Tumblr, Inc. v. Private Registration Services, Inc / Private Registration Services, Inc
Claim Number: FA1402001543381
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Private Registration Services, Inc / Private Registration Services, Inc (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thumblr.com>, registered with Moniker Online Services LLC.
The undersigned certifies that has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2014; the National Arbitration Forum received payment on February 12, 2014.
On February 12, 2014, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <thumblr.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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@thumblr.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 The Honourable Neil Anthony Brown QC 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
Complainant has made the following contentions.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s use of the disputed domain name to direct traffic to a parked webpage containing third-party links for competing products and/or services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.
i. The resolving website contains links to competing third-party websites.
ii. Respondent registered the disputed domain name with Complainant’s mark in mind and with intent to cause confusion.
iii. Typosquatting alone is sufficient to prove bad faith.
iv. Respondent undoubtedly registered the disputed domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that conducts a business that enables individuals to post content such as text, photos, quotes, links, audio, and videos to an Internet-accessible blog.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TUMBLR mark (e.g., Reg. No. 3,714,214, first used April 27, 2007, filed October 27, 2008, registered November 24, 2009).
3. Respondent registered the <thumblr.com> domain name on February 26, 2007.
4. Respondent uses the domain name to direct internet traffic to a parked webpage containing third-party links for competing products and/or services.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant argues that it is the owner of the TUMBLR trademark. Complainant asserts 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, first used April 27, 2007, filed October 27, 2008, registered November 24, 2009). See Complainant’s Annex C. The Panel notes that although Respondent’s registration of the <thumblr.com> domain name occurred on February 26, 2007, before Complainant’s registration of the TUMBLR mark, Policy ¶ 4(a)(i) does not require a valid trademark registration in order to prove rights in the mark, so long as Complainant can demonstrate common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant alleges that as a result of its extensive investment and promotion, its services and TUMBLR mark enjoy a substantial degree of public recognition. Complainant contends that <tumblr.com> has been one of the fastest growing social networking websites. Complainant argues the TUMBLR mark has been used through the <tumblr.com> domain name since February 19, 2007. Complainant claims that from the beginning of November 2007 to the end of January 2008, its <tumblr.com> website saw a 59% increase in registered users, reporting 180,000 registered users by the end of January 2008. See Complainant’s Annex I. Complainant argues that by January 2012, <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. Complainant contends that its 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. In BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000), the panel found that complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services. Accordingly, the Panel holds that Complainant has established common law rights in the TUMBLR mark, and find Complainant has rights in the mark under Policy ¶ 4(a)(i) dating back to the February 19, 2007 first use of the mark, i.e. prior to the date on which Respondent registered the <thumblr.com> domain name .
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s TUMBLR mark. Complainant argues that Respondent’s <thumblr.com> domain name differs from Complainant’s mark by only one letter; namely, the letter “h” is added in between the “t” and “u” in the TUMBLR mark. The Panel determines that Respondent’s inclusion of an additional letter does not distinguish the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). 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)). Complainant also submits that Respondent’s addition of the gTLD is irrelevant to the confusingly similar analysis. The Panel holds that Respondent’s addition of a gTLD does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel determines that Respondent’s <thumblr.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a)Respondent has chosen to take Complainant’s TUMBLR trademark and to use it in its domain name, adding only the letter “h” to the trademark between the “t” and “u” in the TUMBLR mark;
(b) Respondent is using the disputed domain name to direct internet traffic to a parked webpage containing third-party links for competing products and/or services;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d)Complainant contends that Respondent is not commonly known by the <thumblr.com> domain name. Complainant claims that Respondent registered the disputed domain name through a privacy service, which enables Respondent to conceal its true identity. See Complainant’s Annex A. The Panel observes that the WHOIS record lists “Private Registration Services, Inc / Private Registration Services, Inc.” as the registrant of the disputed domain name. Id. Complainant alleges that it has not authorized Respondent to use its TUMBLR mark. The Panel also notes that Respondent failed to provide any evidence that it was known by the domain name. Therefore, the Panel holds that Respondent is not commonly known by the <thumblr.com> domain name pursuant to Policy ¶ 4(c)(ii). 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);
(e)Complainant asserts that Respondent is using the <thumblr.com> domain name to direct traffic to a parked webpage containing third-party links for competing products and/or services. The Panel notes that Respondent’s disputed domain name links to a competing hyperlink directory, listing links titled “HOW TO MAKE A BLOG,” “BUILD YOUR OWN WEBSITE,” “MAKE A BLOG FOR FREE,” and more. See Complainant’s Annex Q. Complainant argues that Respondent receives pay-per-click fees from the linked websites appearing on the website and/or a referral fee for each misdirected Internet user. Previous panels have concluded that a respondent’s use of a domain name to offer competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 therefore concludes that Respondent is not using the <thumblr.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s resolving website contains links to competing third-party websites. Complainant alleges that the disputed domain name resolves to a parked webpage which redirects Internet users to websites offering competing blog platform services to Complainant’s services under the TUMBLR mark, such as “CREATE A WEBSITE – EASY,” “BUILD A WEBSITE – FREE,” “FREE BLOG,” and others. See Complainant’s Annex Q. Prior panels have concluded that a respondent’s use of a domain name to provide competing links disrupts a complainant’s legitimate business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel concludes that Respondent’s use of the <thumblr.com> domain name disrupts Complainant’s business, demonstrating bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant asserts that Respondent registered the <thumblr.com> domain name with Complainant’s mark in mind and with intent to cause confusion. The Panel observes that Respondent’s disputed domain name resolves to a webpage that provides links that directly compete with Complainant, such as “Build a Blog,” “Create Blog,” “Hosting Server,” and more. See Complainant’s Annex Q. Complainant argues that Respondent receives pay-per-click fees from the linked websites appearing on the website and/or a referral fee for each misdirected Internet user. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that ”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).” As the Panel finds that Respondent is using the <thumblr.com> domain name to attract users to its own website for which it financially gains, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that typosquatting alone is sufficient to prove bad faith. The Panel observes that Respondent adds the letter “h” to Complainant’s TUMBLR mark in the <thumblr.com> domain name. The Panel observes that prior panels have found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark. 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).”). Accordingly, the Panel holds that Respondent has engaged in typosquatting, showing bad faith use and registration under Policy ¶ 4(a)(iii).
Fourthly, Complainant alleges that Respondent undoubtedly registered the <thumblr.com> domain name in bad faith with actual knowledge of Complainant’s rights in its TUMBLR mark. Complainant contends that Respondent registered the disputed domain name one week after Complainant announced the launch of its <tumblr.com> website on February 19, 2007. Complainant claims that the timing of Respondent’s registration of the disputed domain name indicates that Respondent was anticipating that the commercial value of Complainant’s mark would quickly increase and thus, the value of the disputed domain name would likewise increase. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the timing of Respondent registration of the <thumblr.com> domain name, 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).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the TUMBLR mark and in view of the conduct that Respondent has engaged in when using the domain name, Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thumblr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 15, 2014
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