Tumblr, Inc. v. Balticsea LLC
Claim Number: FA1402001542323
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ftumblr.com>, registered with TUCOWS, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2014; the National Arbitration Forum received payment on February 5, 2014.
On February 5, 2014, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <ftumblr.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 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@ftumblr.com. Also on February 10, 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 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
1. Complainant has rights in the TUMBLR mark under Policy ¶ 4(a)(i).
a. Complainant’s TUMBLR platform allows Internet users to post content to an Internet-accessible blog. Complainant’s business ranks 35th worldwide and 29th in the US in terms of reach according to comSCORE.com.
b. Complainant is the owner of the TUMBLR mark through its registrations with the United States Patent and Trademark Office (“USPTO”) (E.g., Reg. No. 3,714,214 registered November 24, 2009).
c. Complainant also owns registrations with the Office for Harmonization in the Internal Market (“OHIM”) (E.g., Reg. No. 8,227,209 registered February 10, 2010).
d. Respondent’s <ftumblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark.
i. Respondent’s disputed domain name incorporates the entirety of Complainant’s TUMBLR mark.
ii. Respondent adds the letter “f” and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <ftumblr.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Respondent registered the disputed domain name through a privacy service, which allowed Respondent to conceal its true identity.
ii. Nothing in Respondent’s WHOIS information suggests that Respondent is commonly known by the disputed domain name.
iii. Complainant has not authorized Respondent to use its TUMBLR mark in any way.
b. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is directing Internet traffic to a parked webpage containing links for competing products and services.
3. Respondent registered and is using the <ftumblr.com> domain name in bad faith.
a. Respondent uses the disputed domain name to divert Internet users from Complainant’s website by exploiting the goodwill and reputation associated with Complainant and the TUMBLR mark.
b. Respondent registered the disputed domain name with intent to cause confusion to Internet users and to capitalize on Complainant’s rights in the TUMBLR mark.
c. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TUMBLR mark because Complainant’s mark is internationally recognized. Also, Respondent did not register the disputed domain name until May of 2010.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 states that its TUMBLR platform allows Internet users to post content to an Internet-accessible blog. Complainant contends that its business ranks 35th worldwide and 29th in the US in terms of reach according to comSCORE.com.
Complainant thus asserts its rights in the TUMBLR mark under Policy ¶ 4(a)(i). Complainant argues that it is the owner of the TUMBLR mark through its registrations with the USPTO (E.g., Reg. No. 3,714,214 registered November 24, 2009). Complainant also provides evidence of its registrations with OHIM (E.g., Reg. No. 8,227,209 registered February 10, 2010). Prior panels have conclusively found that providing evidence of a registration for a mark with a recognized trademark authority is sufficient to establish rights in that mark. 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)); see also Association de moyens Malakoff Médéric v. N/A Ko Ko Te, D2010-0029 (WIPO March 1, 2010) (holding that Complainant established rights in the MALAKOFF-MEDERIC mark under Policy ¶ 4(a)(i) through its multiple registrations of the mark with the European Union Office for Harmonization of the Internal Market (OHIM)). The Panel also notes that it is irrelevant whether complainant registered the mark in the country or location of respondent. See 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 Complainant has rights in the TUMBLR mark under Policy ¶ 4(a)(i).
Complainant asserts that Repsondent’s <ftumblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i). Complainant claims that Respondent’s <ftumblr.com> domain name incorporates the entirety of Complainant’s TUMBLR mark. Additionally, Respondent adds the letter “f” and the gTLD “.com.” Prior panels have concluded that adding a letter and a gTLD to a complainant’s mark does not differentiate a disputed domain name to avoid a finding of confusingly similar under the Policy. See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also See Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (“The disputed domain name <tumblrcom.com> is confusingly similar to the Complainant's mark TUMBLR in that it incorporates the Complainant's mark in its entirety.”). The Panel concludes that Respondent’s <ftumblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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); 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 argues that Respondent has no rights or legitimate interests in the <ftumblr.com> domain name. Complainant claims that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant contends that Respondent registered the disputed domain name through a privacy service, which allowed Respondent to conceal its true identity. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “Balticsea LLC” as registrant. Additionally, Complainant argues that nothing in Respondent’s WHOIS information suggests that Respondent is commonly known by the disputed domain name. Complainant also states that it has not authorized Respondent to use its TUMBLR mark in any way. Previous panels have often concluded that a respondent is not commonly known by a disputed domain name where nothing in the evidence, including the WHOIS information, suggests that Respondent is commonly known by the disputed domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also See, e.g., 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’.”). The Panel conclude that Respondent is not commonly known by the <ftumblr.com> domain name under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent’s use of the <ftumblr.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant asserts that Respondent is directing Internet traffic to a parked webpage containing links for competing products and services. Panels have generally found that using a confusingly similar domain name to resolve to a parked website that presumably collects revenue from the links featured on the website does not confer rights or legitimate interests to a respondent under Policy ¶¶ 4(c)(i) or 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel concludes that Respondent has no rights or legitimate interests in the <ftumblr.com> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <ftumblr.com> domain name in bad faith under Policy ¶ 4(b)(iii). Complainant contends that Respondent uses the disputed domain name to divert Internet users from Complainant’s website by exploiting the goodwill and reputation associated with Complainant and the TUMBLR mark. As discussed previously, the Panel notes the links featured on the website from Respondent’s disputed domain name, some of them competing with Complainant’s business. Prior panels have found bad faith use and registration where a respondent uses a confusingly similar domain name to resolve to a website featuring pay-per-click links that compete with complainant, thus disrupting complainant’s business. See Yahoo! Inc. v. JOR9.COM / Rezq, FA1211001471070 (Nat. Arb. Forum January 9, 2013) (“The Panel finds that Respondent’s use of the disputed domain name [mymaktoob.com] to divert Internet traffic to its own website constitutes disruption and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii).”). The Panel thus concludes that Respondent registered and is using the <ftumblr.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further states that Respondent registered and is using the <ftumblr.com> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant claims that Respondent registered the disputed domain name with intent to cause confusion to Internet users and to capitalize on Complainant’s rights and recognition in the TUMBLR mark. Complainant alleges that Respondent profits from the pay-per-click links featured on Respondent’s resolving website. Panels have frequently found bad faith use and registration where a respondent uses a confusingly similar domain name to attract Internet users to a website and commercially profit from the confusion caused. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”). The Panel therefore finds that Respondent registered and is using the <ftumblr.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TUMBLR mark because Complainant’s mark is internationally recognized and was registered prior to Respondent’s creation of the disputed domain name in May of 2010. 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <ftumblr.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 13, 2014
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