Tumblr, Inc. v. BRANDI CLARKSON / NO
Claim Number: FA1402001543260
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is BRANDI CLARKSON / NO (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblfr.com>, registered with GoDaddy.com, 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 February 11, 2014; the National Arbitration Forum received payment on February 11, 2014.
On February 12, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <tumblfr.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 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@tumblfr.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 11, 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 owner of the service marks and trademarks “TUMBLR” and “tumblr.” (hereinafter “Complainant’s Mark”, the “TUMBLR Mark” or the “Mark”) as well as the domain name TUMBLR.COM. Complainant’s Mark is used in connection with a microblogging and social sharing platform initially launched in 2007.
2. 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. 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.
3. 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
4. The term “TUMBLR” is a coined word, having no meaning other than as a trademark denoting the goods and services of Tumblr. 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.”).
5. 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. Tumblr.com 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 159 million blogs containing more than 70.3 billion posts, with 175 million unique visitors per month worldwide and 50 million unique visitors per month in the United States.
6. Tumblr.com has been one of the fastest growing social networking websites. Two weeks after launching the Tumblr.com website in February 2007, the site had 75,000 registered users. (2010 MIT Technology Review “Innovators Under 35”). From the beginning of November 2007 to the end of January 2008, the Tumblr.com website saw a 59% increase in registered users, reporting 180,000 registered users by the end of January 2008. (Business Insider article titled “Tumblr Growing: 180K Users, 720K Daily Pageviews” dated January 30, 2008). By May 2009, Tumblr reported hosting one million blogs on the Tumblr.com website. (Business Insider article titled “Here’s How Long It Took 15 Hot Startups to Get 1,000,000 Users” dated January 8, 2012). In 2010, monthly visitors to Tumblr.com surged 168% to 6.7 million monthly visitors. (comScore U.S. Digital Year in Review 2010 dated February 2011). Tumblr.com has continued to enjoy exponential growth, as evidenced from the 218% increase in visitors from 4.2 million in July 2010 to 13.4 million in July 2011. (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). At the time Respondent registered the Infringing Domain Name on June 30, 2012, Tumblr.com had already reported 26.9 million unique visitors in the United States alone. (comScore Media Metrix Ranks Top 50 U.S. Desktop Web Properties for July 2012). By January 2013, Tumblr.com had over 29 million unique visitors per month in the United States alone and more than 93 million unique visitors per month worldwide. Indeed, Tumblr has developed worldwide recognition and 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 fifteen domain names that were identical or confusingly similar to the TUMBLR Mark, including but not limited to <tumbr.com>, <tymblr.com>, <gumblr.com>, <tukblr.com>, <timblr.com>, and <tumlr.com>. A printout of a list of UDRP decisions brought by Complainant.
B. Respondent’s Infringing Acts
9. Respondent’s Infringing Domain Name <tumblfr.com> includes the additional letter “f” between the letters “l” and “r” in the TUMBLR Mark and the generic top-level domain (“gTLD”) “.com”. By adding an additional letter, Respondent is attempting to capitalize on the common typographical error of the word “tumblr” since the letter “r” is proximately close to the letter “f” on a traditional QWERTY keyboard.
10. Respondent registered the Infringing Domain Name on June 5, 2012 well after the Complainant’s TUMBLR Mark had gained worldwide recognition – and likely fame – and after Complainant had applied for and/or obtained registrations for its TUMBLR Mark in the United States and elsewhere.
11. The Infringing Domain Name resolves to the <http://9000.co/> website which contains click-through links to unrelated products and services.
12. Complainant first became aware of Respondent’s registration and use of the Infringing Domain Name in or about August 2013. On or about September 2, 2013, Complainant’s outside counsel contacted the Respondent via email, notifying Respondent of Complainant’s rights and requesting that Respondent transfer the Infringing Domain Name to Complainant. Complainant’s counsel sent follow-up messages on September 17, 2013 and October 31, 2013. As of the date of this Complaint, Complainant’s counsel’s received no reply.
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))
13. The Infringing Domain Is Confusingly Similar Typosquatting. Respondent’s Infringing Domain Name differs from Complainant’s Mark by only one letter; namely, the letter “f” is added in between the “l” and “r” in the TUMBLR Mark. The addition of the letter “f” to the Complainant’s Mark is classic typosquatting. 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).
14. 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.
15. 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))
16. 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).
17. Respondent’s Use of the Infringing Domain Name to Direct Traffic to a Parked Webpage Containing Links for Unrelated Products and/or Services Does Not Constitute a Bona Fide Offering of Goods or Services or Legitimate Noncommercial or Fair Use. Respondent’s website directs Internet users to the website <http://9000.co/> which features generic links to unrelated third-party websites. In doing this, Respondent is not making a legitimate noncommercial or fair use of the Infringing Domain Name pursuant to paragraph 4(c)(iii) of the Policy. To the contrary, Respondent receives pay-per-click fees from the linked websites appearing on the website and/or a referral fee for each misdirected Internet user. UDRP decisions have consistently held that registrants that monetize domain names using redirecting services have not made a bona fide offering of goods or services giving rise to rights or legitimate interests in a disputed domain name. See e.g., American Century Proprietary Holdings, Inc. v. Travis Martin, FA0905001262486 (Nat. Arb. Forum Jun. 23, 2009) (holding no rights or legitimate interests where domain name resolves to a parked website and Respondent presumably generates click-through fees from such use); Genzyme Corp. v. Keyword Marketing, Inc., FA0706001007979 (Nat. Arb. Forum Jul. 17, 2007) (holding no rights or legitimate interests where domain name resolves to a pay-per-click website featuring sponsored links to various commercial websites); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (finding there was no bona fide offering of goods or services under the Policy where the respondent presumably received a referral fee for redirecting Internet users to websites unrelated to the complainant’s mark). As such, pursuant to paragraph 4(c) of the Policy, all of these facts support the conclusion that the Respondent has no rights or legitimate interests in the Infringing Domain Name.
18. Respondent’s use of the Infringing Domain Name comprising a mark confusingly similar to the 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.
19. 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. 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[.]”); see also Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Nat. Arb. Forum March 25, 2008) (holding respondent has no rights or legitimate interests pursuant to Section 4(c)(ii) because there is no evidence in the record or Whois information indicating respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its YAHOO! mark); Yahoo! Inc. v. John Morgan, FA 1195421 (Nat. Arb. Forum July 9, 2008) (“The WHOIS domain name registration information for each of the disputed domain names [<yahoocupid.com> and <yahoocupid.net>] lists the registrant as ‘John Morgan,’ which bears a strong dissimilarity to the disputed domain names. More to the point, there is no inference of any express or implied authority or license on behalf of [r]espondent to use Complainant’s YAHOO! mark in any fashion. The Panel therefore finds that [r]espondent is not commonly known by the disputed domain names, and as such lacks rights and legitimate interests under Policy ¶4(c)(ii).”).
Respondent Registered and Used the Infringing Domain Name in Bad Faith
(UDRP Rule 3(b)(ix)(3); Policy Para. 4(a)(i))
20. Respondent Registered the Infringing Domain Name with Complainant’s Mark in Mind and with Intent to Cause Confusion. Respondent’s registration of the confusingly similar Infringing Domain Name is intended to divert Internet users from Complainant’s website to unrelated third party websites for the purpose of financial gain by exploiting the goodwill and recognition Complainant gained in its Mark, and thus constitutes bad faith registration. 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).”).
21. Respondent undoubtedly registered the Infringing 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. Complainant first made use of the TUMBLR Mark in 2007, and the 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 did not register the Infringing Domain Name until June of 2012. As such, 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 August 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).”).
22. 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. 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.”); see also Yahoo! Inc. v. Blue Q Ltd., et al., D2011-0702 (WIPO June 20, 2011) (“bearing in mind the arbitrary, distinctive and well-known nature of the [YAHOO!] mark in this case… it would indeed be difficult for the Respondent to establish that he has rights or legitimate interests in the disputed domain name which contains the mark YAHOO.”); Yahoo! Inc. v. Finance Ya Hoo a/k/a Victor Lashenko et al., D2002-0694 (WIPO Sept. 20, 2002) (citing the arbitrary nature of the YAHOO! mark contributing to a likelihood of confusion with domain names incorporating the “yahoo” name and another generic term, including <financeyahoo.com>, <gamesyahoo.com>, and others).
23. 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 each of the following three elements to obtain an cancelling or transferring 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 a microblogging and social sharing platform initially launched in 2007. Complainant’s TUMBLR platform allows individuals to post content to an Internet-accessible blog. Complainant owns trademark registrations for the TUMBLR mark throughout the world, including registrations with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,214 registered November 24, 2009) as well as with the Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 10,668,631 registered September 3, 2012) and IPZ (Reg. No. 805,103 registered October 22, 2009). Complainant has continuously used the TUMBLR mark since its creation. Providing evidence of a registration with the USPTO is normally sufficient to establish rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO). Complainant has adequately established its rights in the TUMBLR mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <tumblfr.com> domain name is confusingly similar to Complainant’s TUMBLR mark. Respondent adds an additional letter “f” between the letters “l” and “r” in Complainant’s TUMBLR mark. Adding additional letters to a complainant’s mark does not normally adequately differentiate the resulting domain name from the mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Respondent adds the generic top-level domain (“gTLD”) “.com.” Panels have frequently found that gTLDs are irrelevant under a confusingly similar analysis under Policy ¶4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <tumblfr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶4(a)(i).
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 has no rights or legitimate interests in the <tumblfr.com> domain name. Respondent is not commonly known by the <tumblfr.com> domain name under Policy ¶4(c)(ii). Nothing in Respondent’s WHOIS information shows Respondent is commonly known by the disputed domain name. The WHOIS information for Respondent’s disputed domain name lists “Brandi Clarkson” as the registrant. Complainant has not authorized or licensed Respondent to use the disputed domain name in any way. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). It seems clear Respondent is not commonly known by the <tumblfr.com> domain name under Policy ¶4(c)(ii).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <tumblfr.com> domain name. Respondent’s <tumblfr.com> domain name directs Internet users to the <http://9000.co/> domain name, which hosts a parked website containing links for products and services unrelated to Complainant. Respondent receives pay-per-click fees from the links presented on Respondent’s resolving website. Some of the links presented on the website include, “Esurance Car Insurance,” “70% Off Furniture & Décor,” “$19 for Car Insurance,” “Marketing with Postcards,” “Freecreditscore.com,” “Auto Insurance Policies,” and “House Insurance Companies.” Using a confusingly similar domain name to resolve to a parked website displaying links for unrelated products or services does not confer rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Respondent has no rights or legitimate interests in the <tumblfr.com> domain name under Policy ¶¶4(c)(i) or 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered the disputed domain name intending to cause confusion and capitalize on Complainant’s rights in its mark in bad faith under Policy ¶4(b)(iv). Generally a panel will find bad faith use and registration under Policy ¶4(b)(iv) where a respondent registers a confusingly similar domain name to attract Internet users to respondent’s website and commercially profit from the confusion caused as to complainant’s relation to the disputed domain name. See Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶4(b)(iv)). Based upon this evidence, the Panel finds Respondent registered and is using the <tumblfr.com> domain name in bad faith under Policy ¶4(b)(iv).
According to Complainant, Respondent registered the <tumblfr.com> domain name with actual knowledge of Complainant’s rights in the TUMBLR mark. Complainant claims its TUMBLR mark is internationally recognized, and most likely famous. Complainant first used the TUMBLR mark in 2007 in association with its goods and services. Respondent did not register the <tumblfr.com> domain name until June 2012. Complainant claims it is inconceivable Respondent could have registered the <tumblfr.com> domain name without actual knowledge of Complainant's rights in the mark. This Panel agrees, especially in light of Respondent’s registration of several similar domain names. This is sufficient to find bad faith under Policy ¶4(a)(iii) and the general penumbra under Policy ¶4(b). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant claims Respondent’s “typosquatting” behavior alone is sufficient to prove bad faith under Policy ¶4(a)(iii). This Panel disagrees. Typosquatting is a shorthand way of describing behavior that may (or may not) be prohibited under the UDRP. If a complainant makes out a case under the UDRP, it will prevail. Simply saying “typosquatting” (without more) is not sufficient. This Panel will not find bad faith on that ground.
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 <tumblfr.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, March 27, 2014
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