Tumblr, Inc. v. Ailing Liu
Claim Number: FA1402001543807
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ailing Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblkr.com>, registered with eNom, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2014; the National Arbitration Forum received payment on February 14, 2014.
On February 18, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <tumblkr.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 19, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@tumblkr.com. Also on February 19, 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 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. Complainant’s TUMBLR platform allows individuals to post content to an Internet blog. Complainant’s business is one of the fastest growing social networking websites.
b. Complainant has used its TUMBLR mark since 2007 in connection with a microblogging and social sharing platform. Complainant provides the Panel with evidence of its registrations of the TUMBLR mark with the United States Patent and Trademark Office (“USPTO”) as well as with trademark authorities all over the world. USPTO (e.g., Reg. No. 3,714,214, registered November 24, 2009). Japanese Patent Office (“JPO”) (Reg. No. 5,300,691 registered February 12, 2010). European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 8227209 registered February 10, 2010). Intellectual Property Office of New Zealand (“IPONZ”) (Reg. No. 805,103 registered October 22, 2009).
c. Respondent’s <tumblkr.com> domain name is confusingly similar to Complainant’s TUMBLR mark. Respondent adds the letter “k” between the letters “l” and “r” in the TUMBLR mark. Respondent also adds the generic top-level domain (“gTLD”) “.com.”
d. Nothing in Respondent’s WHOIS record indicates that it is commonly known by the disputed domain name.
e. Complainant has not authorized or licensed Respondent to use the TUMBLR mark in any way.
f. Respondent acquired the disputed domain name on January 19, 2014.
g. Respondent uses the disputed domain name to redirect Internet traffic away from Complainant’s website and to various unrelated commercial third-party websites. Complainant concludes from this that Respondent uses the disputed domain name to earn revenue for itself.
h. Respondent uses the disputed domain name to cause confusion and to capitalize on Complainant’s rights.
i. Respondent’s domain name resolves to different websites and redirects Internet users looking for Complainant’s website to other commercial sites, through which affiliate or referral income is earned.
j. Respondent had knowledge of Complainant and its TUMBLR mark when it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the TUMBLR mark. Respondent’s domain name is confusingly similar to Complainant’s TUMBLR mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <tumblkr.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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’s TUMBLR platform allows individuals to post content to an Internet blog. The record reflects that Complainant has used its TUMBLR mark since 2007 in connection with a microblogging and social sharing platform. Complainant has provided the Panel with evidence of its registrations of the TUMBLR mark with the USPTO as well as with trademark authorities all over the world. For example, Complainant provides evidence of its registrations with the USPTO (e.g., Reg. No. 3,714,214, registered November 24, 2009). Complainant also has provided evidence of its registrations with international trademark authorities including OHIM (e.g., Reg. No. 8,227,209 registered February 10, 2010); JPO (Reg. No. 5,300,691 registered February 12, 2010); and IPONZ (Reg. No. 805,103 registered October 22, 2009). Accordingly, Complainant has rights in the TUMBLR mark under Policy ¶ 4(a)(i). See OMX, Inc. c/o OfficeMax Inc. v. Domain Admin. Ltd. c/o David Halstead, FA 720880 (Nat. Arb. Forum July 17, 2006)(finding that complainant had established rights in the OFFICEMAX mark through registration of the mark with the USPTO and the IPONZ); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel concludes that Complaiant has rights in the TUMBLR mark under Policy ¶ 4(a)(i).
Additionally, Complainant argues that Respondent’s <tumblkr.com> domain name is confusingly similar to Complainant’s TUMBLR mark. Respondent adds the letter “k” between the letters “l” and “r” in the TUMBLR mark as well as the gTLD “.com.” Adding letters and a gTLD to a registered mark does not distinguish the resulting domain name from that mark to the extent needed to avoid a finding of confusing similarity. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). The Panel concludes that Respondent’s <tumblkr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <tumblkr.com> domain name. Complainant specifically asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that nothing in Respondent’s WHOIS record indicates that it is commonly known by the disputed domain name. The WHOIS information for the <tumblkr.com> domain name lists “AILING LIU” as registrant. Complainant further asserts that it has not authorized or licensed Respondent to use the TUMBLR mark in any way. The Panel concludes that Respondent is not commonly known by the <tumblkr.com> domain name under Policy ¶ 4(c)(ii).
See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant further asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant contends that Respondent uses the disputed domain name to redirect Internet traffic away from Complainant’s website and to various unrelated commercial third-party websites. Complainant argues from this that Respondent uses the disputed domain name to earn revenue for itself. One of the websites Respondent’s disputed domain name redirects to is headed, “Turbotax.” This website features links such as, “Start my taxes,” “How Turbo Tax works,” “Tax Calculators,” “Health care and your taxes,” “Track my refund,” and “Check my efile status.” Using a confusingly similar domain name to resolve to a website featuring links and advertisements that are unrelated to a complainant’s business does not convey rights or legitimate interests to a respondent under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The second website to which Respondent’s <tumblkr.com> domain name resolves features the heading, “Girl Talk Videos.” This website features the advertisement for “Girl Talk” stating, “Real women talking about real life. That’s what HealthiNation’s series Girl Talk is all about, with a twist.” The website further explains, “HealthiNation’s award-winning, expert-driven health videos help you take control of your health.” As discussed above, Respondent’s use of the disputed domain name to resolve to a website featuring advertisements for third-parties not related to Complainant does not confer rights or legitimate interests in the disputed domain name. See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). The Panel concludes that Respondent has no rights or legitimate interests in the <tumblkr.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and is using the <tumblkr.com> domain name in bad faith. Complainant states that Respondent uses the disputed domain name to cause confusion and to capitalize on Complainant’s rights. As mentioned previously, Respondent’s domain name resolves to different websites and redirects Internet users looking for Complainant’s website to other commercial sites, through which affiliate or referral income is earned. Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain). The Panel concludes that Respondent registered and is using the <tumblkr.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further contends that Respondent had knowledge of Complainant and its TUMBLR mark when Respondent registered the disputed domain name. Complainant supports this statement by arguing that the TUMBLR mark is internationally recognized, famous, and registered throughout the world. The Panel concludes that given the similarity between Complainant’s mark, and Respondent’s domain name, Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name which is 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumblkr.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 24, 2014
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