Tumblr, Inc. v. PAUL LAFONTAINE
Claim Number: FA1409001579350
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is PAUL LAFONTAINE (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tunnblr.com>, registered with Crazy Domains FZ-LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2014; the National Arbitration Forum received payment on September 11, 2014.
On September 15, 2014, Crazy Domains FZ-LLC confirmed by e-mail to the National Arbitration Forum that the <tunnblr.com> domain name is registered with Crazy Domains FZ-LLC and that Respondent is the current registrant of the name. Crazy Domains FZ-LLC has verified that Respondent is bound by the Crazy Domains FZ-LLC 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 September 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@tunnblr.com. Also on September 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 October 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
1. Complainant is the exclusive owner of the service marks and trademarks “TUMBLR” and “tumblr” (hereinafter “Complainant’s Mark”, the “TUMBLR Mark” or the “Mark”), the tradename TUMBLR, as well as the domain name TUMBLR.COM. In continuous use since 2007, Complainant’s Mark is used in connection with a microblogging and social sharing platform. Complainant’s Mark has acquired widespread recognition, as evidenced by the fact that the TUMBLR.COM domain ranks 35th worldwide and 29th in the US in terms of reach according to comScore.com. (comScore Media Metrix Ranks Top 50 U.S. Desktop Web Properties for October 2013). To date, the Tumblr platform hosts over 185 million blogs containing more than 83 billion posts, with over 150 million unique visitors per month worldwide and over 40 million unique visitors per month in the United States.
2. As a result of Tumblr’s extensive investment and promotion, Tumblr’s services and the TUMBLR Mark enjoy “a substantial degree of public recognition.” Tumblr, Inc. v. Thomas Kimber, D2012-0609 (WIPO May 9, 2012); see also Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (“It is also recognized that the Complainant has continuously and extensively used, advertised, marketed and promoted the Complainant's mark both within the United States and in foreign countries.”); Tumblr, Inc. v. Jingsheng Feng, D2013-0454 (WIPO May 10, 2013) (“It appears to the Panel that [TUMBLR] is a coined term which is not part of the English language and is quite distinctive for the Internet based service provided by the Complainant. Based on the very substantial numbers of users and visitors to the Complainant's website at ‘www.tumblr.com’ it is also reasonable to assume that it enjoys a wide degree of repute.”)
3. In addition to Complainant’s common law rights, Complainant’s name and Mark are protected in countries around the world, including the United States. Complainant’s numerous trademark registrations for the TUMBLR Mark in the United States, include, but are not limited to:
a. United States Trademark Registration No. 3,714,214, first used February 19, 2007, filed October 27, 2008, issued November 24, 2009, covering electronic publishing services and Internet based social networking services in International Classes 41 and 45.
b. United States Trademark Registration No. 4,319,728, first used April 27, 2007, filed February 13, 2012, issued April 16, 2013, covering computer software, advertising and marketing services, computer services and on-line non-downloadable software in International Classes 9, 35, 38 and 42.
c. United States Trademark Registration No. 4,341,002, first used September 15, 2009, filed March 31, 2012, issued May 28, 2013, covering computer software, advertising and marketing services, computer services, electronic publishing services, on-line non-downloadable software, and internet-based social networking services in International Classes 9, 35, 38, 41, 42 and 45.
d. United States Trademark Registration No. 4,341,003, first used May 27, 2008, filed March 31, 2012, issued May 28, 2013, covering computer software, advertising and marketing services, computer services, electronic publishing services, on-line non-downloadable software and internet-based social networking services in International Classes 9, 35, 38, 41, 42 and 45.
4. Complainant also owns multiple registrations for the TUMBLR Mark outside the United States, including, but not limited to, Community Trade Mark Nos. 008227209 (Filed April 20, 2009, International Classes 41, 45), 010668631 (Filed February 23, 2012, International Classes 9, 35, 38, 42) and 011111069 (Filed August 10, 2012, International Classes 9, 35, 38, 41, 42, 45); Australia Trade Mark Registration No. 1295070 (Filed April 17, 2009, International Classes 41, 45); Japan Trademark Registration No. 5300691 (Filed April 17, 2009, International Classes 38, 41 and 45); and New Zealand Trademark Registration No. 805103 (Deemed Registration Date of October 22, 2009, International Classes 41 and 45).
Grounds for Complaint
(UDRP Rule 3(b)(ix))
A. Complainant’s Globally-Recognized TUMBLR Mark and Service
5. The term “TUMBLR” is a coined word, having no meaning other than as a trademark denoting the goods and services of Tumblr. Complainant’s TUMBLR platform allows individuals to post content (such as text, photos, quotes, links, audio, and videos) to an Internet-accessible blog. Posts can be made from one’s browser, phone, desktop, or email.
6. Tumblr.com has been one of the fastest growing social networking websites. From July 2010 to July 2011, Tumblr.com saw a 218% increase in visitors from 4.2 million visitors to 13.4 million visitors. (comScore.com article titled “Tumblr Defies its Name as User Growth Accelerates” dated August 30, 2011). By the end of 2011, the Tumblr.com website had 15.9 million U.S. visitors. (comScore.com article titled “State of the U.S. Social Networking Market: Facebook Maintains Leadership Position, but Upstarts Gaining Traction” dated December 23, 2011). By October 2013, Tumblr.com had over 36 million unique visitors in the United States alone. Respondent registered the Infringing Domain Name on February 21, 2014. By that time, Tumblr had developed worldwide recognition and, indeed, had been featured in media articles throughout the United States, the United Kingdom, and the rest of the world. (comScore.com article titled “It’s a Social World: Social Networking Leads as Top Online Activity Globally, Accounting for 1 in Every 5 Online Minutes” dated December 21, 2011).
7. Since 2007, Tumblr has registered many domain names containing the TUMBLR Mark including, but not limited to, <tumblr.com>, <tumblr.ae>, <tumblr.co>, <tumblr.de>, <tumblr.fr>, <tumblr.gr>, and <tumblr.org>.
8. To date, Tumblr has prevailed in UDRP actions involving more than forty domain names that were identical or confusingly similar to the TUMBLR Mark, including but not limited to <tumblkr.com>, <tymblr.com>, <tumbklr.com>, <trumblr.com>, <thumblr.com>, and <ttumblr.com>.
B. Respondent’s Infringing Acts
9. Respondent’s Infringing Domain Name replaces the “m” in “tumblr” with the letter “n” followed by an additional letter “n”, and adds the generic top-level domain (“gTLD”) “.com”. By doing so, Respondent is attempting to capitalize on the common typographical errors of the word “tumblr” since the letter “n” is located between the letters “m” and “b” on a traditional QWERTY keyboard.
10. Respondent registered the Infringing Domain Name on February 21, 2014, after the Complainant’s TUMBLR Mark had gained worldwide recognition – and likely fame – and long after Complainant had applied for and/or obtained registrations for its TUMBLR Mark in the United States and elsewhere.
11. The Infringing Domain Name was previously used for a website the Complainant has reason to believe was used in a phishing scheme to solicit personal information from unsuspecting users of the Complainant’s Tumblr.com services. Specifically, on or around February 26, 2014, Complainant’s support service received notice that a user received an email which included a link to the website <hxxp://ohitsjustkim.tumblr.com>, informing the user that photos of the user were posted on the website connected to the link. Analytic statistics obtained by Complainant’s support staff revealed that the link was altered to include malicious JavaScript code. Effectively, the link was intended to redirect users to the domain <secure.tunnblr.com>, which displayed a login page mimicking the main Tumblr.com login page. When a user enters his/her email and password on the fake login page, he/she would first be directed to a fake dashboard, then automatically redirected to a fake log out page, and finally automatically redirected to the real Tumblr.com website.
12. On or around March 13, 2014, Complainant became aware of the web page located at <tunnblr.com/plugin>, which directed unsuspecting users to a malware webpage that displayed the statements, “Try our new Firefox Plugin!”, and “Click here to install for your browser!”
13. As of the date of this Complaint, the Infringing Domain Name does not resolve to an active website. Rather, the Infringing Domain Name resolves to a parked error page which states, “Nothing to see here! Please log in first”.
14. Complainant first became aware of registration and use of the Infringing Domain Name in or about February 2014. On or about February 28, 2014, Complainant’s outside counsel contacted the registrant of the Infringing Domain Name by email, notifying Respondent of Complainant’s rights and requesting that Respondent transfer the Infringing Domain Name to Complainant. Complainant’s counsel sent a follow up email on March 13, 2014. On or around May 5, 2014, the Respondent replied to Complainant’s counsel stating, inter alia, “My name is Paul and I am the current owner of this domain and I am not willing to transfer something so valuable for absolutely nothing. I believe it is worth $890.00+ due to the similarity it has with the name Tumblr.”
C. Legal Analysis
The Infringing Domain Name Is Identical or Confusingly Similar to Complainant’s Mark
(UDRP Rule 3(b)(ix)(1); Policy Para. 4(a)(i))
15. The Infringing Domain Is Confusingly Similar Typosquatting. Respondent’s Infringing Domain Name replaces the letter “m” in “tumblr” with the letter “n” and adds an additional letter “n” before the letter “b”. The letter “n” sits between the letters “m” and “b” on a QWERTY keyboard. The misspelling of the Complainant’s Mark by replacing and adding letters that are proximately located on a QWERTY keyboard is a classic example of typosquatting. See e.g., Tumblr, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1402001543393 (Nat. Arb. Forum March 12, 2014) (finding <trumblr.com> confusingly similar to TUMBLR); Tumblr, Inc. v. Jingsheng Feng, D2013-0454 (WIPO May 10, 2013) (finding that “[i]n light of the distinctiveness of the TUMBLR mark and of its renown this apparent misspelling in each of the disputed domain names of a single letter that could easily be mis-typed appears to the Panel to be more than just a co-incidence and amounts to a classic example of typo-squatting”). UDRP panels have consistently ruled that domain names which misspell a well-known mark are deemed confusingly similar to that mark. See e.g. Yahoo! Inc. v. PPA Media Services / Ryan G Foo, FA1310001526653 (Nat. Arb. Forum Dec. 4, 2013) (“Typosquatting behavior causes a likelihood of confusion between a complainant’s registered mark and a respondent’s disputed domain name based on a slight variation or misspelling of the complainant’s mark.”); Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling and adding letters to a complainant’s mark renders the domain name confusingly similar to the complainant’s marks). Finally, Respondent’s email of June 24, 2014, admits that the Infringing Domain Name is valuable “due to the similarity it has with the name Tumblr”. See Annex O.
16. The Addition of the gTLD <.com> Is Irrelevant to the Confusingly Similar Analysis. The “.com” portion of Respondent’s Infringing Domain Name is irrelevant in a confusingly similar analysis. 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.”). Since the “.com” portion of Respondent’s Infringing Domain Name does not differentiate the Infringing Domain Name from the Complainant’s Mark, the Infringing Domain Name is considered confusingly similar to the Complainant’s Mark.
17. Based on Complainant’s clear rights to the TUMBLR Mark and the public’s strong association of Complainant’s Mark with Complainant, Respondent’s registration and use of the Infringing Domain Name is likely to cause consumer confusion and initial interest confusion. As such, Respondent’s Infringing Domain Name is confusingly similar to Complainant’s Mark.
Respondent Has No Right or Legitimate Interest in the Infringing Domain Name
(UDRP Rule 3(b)(ix)(2); Policy Para. 4(a)(ii))
18. The primary factors the Panel considers when evaluating whether the Respondent has rights or legitimate interests in the domain name are: 1) whether the Respondent previously used the domain name in connection with bona fide offering of goods or services; 2) whether the Respondent has been commonly known by the domain name; and 3) whether the Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy Para. 4(c). It “is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.” Tumblr, Inc. v. Duanxiangwang, D2013-0441 (WIPO May 18, 2013).
19. The Infringing Domain Name Previously Redirected Users to a Malware Website. As part of a phishing scheme, Respondent previously used the Infringing Domain Name to redirect unsuspecting users to a malware website, which mimicked the Tumblr.com website in an attempt to fraudulently obtain information from users of the Tumblr.com website. Additionally, the Respondent operated a malware website at the domain extension <tunnblr.com/plugin>. The UDRP Panels have consistently held that malware websites are not recognized as a bona fide offering of goods or services under paragraph 4(c) of the Policy. See e.g., Yahoo! Inc. v. Domain Admin / PrivacyProtect.org / Whois Agent / Whois Privacy Protection Service, Inc., FA1312001532946 (Nat. Arb. Forum January 15, 2014) (finding that“[u]sing a domain name to resolve to a website attempting to solicit personal information indicates a phishing scheme” which is not bona fide use or legitimate interest under Policy ¶¶4(c)(i) or (iii)); Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (finding “Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the site accessible redirects to the dangerous malware site <gaja79.com>”); see also WordPress Foundation v. Ensei Tankado, FA1312001536197 (Nat. Arb. Forum Jan. 21, 2014) (finding that use of domain name to deliver malware to an Internet users computer “is counter indicative to Respondent having any rights or interests in respect thereof.”); Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that directing Internet users to a website which attempts to download computer viruses “failed to demonstrate any semblance of a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
20. Respondent’s Infringing Domain Name Resolves to a DNS Error Page. As of the date of this Complaint, the Infringing Domain Name resolves to a DNS error page. Respondent’s failure to make an active use of the disputed domain name is not a Policy ¶4(c)(ii) bona fide offering of goods and services or a Policy ¶4(c)(iv) legitimate noncommercial or fair use. See e.g. Tumblr, Inc. v. Jan Kancler, FA1402001543255 (Nat. Arb. Forum March 24, 2014) (finding that the since the <tumbld.com> resolved to a DNS error page, which stated “Oops! Google Chrome could not find tumbld.com”, the domain name did not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use since the domain.”); Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Nat. Arb. Forum May 14, 2013) (finding that since “Respondent’s disputed domain name resolves to a webpage that says “Oops! Google Chrome could not find tumblr.us” the Respondent “failed to make an active use of the disputed domain name.”); Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to [UDRP] ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to [UDRP] ¶4(c)(iii).”).
21. Respondent’s use of the Infringing Domain Name which is confusingly similar to Complainant’s Mark proves Respondent’s intent to divert consumers. Moreover, it is clear that Respondent registered the Infringing Domain Name with Complainant’s Mark in mind and with the intention of diverting to its past, current and/or future websites Internet traffic intended for the Complainant. This use is neither legitimate nor fair.
22. Respondent is not Commonly Known by the Infringing Domain Name. Nothing in Respondent’s Whois information or the record demonstrates that Respondent is commonly known by the Infringing Domain Name, and Complainant has not authorized Respondent to use its TUMBLR Mark. See, e.g., Tumblr, Inc. v. Jan Kancler, FA1402001543255 (Nat. Arb. Forum March 24, 2014) (finding that “because Respondent was not authorized by Complainant to use the TUMBLR mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <tumbld.com> domain name under Policy ¶4(c)(ii).”); Tumblr, Inc. v. Privacy Protect.org/ JiangJhunyuan, D2013-0243 (WIPO March 15, 2013) (transferring domain name <tubmlr.com> where “the Respondent cannot demonstrate nor is there evidence to show that it is commonly known by the name ‘tubmlr’.”); Tumblr, Inc. v. Richard Fortier, D2013-0424 (WIPO May 13, 2013) (ordering transfer of <yumblr.com> domain name and noting that “Respondent is not authorized to use the TUMBLR mark . . . he is not known by the ‘yumblr’ name[.]”).
Respondent Registered and Used the Infringing Domain Name in Bad Faith
(UDRP Rule 3(b)(ix)(3); Policy Para. 4(a)(i))
23. Typosquatting Alone Is Sufficient to Prove Bad Faith. Respondent’s registration and use of the Infringing Domain Name is classic example of typosquatting. It is well established that typosquatting is evidence of bad faith. See e.g., Tumblr, Inc. v. ICS INC., FA1402001543482 (Nat. Arb. Forum March 19, 2014) (“The Panel finds Respondent’s <tumbklr.com> domain name is a typosquatted version of Complainant’s TUMBLR mark and thus constitutes bad faith use and registration under Policy ¶4(a)(iii).”); Tumblr, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1402001543393 (Nat. Arb. Forum March 12, 2014) (finding bad faith where “ Respondent’s registration and use of the domain name are obvious attempts to take advantage of typographical errors by Internet users—a practice commonly referred to as ‘typosquatting’…”); Tumblr, Inc. v. Jingsheng Feng, D2013-0454 (WIPO May 10, 2013) (finding bad faith in respondent’s registration and use of “disputed domain names which differed from the Complainant’s [TUMBLR] mark by only one letter and in circumstances that each of those letters is proximate to the original letter that it replaces”); Wachovia Corporation v. Peter Carrington, D2002-0775 (WIPO Oct. 2, 2002) (“misspellings alone are ‘sufficient to prove bad faith … because Respondent has used these names intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark.”); National Association of Professional Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting…is the intentional misspelling of words with intent to intercept and siphon traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”); Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”).
24. Redirecting Users to a Malware Website Proves Bad Faith. Respondent’s registration and use of the Infringing Domain Name to redirect unsuspecting Internet users to malware website is evidence of bad faith under the Policy. See e.g., WordPress Foundation v. Ensei Tankado, FA1312001536197 (Nat. Arb. Forum Jan. 21, 2014) (finding the redirection of Internet users to a website with possible malware, “in and of itself, shows Respondent’s bad faith under Policy ¶4(a)(iii).”); Victoria’s Secret Stores Brand Mgmt., Inc. v. PrivacyProtect.org c/o Domain Admin, FA 1357512 (Nat. Arb. Forum December 17, 2010) (finding that a domain name which resolves to a website to attract Internet users and download malicious software onto their computers to steal personal information indicates bad faith registration and use according to Policy ¶4(a)(iii).).
25. Respondent Registered the Infringing Domain Name with Complainant’s Mark in Mind and with Intent to Cause Confusion. Respondent admittedly registered the Infringing Domain Name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR Mark as evidenced by Respondent’s statement: “I believe [the Infringing Domain Name] is worth $890.00+ due to the similarity it has with the name Tumblr.” Moreover, Complainant first made use of the TUMBLR Mark in 2007, whereas Respondent did not register the Infringing Domain Name until February 2014, well after Complainant’s Mark had become internationally recognized – and likely famous – and after Complainant’s Mark registered in the United States, Europe and elsewhere throughout the world. Since Complainant’s 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, Respondent’s registration of the Infringing Domain Name is sufficient to satisfy the bad faith requirement. See Tumblr, Inc. v. Privacy Protect.org/Jiangchunyuan, D2013-0243 (WIPO March 15, 2013) (bad faith where panel “finds it difficult to believe that Respondent was unaware of the TUMBLR mark and of the Complainant prior to registering the disputed domain name” and “draws the inference that the disputed domain name must have had its value to the Respondent because of the confusing similarity to the Complainant’s TUMBLR mark and <tumblr.com> domain name.”); see also Yahoo! Inc. v. Denis Jalbert, FA 166020 (Nat. Arb. Forum Aug. 26, 2003) (holding respondent registered <yahhoowebcam.com> and <yahhoowebcams.com> in bad faith with knowledge of Complainant’s rights in its YAHOO! mark by virtue of Complainant’s registration of its mark in Canada and in the United States); Charleston Alexander Jewelers, Inc. v. Virtual Sky, FA0504000452231 (Nat. Arb. Forum, May 19, 2005) (“Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s superior rights is tantamount to bad faith registration and use pursuant to Policy Paragraph 4(a)(iii).”).
26. Respondent Offered to Sell the Infringing Domain Name. Respondent’s offer to sell the domain name for upwards of $890.00 “due to the similarity it has with the name Tumblr,” also demonstrates Respondent’s bad faith use and registration of the Infringing Domain Name. Panels have consistently held that offering a disputed domain name for sale for an amount in excess of the out-of-pocket expenses incurred by registrant amounts to evidence of bad faith. See e.g., Tumblr, Inc. v. Dragan Platic / Poste restante, FA1402001543767 (Nat. Arb. Forum March 26, 2014) (finding respondent’s offer to sell the disputed domain names to the public constitutes Policy ¶4(b)(i) bad faith); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”); see also Yahoo! Inc. v. Wooyoun Cho, FA 146934 (Nat. Arb. Forum April 16, 2003) (“Respondent acted in bad faith when he offered to sell the domain name to Yahoo for more than his documented out-of-pocket expenses.”).
27. The conceptual and commercial strength of the TUMBLR Mark further supports the argument that Respondent registered the Infringing Domain Name with the intent to cause confusion and to capitalize on Complainant’s rights. See, e.g., Tumblr, Inc. v. Balticsea LLC, FA1402001542323 (Nat. Arb. Forum Match 13, 2014) (finding that “due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights.”); Tumblr, Inc. v. Jingsheng Feng, D2013-0454 (WIPO May 10, 2013) (“It appears to the Panel that [TUMBLR] is a coined term which is not part of the English language and is quite distinctive for the Internet based service provided by the Complainant. Based on the very substantial numbers of users and visitors to the Complainant's website at ‘www.tumblr.com’ it is also reasonable to assume that it enjoys a wide degree of repute.”); Tumblr, Inc. v. Thomas Kimber, D2012-0609 (WIPO May 9, 2012) (observing that the TUMBLR services enjoyed a substantial degree of public recognition” prior to Respondent’s registration of the Infringing Domain Name); Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (“It is also recognized that the Complainant has continuously and extensively used, advertised, marketed and promoted the Complainant's mark both within the United States and in foreign countries.”).
28. In conclusion, based on the circumstances enumerated above, it is clear that Respondent registered and used the Infringing Domain Name in bad faith and in violation of the Policy. Respondent registered a domain that is identical and confusingly similar to Complainant’s TUMBLR Mark and Respondent has no legitimate interest in the Infringing Domain Name, demonstrating that Respondent is a cybersquatter preventing Complainant from commercially exploiting its mark on the Internet.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(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 uses the TUMBLR mark in connection with its social media website. Complainant owns the TUMBLR mark through its trademark registrations with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,214, registered November 24, 2009). Such registrations are normally sufficient to establish rights in a mark pursuant to Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶4(a)(i)). Accordingly, Complainant’s USPTO registrations satisfy the requirements of Policy ¶4(a)(i).
Complainant claims the <tunnblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark because Respondent has simply replaced the letter “m” with two “n” letters in the mark. There is no doubt Respondent actually believes it is confusingly similar because of Respondent’s admission to that effect in his email. The disputed domain name differs from the mark only because of the addition of the generic top-level domain (“gTLD”) “.com.” It is generally recognized the addition of a gTLD or ccTLD does not adequately distinguish a disputed domain name from a mark. The simple misspelling of a mark does not ordinarily prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis. See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). Such is the present case.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the <tunnblr.com> domain name. The WHOIS information identifies “Paul LaFontaine” as the registrant of the disputed domain name (which bears no obvious relationship to the disputed domain name). Respondent is neither licensed nor authorized to use the TUMBLR mark. Respondent has failed to respond to any of Complainant’s allegations. In light of these facts, it seems evident Respondent is not commonly known by the <tunnblr.com> 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 claims Respondent has not provided any bona fide offering of goods or services, or made a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name previously redirected Internet users to a malware page as part of a phishing scheme created by Respondent. There is no bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under such conditions. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Respondent’s actions did not provide any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Respondent currently has no active use of the disputed domain name because the disputed domain name apparently resolves to a DNS error page. Not using a disputed domain does not ordinarily constitute a bona fide offering of goods or services or make a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). Since the disputed domain name is inactive, Respondent’s current non-use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent attempted to sell the <tunnblr.com> domain name for $890.00. Generally, panels have found that an attempt to sell a disputed domain name is evidence of bad faith pursuant to Policy ¶4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”). Certainly $890.00 would seem to exceed Respondent’s out of pocket costs. Respondent’s offer to sell the disputed domain name is evidence of bad faith registration and use under Policy ¶4(b)(i).
Respondent previously used the disputed domain name to redirect confused Internet users to a malware webpage as part of its phishing scheme. Such activity constitutes bad faith pursuant to Policy ¶4(a)(iii). See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). Respondent’s behavior constitutes bad faith registration and use pursuant to Policy ¶4(a)(iii).
Respondent had actual knowledge of Complainant’s rights in the TUMBLR mark, partially due to the fame of Complainant’s mark and partially due to the very offer Respondent made to sell the disputed domain name (“I believe it is worth $890.00+ due to the similarity it has with the name Tumblr.”). By inference, Respondent knew of Complainant’s mark. This constitutes bad faith registration and use pursuant to Policy ¶4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); 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)."
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tunnblr.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, October 14, 2014
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