Tumblr, Inc. v. Above.com Domain Privacy
Claim Number: FA1608001689395
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 <httptumblr.com>, <htttumblr.com>, and <frasestumblr.com> (‘the Domain Names’) registered with Above.com Pty Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2016; the Forum received payment on August 16, 2016.
On August 16, 2016, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <httptumblr.com>, <htttumblr.com>, and <frasestumblr.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 August 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2016 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@httptumblr.com, postmaster@htttumblr.com, and postmaster@frasestumblr.com. Also on August 18, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
The Complainant’s contentions can be summarised as follows:
Complainant is the exclusive owner of the service marks and trade marks TUMBLR and the domain name <tumblr.com>, both in continuous use since at least as early as 2007. Complainant’s mark is used in relation to a micro blogging and social sharing platform. Complainant owns trade mark registrations for TUMBLR around the world including in the United States.
Complainant contends that the Respondents listed in the Whois information for the Domain Names are the same individual based on the fact that
a) All three registrants use the same privacy service Above.com
b) All e mail correspondence for all three Domain Names was answered by a Mr Smith using the e mail address parkdns@gmail.com and including an identical demand for US$500 for transfer
c) This has been grounds in other UDRP decisions against the Respondent where the panellists found consolidation against the Respondent proper.
The term TUMBLR is a coined word having no meaning other than as a trade mark denoting the goods and services of the Complainant. Tumblr.com has been one of the fastest growing social networking sites seeing a 218% increase in visitors between July 2010 to July 2011. It was during this period of expansive growth that the Respondent registered httptumblr.com on July 19, 2011.
After the Complainant enjoyed a great deal of press in August 2011 regarding this increase, the Respondent registered htttumblr.com on October 7, 2011. By the end of 2011, the Tumblr.com web site had over 15.8 million US visitors. Shortly thereafter, Respondent registered the <frasestumblr.com> domain name of March 29, 2012. Since 2007, Tumblr has registered many domain names containing the TUMBLR mark, including tumblr.com and has been successful in UDRP actions involving more than forty five domain names.
The Domain Names all contain the Complainant’s entire TUMBLR mark in conjunction with prefixes ‘http’, ‘htt’ or ‘frases’ (phrases in Spanish).
Since registering the Domain Names the Respondent has used them to offer malicious phishing schemes, malware, pornography, and/or sponsored links to third party websites, establishing Respondent’s lack of legitimate rights and interests in the Domain Names and the Respondent’s blatant bad faith in registering and using the Domain Names to trade off Complainant’s acquired goodwill in the TUMBLR marks.
On or around July, 7, 2016 the <htttumbler.com> domain name resolved to a web site displaying images of scantily clad women in provocative poses and sponsored links to third party adult orientated web sites. As of August 15, 2016 these images were removed, and the web site resolved to a parked website offering sponsored links to third party adult sites.
The <frasestumblr.com> and <httptumblr.com> domain names automatically redirected users to <click.adimmix.com> web pages that were blocked by Complainant’s counsel’s security system on the basis that the resolving web sites posed a security threat due to malware.
The Complainant wrote to each of the e mail addresses listed in the Whois information for the Domain Names requesting transfer to the Complainant. On or about May 16, 2016, Complainant received a separate response to each correspondence from the same individual from the same e mail address with the same message offering the transfer the Domain Names for US$500 each.
Complainant has acquired trade mark rights in the TUMBLR mark.
The existence of misleading or generic prefixes is not sufficient to distinguish a domain name from a Complainant’s trade mark. The Domain Names are at the very least confusingly similar to the Complainant’s mark.
Respondent has never used the Domain Names in connection with bona fide offerings of goods and services. The use of domain names for malware, pornography or links to pornography or sponsored links cannot be such a bona fide offering or a fair non-commercial use. Respondent is not commonly known by the Domain Names. By offering to sell the Domain Names for more than out of pocket expenses Respondent demonstrates he has no rights or legitimate interests in the Domain Names.
The timing of the registrations after the Complainant enjoyed unprecedented growth shows bad faith as does the intent to spread malware with the intention to mislead and use in relation to payperclick web sites with links to adult orientated web sites. The Respondent has also offered to sell the Domain Names for a cost in excess of Respondent’s out of pocket expenses. Finally the Respondent has been the subject of a large number of UDRP proceedings all of which were decided against the Respondent.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the exclusive owner of the service marks and trade marks TUMBLR and the domain name tumblr.com used in relation to a micro blogging and social sharing platform. Complainant owns trade mark registrations for TUMBLR around the world including in the United States with first use in commerce shown as 2007.
On or around July, 7, 2016, the htttumbler.com domain name resolved to a web site displaying images of scantily clad women in provocative poses and sponsored links to third party adult orientated web sites. As of August 15, 2016 these images were removed, but the web site still resolved to a parked website offering sponsored links to third party adult sites.
The <frasestumblr.com> and <httptumblr.com> domain names automatically redirected users to <click.adimmix.com> web pages that were blocked by Complainant’s counsel’s security system on the basis that the resolving web sites posed a security threat due to malware.
The Respondent has offered to sell the Domain Names to the Complainant for US$500 each.
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(f), 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 (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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The evidence, specifically the near-identical correspondence, from the registrant of each of the Domain Names from the same individual at the same email address demonstrates that the Domain Names are owned by the same domain name holder. See Adobe Sys. Inc v. Domain OZ, D2000-0057 (WIPO Mar. 22, 2000) (decision rendered against multiple respondents where respondents shared the same post office box number and e mail address in their registration information). Accordingly the Panelist holds that the Complaint may be brought by the Complainant against all three Domain Names.
The Domain Names consist of the Complainant's TUMBLR mark (which is registered in the USA for Internet related services with first use in commerce shown as 2007) and the generic terms ‘http’ and ‘frases’ (‘phrases’ in Spanish) or the nonsensical term ‘htt’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a complainant's mark or indiscriminate letters. See Target Brands, Inc v. yin jun/yin jun, FA 1624128 (Forum July 16, 2015) (holding that the addition of the generic ‘http’ prefix does not distinguish a domain name from the complainant’s mark). See also AM. Online, Inc v Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that aolrj.com was confusingly similar to the Complainant’s AOL mark because the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark). See Wiluna Holdings LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy 4 (a)(i)). The Panel agrees that the addition of the generic or nonsensical terms to the Complainant's mark does not distinguish the Domain Names from the Complainant's trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish the Domain Names from the TUMBLR mark which is the distinctive component of the Domain Name. See Red Hat Inc v. Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose to a mark in which the Complainant has rights.
Complainant has not licensed the Respondent to use its TUMBLR mark and the Respondent does not appear to be commonly known by this mark or name.
Previous panels have held that use of a domain name to distribute malicious computer software does not establish any rights or legitimate interests in the domain name. See Ceridian Corp v. Versata Software Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a domain name to direct Internet users to a website which attempts to download computer viruses failed to create any semblance of bona fide offering of goods and services under Policy 4 (c)(i) or a legitimate noncommercial or fair use pursuant to Policy 4 (c)(iii)).
Panels have also held that offering links to adult orientated material does not confer rights or legitimate interests in a domain name. See Target Brands, Inc v. Bealo Group SA, FA 128684 (Forum Dec. 17, 2002) (finding that use of the targetstore.net domain name to redirect Internet users to an adult orientated web site did not equate to a bona fide offering of goods or a legitimate noncommercial or fair use).
Accordingly the Panelist finds that the Respondent does not have any rights or legitimate interests in the Domain Names.
Complainant has provided e mails where the Respondent purports to offer to sell each of the Domain Names for US$500, a sum in excess of out of pocket costs. It seems that the email address of the Respondent is the same as an entity that has had a large number of successful UDRP proceedings against it. Accordingly, it seems that the Respondent is involved in a pattern of bad faith registration and use of domain names sufficient to establish bad faith registration and use under Policy ¶¶ 4(b)(i) and 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1209001464477 (Forum Nov. 30, 2012) (finding that where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer domain names to various complainants established a pattern of bad faith registration and use of Domain names and stood as evidence of bad faith in the registration and use of domain names under Policy 4 (b)(ii)). As such the Panelist is able to determine from the evidence of an offer to sell the Domain Names by the Respondent that the Domain Names have been registered and used in bad faith and there is no need to consider possible additional grounds for bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <httptumblr.com>, <htttumblr.com>, <frasestumblr.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: September 26, 2016
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