Tumblr, Inc. v. Benjamin Lotan / Toad Murphy
Claim Number: FA1402001543249
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Benjamin Lotan / Toad Murphy (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rumblr.org>, registered with GoDaddy.com, LLC (R91-LROR).
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 11, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 12, 2014, GoDaddy.com, LLC (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <rumblr.org> domain name is registered with GoDaddy.com, LLC (R91-LROR) and that Respondent is the current registrant of the name. GoDaddy.com, LLC (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, LLC (R91-LROR) 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 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@rumblr.org. Also on February 12, 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 11, 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.
The National Arbitration Forum was sent one email from Respondent, which is identified in this proceeding as “Other Correspondence.” In this document, Respondent consents to the transfer of the <rumblr.org> domain name. However, since there has been no request to withdraw the complaint pursuant to the National Arbitration Forum Supplemental Rule 12(b), the Panel will issue a decision.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant owns the TUMBLR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,214, registered November 24, 2009).
ii. Complainant uses the TUMBLR mark for Internet-based networking services allowing users to share, store, view, and download multimedia content.
iii. Complainant has invested significant effort to promote the TUMBLR mark since its inception in 2007 such that the mark has gained a substantial degree of recognition.
i. Policy ¶ 4(a)(i)
1. The <rumblr.org> domain name is confusingly similar to the TUMBLR mark as the domain name replaces the “t” in the mark with an “r” and adds the generic top-level domain (“gTLD”) “.org.”
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the <rumblr.org> domain name. Further, Respondent has not been authorized to use the TUMBLR mark.
2. Respondent is not using the <rumblr.org> domain name in connection with a legitimate noncommercial or fair use. Respondent uses the disputed domain name for a website offering directly competing services.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s bad faith is demonstrated by Respondent’s offer to sell the disputed domain name for an amount in excess of the costs registrant incurred in connection with registering the infringing domain name.
2. Respondent is attempting to mislead internet users to believe the resolving website is associated with Complainant, and benefit from the resulting confusion.
3. Respondent’s resolving website mimics Complainant’s own website and offers competing services.
4. Respondent had actual knowledge of Complainant’s rights in the TUMBLR mark before registering the disputed domain name.
5. Respondent’s typosquatting is sufficient, in and of itself, to demonstrate bad faith.
B. Respondent
Altogether the Forum received other correspondence from Respondent, the Forum did not receive a formal, timely response.
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 claims to own the TUMBLR mark through its trademark registrations with the USPTO (e.g., Reg. No. 3,714,214, registered November 24, 2009). Complainant purports to use the TUMBLR mark in connection with Internet-based networking services allowing users to share, store, view, and download multimedia content. Previous panels have consistently found that USPTO registrations are sufficient to establish rights in a 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)). The Panel finds that Complainant’s USTPO registrations are sufficient to establish Complainant’s rights in the TUMBLR mark under Policy ¶ 4(a)(i).
Complainant argues that the <rumblr.org> domain name is confusingly similar to the TUMBLR mark as the domain name replaces the “t” in the mark with an “r” and adds the gTLD “.org.” Previous panels have found that a misspelling of a mark by one letter does not sufficiently distinguish the resulting domain name from the mark. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (holding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark). Further, panels have consistently held that the addition of a gTLD, such as “.org,” is irrelevant to the confusingly similar analysis. See 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). Therefore, the Panel finds that the <rumblr.org> domain name is confusingly similar to the TUMBLR mark pursuant to Policy ¶ 4(a)(i) as the modifications of replacing the “t” in the mark with an “r” and adding a gTLD are insufficient to differentiate the domain name from the mark.
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.”).
It is Complainant’s position that Respondent lacks rights or legitimate interests in the disputed domain name. In so arguing, Complainant asserts that Respondent is not commonly known by the <rumblr.org> domain name. The Panel notes that the WHOIS record indicates that “Benjamin Lotan / Toad Murphy” is the registrant of the domain name. Further, Complainant asserts that it has not authorized Respondent to use the TUMBLR mark. The Panel notes that Respondent has failed to submit a response in this matter, and therefore has not provided affirmative evidence to refute Complainant’s assertions. In light of the available record, the Panel finds that Respondent is not commonly known by the <rumblr.org> domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
To further demonstrate that Respondent lacks rights and legitimate interests, Complainant asserts that Respondent is not using the <rumblr.org> domain name in connection with a legitimate noncommercial or fair use. Specifically, Complainant contends that Respondent uses the disputed domain name in connection with a website offering services that directly compete with Complainant. The Panel notes that the resolving webpage displays the heading: “rumblr. a new way to tumblr.” The resolving page also educates users as to the function of the site, namely, “[to] pitch turnblogs against each other and create an image based tournament [...].” The Panel finds that Respondent is not using the disputed domain name for 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), because Respondent is using the domain name to divert Internet users to a website that offers social media services that compete with those offered by Complainant under its mark. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Complainant also asserts that Respondent’s lack of rights and legitimate interests in the disputed domain name are demonstrated by Respondent’s typosquatting behavior. The Panel notes that the disputed domain name differs from the mark where the domain name replaces the “t” in the mark with an “r.” Previous panels have used typosquatting as further evidence that the respondent lacks rights and legitimate interests in the disputed domain name. For example, in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), the panel found that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c.’” Accordingly, the Panel finds Respondent’s lacks rights and legitimate interests in the <rumblr.org> domain name pursuant to Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s offer to sell the disputed domain name for an amount in excess of the costs Respondent incurred in connection with registering the infringing domain name. Specifically, Complainant alleges that Respondent requested payment in the amount of $10,000 in exchange for the transfer of the disputed domain name. The Panel notes that this offer transpired through email correspondence, which Complainant has made available as an exhibit. Notably, the email sent from Respondent to Complainant on September 2, 2013 reads in pertinent part: “ […] I’d be happy to transfer ownership to u and/or completely remove the site for $10,000.” Past panels have found evidence of bad faith where the respondent sought consideration for far more than the estimated out-of-pocket costs associated with registering the disputed domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(i) as Respondent requested $10,000 in exchange for the transfer of the disputed domain name, an amount that exceeds any out-of-pocket costs associated with registering the domain name.
Complainant also argues that Respondent is attempting to mislead internet users to believe the resolving website is associated with Complainant, and is attempting to benefit from the resulting confusion. The Panel notes that Complainant has included a screenshot of the disputed webpage as an exhibit to corroborate this contention. The Panel finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s TUMBLR mark by offering Internet-based networking services similar to those developed by Complainant. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Similarly, Complainant argues that Respondent’s resolving website mimics Complainant’s own website, such that it constitutes passing off. Complainant notes that the disputed domain name is used in connection with a site that offers services that directly compete with Complainant. The Panel notes that that the resolving webpage displays: “rumblr. a new way to tumblr,” and also educates users as the function of the site, namely, to “pitch turnblogs against each other and create an image based tournament.” Further, Complainant states that Respondent is using the same bubble font in lowercase with a period at the end to present its “rumblr” mark. Previous panels have found evidence of bad faith where a respondent passes itself off as a complainant for commercial benefit. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). The Panel determines that Respondent’s activity reaches the level of passing off, and finds that Respondent registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the TUMBLR mark before registering the disputed domain name, and as such, registered the disputed domain name in bad faith. To support its position, Complainant notes that Respondent references TUMBLR on the resolving page of the disputed domain name. Specifically, the resolving page states: “rumblr. a new way to tumblr.” Previous panels have found that a respondent’s actual knowledge of a complainant’s rights in a mark prior to registration is evidence of bad faith registration. See 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"). The Panel determines that Respondent had actual knowledge of Complainant's rights in the TUMBLR mark given the reference to the same on the resolving page, and therefore find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent’s typosquatting is sufficient, in and of itself, to demonstrate bad faith. The Panel notes that the disputed domain name differs from the mark where the domain name replaces the “t” in the mark with an “r.” Previous panels have determined that typosquatting is a practice that takes advantage of common and basic typographical errors, and is therefore motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). The Panel finds evidence of bad faith use and registration under Policy ¶ 4(a)(iii) as Respondent utilizes a domain name incorporating a common misspelling of the TUMBLR mark to divert users who misspell Complainant’s mark.
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 <rumblr.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 13, 2014
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