “b” and “l” of Complainant’s TUMBLR mark and adds the gTLD “.com,” and (4) the <tumhlr.com> domain name replaces the letter “b” with the letter “h” and adds the gTLD “.com.” Complainant argues that adding, omitting, or replacing letters in Complainant’s mark shows that Respondent is attempting to capitalize on the common typographical errors of the TUMBLR mark. The Panel agrees that by adding a letter, eliminating a letter, or replacing a letter in Complainant’s mark, Respondent has not distinguished the disputed domain names from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Google Inc. v. hitendra aghara / balaji ele, FA1309001519713 (Nat. Arb. Forum Nov. 5, 2013) (“By registering a domain name that merely replaces the letters ‘oo’ with the numbers ‘00,’ which are similarly situated on the “QWERTY” keyboard, Respondent has deliberately created a likelihood that the website resolving from the disputed domain name will be confused for a website that is sponsored by or affiliated with Complainant. Accordingly, the Panel holds that Respondent has registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).”); see also Tumblr, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, D2013-0213 (WIPO March 29, 2013) (finding that the domain name <tumblor.com>, “when directly compared, is confusingly similar to the TUMBLR mark”); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Lastly, the Panel agrees that Respondent’s inclusion of the gTLD “.com” or “.net” to Complainant’s TUMBLR mark does not prevent a panel from finding confusing similarity pursuant to Policy ¶ 4(a)(i). See Tumblr, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, D2013-0213 (WIPO March 29, 2013) (“the use of the generic top-level domain (gTLD) “.com” in a disputed domain name does not affect a finding of similarity. The gTLD “.com” is technically required for the operation of a domain name, and thus it is without legal significance in an inquiry of similarity.”). Thus, the Panel concludes that Respondent’s <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names are confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s TUMBLR trademark and to use it in its domain names, making only minor spelling alterations and minor additions, namely (1) the <tmblr.net> domain name omits the letter “u” in Complainant’s TUMBLR mark and adds the gTLD “.net,” (2) the <tu7mblr.com> domain name adds the number “7” in between the “u” and “m” of Complainant’s TUMBLR mark and adds the gTLD “.com,” (3) the <tumbvlr.com> domain name adds the letter “v” between the “b” and “l” of Complainant’s TUMBLR mark and adds the gTLD “.com,” and (4) the <tumhlr.com> domain name replaces the letter “b” with the letter “h” and adds the gTLD “.com”;
(b) The inference must be drawn from the available evidence that
Respondent registered the infringing domain names with actual knowledge of Complainant’s rights in its famous TUMBLR mark and with the intent to cause confusion and to capitalize on Complainant’s rights;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant asserts that Respondent is not commonly known by the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names. Complainant claims that Respondent registered the infringing domain names through a privacy service, which enables Respondent to conceal its true identity. The Panel observes that the WHOIS information identifies “Above.com Domain Privacy” as the registrant of the disputed domain names. Complainant further argues that nothing else in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its TUMBLR mark. Thus, the Panel concludes, based on the WHOIS record, that Respondent is not commonly known under the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names pursuant to Policy ¶ 4(c)(ii). See Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum March 25, 2008) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or Whois information indicating respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its YAHOO! mark);
(e)Complainant argues that Respondent’s websites resolving from the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names direct Internet users to the website <searchresultsguide.com>, which features links to third-party websites, some of which directly compete with Complainant’s business. See Complainant’s Annex P. Complainant argues that Respondent receives pay-per-click fees from the linked websites appearing on the website and/or a referral fee for each misdirected Internet user. Complainant states that Respondent’s use of the infringing domain names comprising Complainant’s mark or a mark confusingly similar to Complainant’s mark proves Respondent’s intent to divert consumers. Complainant also claims that it is clear that Respondent registered the disputed domain names with Complainant’s mark in mind and with the intention of diverting to its past, current, and/or future websites Internet traffic intended for Complainant. In American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Nat. Arb. Forum Jun. 23, 2009), the panel held no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use. The Panel therefore finds that Respondent’s use of the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names to monetize domain names using redirecting services is not a bona fide offering of goods or services giving rise to rights or legitimate interests in a disputed domain name.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent has demonstrated a pattern of bad faith use and registration. Complainant argues that Respondent registered the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names, all of which include a misspelling of Complainant’s TUMBLR mark. Complainant asserts that registration of multiple confusingly similar domain names to Complainant’s mark is “indicative of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).” See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Accordingly, the Panel holds that Respondent’s registration of several domain names evidences bad faith use and registration under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent registered the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names with the intent to cause confusion and to capitalize on Complainant’s rights. Complainant argues that Respondent’s websites resolving from the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names direct Internet users to the website <searchresultsguide.com>, which features links to third-party websites, some of which directly compete with Complainant’s business. See Complainant’s Annex P. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Thus, the Panel determines that Respondent has intended to attract consumers to its own website, through creating confusion with Complainant’s mark, for its own benefit, showing bad faith use and registration under Policy ¶ 4(b)(iv).
Thirdly, Complainant claims that typosquatting alone is sufficient to prove bad faith. The Panel notes that Respondent either removes a letter, adds a letter, adds a number, or replacing a letter in Complainant’s TUMBLR mark for its <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names. The Panel finds that Respondent’s actions constitute typosquatting, showing bad faith use and registration under Policy 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Fourthly, Complainant asserts that Respondent undoubtedly registered the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names 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. Complainant argues that it first made use of the TUMBLR mark in 2007, and the mark has been recognized and relied upon by online consumers throughout the world to identify and distinguish Complainant’s website and services from the goods and services of others for years. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the TUMBLR mark, the nature of those registrations and the use to which the domain names have been put, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tmblr.net>, <tu7mblr.com>, <tumbvlr.com>, and <tumhlr.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 15, 2014
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