Tumblr, Inc. v. Jonathon Santos / Diamond Asset Holdings, Ltd + LLC
Claim Number: FA1402001543487
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Jonathon Santos / Diamond Asset Holdings, Ltd + LLC (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumbrl.com>, registered with EPAG Domainservices 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2014; the National Arbitration Forum received payment on March 20, 2014. The Complaint was submitted in both German and English.
On March 24, 2014, EPAG Domainservices GmbH confirmed by e-mail to the National Arbitration Forum that the <tumbrl.com> domain name is registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the name. EPAG Domainservices GmbH has verified that Respondent is bound by the EPAG Domainservices 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 March 24, 2014, the Forum served the German language Complaint and all Annexes, including a German language Written Notice of the Complaint, setting a deadline of April 14, 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@tumbrl.com. Also on March 24, 2014, the German 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 April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
a. Policy ¶ 4(a)(i)
i. Complainant, Tumblr, Inc., hosts a TUMBLR platform, which allows individuals to post content (such as text, photos, quotes, links, audio, and videos) to an Internet-accessible blog.
ii. 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).
iii. Complainant’s <tumblr.com> was launched on February 19, 2007.
iv. The <tumbrl.com> domain name is confusingly similar to Complainant’s TUMBLR mark.
b. Policy ¶ 4(a)(ii)
i. Respondent has no right or legitimate interest in the disputed domain name.
ii. Respondent is not commonly known by the disputed domain name.
iii. Respondent’s website directs Internet users to a parked webpage which features click-through links using the TUMBLR mark.
c. Policy ¶ 4(a)(iii)
i. Respondent registered and is using the disputed domain name in bad faith.
ii. The resolving website contains links to competing third-party websites.
iii. Respondent registered the disputed domain name with the intent to cause confusion.
iv. Typosquatting alone is sufficient to prove bad faith.
v. Respondent registered the disputed domain name with Complainant’s mark in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Panel Note: Language of the Proceedings
The Panel notes that the Registration Agreement is written in German, thereby making the language of the proceedings in German. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the German language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant, Tumblr, Inc. of New York, NY, USA, is the owner of domestic and international registrations for the mark TUMBLR. Complainant has continuously used the mark since at least as early as 2007 in connection with its provision of microblogging and social sharing platform services on the internet.
Respondent is Jonathon Santos / Diamond Asset Holdings, Ltd + LLC of Belmopan, Belize. Respondent’s registrar’s address is listed as Bonn, Germany. Respondent registered the <tumbrl.com> domain name on or about April 5, 2007.
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 contends that it hosts a TUMBLR platform, which allows individuals to post content (such as text, photos, quotes, links, audio, and videos) to an Internet-accessible blog. Complainant argues 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). The Panel notes that while Respondent resides in Belize, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as it can demonstrate rights in the mark. 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). The Panel finds that Complainant’s USPTO registration of the TUMBLR mark supports a finding of rights in the mark under Policy ¶ 4(a)(i). 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 the Panel notes that the <tumbrl.com> domain name was first registered on April 5, 2007, before Complainant’s first trademark office registration of the TUMBLR mark, that registration does not predate Complainant’s reflected date of first use. Additionally Complainant asserts that Respondent did not gain ownership of the disputed domain name until sometime after its original registration. It is further recognized that a trademark registration is unnecessary to show rights in a mark, so long as Complainant can demonstrate that it has common law rights in the mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant contends that its <tumblr.com> was launched on February 19, 2007. Complainant asserts that by July 2013, Complainant’s <tumblr.com> had over 29 million unique visitors per month in the United States alone and more than 93 million unique visitors per month worldwide. Complainant argues that its TUMBLR mark has developed worldwide recognition and had been featured in media articles through the United States, the United Kingdom, and the rest of the world. In 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).” The Panel here finds that Complainant’s popularity and success in the TUMBLR mark shows common law rights pursuant to Policy ¶ 4(a)(i) dating back to the first use of the mark on February 19, 2007.
Complainant contends that Respondent’s <tumbrl.com> domain name is confusingly similar to Complainant’s TUMBLR mark. Complainant argues that the disputed domain name transposes the “l” and “r” in Complainant’s TUMBLR mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s transposing of letters in Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”). The Panel also finds that Respondent’s inclusion of a gTLD to Complainant’s mark in a domain name is irrelevant to a Policy ¶ 4(a)(i) determination. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The Panel finds that Respondent’s <tumbrl.com> domain name is confusingly similar to Complainant’s TUMBLR mark according to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the <tumbrl.com> domain name. Complainant alleges that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information identifies “Jonathon Santos / Diamond Asset Holdings, Ltd + LLC” as the registrant of the disputed domain name. Complainant argues that it has not authorized Respondent to use its TUMBLR mark. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant alleges that Respondent’s website directs Internet users to a parked webpage which features click-through links using the TUMBLR mark. The Panel notes that Respondent’s <tumbrl.com> domain name resolves to a website containing links titled “Tumblr Search,” “Tumblr Login,” “Tumblr Pictures,” and others. Complainant asserts that Respondent may receive pay-per-click fees from the linked websites appearing on the website for each misdirected Internet user. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel determined that “The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).” The Panel here finds that Respondent is not using the <tumbrl.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant asserts that Respondent’s website resolving from the <tumbrl.com> domain name contains links to competing third-party websites. The Panel notes that Respondent uses the disputed domain name to lead users to a competing directory containing links such as “Tumblr Blog,” “Tumblr Mobile,” “Tumblr Templates,” and more. As the Respondent is using the disputed domain name to provide competing links, the Panel finds that Respondent’s use of the <tumbrl.com> domain name disrupts Complainant’s business, showing bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant claims that Respondent registered the <tumbrl.com> domain name with the intent to cause confusion. Complainant contends that the disputed domain name resolves to a parked webpage which includes links using the TUMBLR mark in the title, such as “Tumblr Search,” “Tumblr Login,” “Tumblr Pictures,” and others. Complainant asserts that Respondent receives pay-per-click fees from the linked websites appearing on the websites. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel held that “Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel here finds that Respondent has registered and is using the <tumbrl.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that typosquatting alone is sufficient to prove bad faith. The Panel notes that Respondent transposes the letters “l” and “r” in the <tumbrl.com> domain name. In Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003), the panel concluded that “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).” The Panel here finds that Respondent has engaged in typosquatting, which demonstrates bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <tumbrl.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 30, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page