Tumblr, Inc. v. M K / ACME
Claim Number: FA1402001543264
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is M K / ACME (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue is <tumbl5.com>, registered with GODADDY.COM, LLC.
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 confirmed by e-mail to the National Arbitration Forum that the <tumbl5.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@tumbl5.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 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.
Complainant
a) Complainant operates a web platform that allows users to post content to an Internet-accessible blog. Complainant began operation in 2007 and operates its website at <tumblr.com>.
b) Complainant has rights in the TUMBLR mark, used in connection with a microblogging and social sharing platform. Complainant owns registrations for the TUMBLR mark with trademark authorities around the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,214 registered November 24, 2009).
c) Respondent’s <tumbl5.com> domain name is confusingly similar to Complainant’s TUMBLR mark. The disputed domain name incorporates Complainant’s mark in its entirety while replacing the letter “r” in Complainant’s mark with the number “5” and adding the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <tumbl5.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way.
b. The <tumbl5.com> domain name resolves to a parked webpage featuring third-party links for products and services unrelated to Complainant.
e) Respondent registered and is using the <tumbl5.com> domain name in bad faith.
a. Respondent registered the disputed domain name with the intent to cause confusion and to capitalize on Complainant’s rights in the TUMBLR mark.
b. Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name because Complainant’s mark is internationally recognized.
c. Respondent’s conduct constitutes typosquatting, which is evidence of bad faith.
f) Respondent registered the <tumbl5.com> domain name on October 17, 2012.
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 contends it has rights in the TUMBLR mark, used in connection with a microblogging and social sharing platform. Complainant states it owns registrations for the TUMBLR mark with the USPTO (e.g., Reg. No. 3,714,214 registered November 24, 2009). Therefore, the Panel finds that Complainant has rights in the TUMBLR mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration from the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <tumbl5.com> domain name is confusingly similar to Complainant’s TUMBLR mark. Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety while replacing the letter “r” in Complainant’s mark with the number “5” and adding the gTLD “.com.” First, the Panel finds that a disputed domain name that differs from a trademark by a single character does not avoid a finding of confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of an analysis of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <tumbl5.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 contends that Respondent does not have any rights or legitimate interests in the <tumbl5.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “M K/ ACME” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the TUMBLR mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <tumbl5.com> domain name under Policy ¶ 4(c)(ii).
Complainant alleges that the <tumbl5.com> domain name resolves to a parked webpage featuring third-party links for products and services unrelated to Complainant. Previous panels have found that using a confusingly similar domain name to provide third-party links unrelated to a complainant does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). Therefore, the Panel finds that Respondent is not making 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 the <tumbl5.com> domain name resolves to a parked webpage featuring third-party links for products and services unrelated to Complainant.
Complainant has proven this element.
Complainant claims Respondent registered and is using the <tumbl5.com> domain name in bad faith. Complainant contends that Respondent registered the disputed domain name with the intent to cause confusion and to capitalize on Complainant’s rights in the TUMBLR mark. Past panels have found that using a confusingly similar domain name that includes a well-known mark to attract Internet users for commercial gain violates Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website). Therefore, the Panel finds that Respondent registered and is using the <tumbl5.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is intending to cause confusion and to capitalize on Complainant’s rights in the TUMBLR mark, all for Respondent’s own commercial benefit.
Complainant contends that Respondent had knowledge of Complainant’s mark prior to registering the disputed domain name because Complainant’s mark is internationally recognized. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). The Panel determines Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); 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 argues that Respondent’s conduct constitutes typosquatting, which is evidence of bad faith. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the disputed domain name replaces the letter “r” in Complainant’s TUMBLR mark with the number “5,” which is near the letter “r” on a QWERTY keyboard. Past panels have found that typsquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent is typosquatting and finds that Respondent registered and is using the <tumbl5.com> domain name in bad faith under Policy ¶ 4(a)(iii).
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 <tumbl5.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: March 13, 2014
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