Tumblr, Inc. v. Zhong Wan / Wanzhongmedia
Claim Number: FA1402001543244
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Zhong Wan / Wanzhongmedia (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ttumblr.com>, registered with EuroDNS S.A.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 11, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 13, 2014, EuroDNS S.A. confirmed by e-mail to the National Arbitration Forum that the <ttumblr.com> domain name is registered with EuroDNS S.A. and that Respondent is the current registrant of the name. EuroDNS S.A. has verified that Respondent is bound by the EuroDNS S.A. 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 13, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 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@ttumblr.com. Also on February 13, 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 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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
i. Respondent is not commonly known by the infringing domain name.
ii. Respondent’s website redirects Internet traffic intended for Complainant’s website to various unrelated commercial third-party websites, including an adult-oriented website.
i. The disputed domain name is for sale for $1,150.
ii. Respondent registered the disputed domain name with Complainant’s mark in mind and with intent to cause confusion.
iii. Respondent undoubtedly registered the disputed domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark because Complainant’s mark is internationally recognized—and likely famous—and is registered in the United States, Europe, and elsewhere throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed 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 asserts that it has been one of the fastest-growing social networking websites. Complainant argues that its TUMBLR platform allows individuals to post content (such as text, photos, quotes, links, audio, and videos) to an Internet-accessible blog. Complainant contends that it is the owner of trademark registrations with the USPTO for the TUMBLR mark (e.g., Reg. No. 3,714,214, filed October 27, 2008; registered November 24, 2009). See Complainant’s Annex D. In Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007), the panel found that complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration.” Accordingly, the Panel finds that Complainant’s filing and registration of the TUMBLR mark with the USPTO sufficiently shows its rights in the mark under Policy ¶ 4(a)(i) dating back to October 27, 2008.
Complainant contends that Respondent’s addition of the letter “t” and gTLD “.com” to Complainant’s TUMBLR mark does not differentiate the <ttumblr.com> domain name from Complainant’s mark. The Panel holds that Respondent’s addition of a letter to Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) determination. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel also finds that Respondent’s inclusion of a gTLD does not differentiate the disputed domain name from Complainant’s TUMBLR mark pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel determines that Respondent’s <ttumblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
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 claims that Respondent is not commonly known by the <ttumblr.com> domain name. Complainant asserts that Respondent registered the disputed domain name through a privacy service, which enables Respondent to conceal its true identity. The Panel notes that the WHOIS information identifies “Zhong Wan / Wanzhongmedia” as the registrant of the disputed domain name. See Complainant’s Annex A. Complainant contends that it has not authorized Respondent to use its TUMBLR mark. Thus, the Panel determines that Respondent is not commonly known under the <ttumblr.com> domain name according to Policy ¶ 4(c)(ii), as Respondent has failed to produce any evidence to the contrary. 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 asserts that Respondent’s website redirects Internet traffic intended for Complainant’s website to various unrelated commercial third-party websites, including an adult-oriented website. See Complainant’s Annex P. Complainant argues that Respondent is using the <ttumblr.com> domain name for commercial gain (through affiliate and/or referral fees) to misleadingly divert consumers. As the Panel finds that Respondent is using the disputed domain name to redirect Internet users to competing sites, the Panel holds that such use is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant further asserts that Respondent’s <ttumblr.com> domain name redirects Internet users to the adult-oriented website <chaturbate.com>. See Complainant’s Annex P. In Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), the panel found that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). Thus, the Panel finds that Respondent’s misleading of Internet users to an adult-oriented website is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent’s <ttumblr.com> domain name is for sale for $1,150. The Panel observes that the WHOIS record for the disputed domain name states “<ttumblr.com> is for sale. The owner of the domain you are researching has it listed for $1,150.” See Complainant’s Annex A. Previous panels have held that a respondent’s general offer to sell the disputed domain name shows bad faith use and registration. See 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).”). Consequently, the Panel determines that Respondent has registered and is using the <ttumblr.com> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant contends that Respondent registered the <ttumblr.com> domain name with Complainant’s mark in mind and with intent to cause confusion. Complainant claims that Respondent’s webpages mislead Internet traffic intended for Complainant’s website to various unrelated third-party webpages, including an adult-oriented webpage. See Complainant’s Annex P. Complainant alleges that Respondent is using the <ttumblr.com> domain name for commercial gain (through affiliate and/or referral fees) to misleadingly divert consumers. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to complainant’s services and merely took advantage of Internet user mistakes. Thus, the Panel finds that Respondent has registered and is using the disputed domain name to attract Internet users to its own website for commercial gain, demonstrating bad faith use and registration pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent undoubtedly registered the <ttumblr.com> domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark because Complainant’s mark is internationally recognized—and likely famous—and is registered in the United States, Europe, and elsewhere throughout the world. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ttumblr.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 20, 2014
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