Tumblr, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1402001543451
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tummblr.com> and <tumnlr.com>, registered with Internet.bs Corp.
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.
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 11, 2014.
On February 21, 2014, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <tummblr.com> and <tumnlr.com> domain names are registered with Internet.bs Corp. and that Respondent is the current registrant of the names. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 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@tummblr.com, postmaster@tumnlr.com. Also on February 25, 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 20, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Respondent is not commonly known by the infringing domain names.
ii. Respondent’s <tummblr.com> website directs Internet users to a parked webpage which features links to commercial third-party websites.
iii. Respondent’s <tumnlr.com> website redirects users to the malware website <lpcloudsvr302.com> which attempts to download computer viruses on the computers of unsuspecting Internet users.
i. Respondent has demonstrated a pattern of bad faith use and registration.
ii. The <tummblr.com> domain name resolves to a website containing links to competing third-party websites.
iii. Respondent registered the infringing domain names with intent to cause confusion.
iv. Redirecting users to a malware website proves bad faith.
v. Typosquatting alone is sufficient to prove bad faith.
vi. Respondent registered the infringing domain names with Complainant’s mark in mind.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that operates a platform that allows 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, filed October 27, 2008, registered November 24, 2009).
3. Respondent registered the <tumnlr.com> domain name on May 6, 2009. Respondent registered the <tummblr.com> domain name on November 2, 2007.
4. Respondent’s <tummblr.com> website directs Internet users to a parked webpage which features links to commercial third-party websites. Respondent’s <tumnlr.com> website redirects users to the malware website <lpcloudsvr302.com> which attempts to download computer viruses on the computers of unsuspecting Internet users.
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 on which it can rely. Complainant argues that it is the owner of the TUMBLR mark. Complainant’s 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 owns trademark registrations with the USPTO for the TUMBLR mark (e.g., Reg. No. 3,714,214, filed October 27, 2008, registered November 24, 2009). See Complainant’s Annex D. Complainant claims that although Respondent appears to reside in Chile, since its TUMBLR mark is registered with the USPTO and other jurisdictions, Complainant has rights in the TUMBLR mark pursuant to Policy ¶ 4(a)(i). See Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Nat. Arb. Forum May 14, 2013) (finding that since Policy ¶ 4(a)(i) “does not require that the mark be registered in the country in which Respondent operates [,]… Complainant’s registration of the TUMBLR mark with the USPTO proves its rights in the mark under Policy ¶ 4(a)(i)).”). The Panel notes that Respondent registered its <tummblr.com> domain name in 2007, nearly a year before Complainant filed for its TUMBLR mark in 2008. However, the Panel holds that Policy ¶ 4(a)(i) does not require a valid trademark registration so long as Complainant can establish 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). The Panel finds on the evidence and because of the prominence of the TUMBLR mark that Complainant has established that it had common law trademark rights to TUMBLR prior to the registration of the <tummblr.com> domain name in 2007 and at least prior to November 2, 2007.
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s TUMBLR mark. Complainant asserts that its website to which its <tumblr.com> domain name resolves ranks 35th worldwide and 29th in the US in terms of reach according to <comScore.com>. See Complainant’s Annex F. Complainant claims that 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. Complainant argues that its <tumblr.com> website was launched on February 19, 2007. See Complainant’s Annex G. Complainant states that on or around October 2007, media outlets reported that Complainant raised $750,000 in funding and that Complainant was planning to unveil an overhaul of the <tumblr.com> website. See Complainant’s Annex I. In Yarosh Brothers, LLC v. Junk My Cars, FA 1048718 (Nat. Arb. Forum Sept. 12, 2007), it was found that “The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operated under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i).” Therefore, the Panel finds that Complainant has established secondary meaning in the TUMBLR mark, and thus finds that Complainant has common law rights in the mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <tummblr.com> and <tumnlr.com> domain names are common misspellings of Complainant’s TUMBLR mark. Complainant argues that Respondent’s <tummblr.com> domain name includes the additional letter “m” to Complainant’s TUMBLR mark. The Panel determines that Respondent’s inclusion of an additional letter to Complainant’s mark does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Tumblr, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, D2013-0213 (WIPO March 29, 2013) (finding that the domain name <tumblor.com>, “when directly compared, is confusingly similar to the TUMBLR mark”). Complainant contends that Respondent’s <tumnlr.com> domain name replaces the letter “b” with the letter “n.” The Panel holds that Respondent’s substitution of one letter for another in Complainant’s mark does not differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i). 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”). Complainant asserts that Respondent’s addition of the gTLD “.com” is irrelevant to the confusingly similar analysis. The Panel agrees that Respondent’s inclusion of a gTLD to Complainant’s TUMBLR mark is inconsequential to a Policy ¶ 4(a)(i) determination. 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 finds that Respondent’s <tummblr.com> and <tumnlr.com> domain names are 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 names 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 mark and to use it in
its domain names, making merely minor spelling alterations to the trademark when
incorporating it into the domain names;
(b) Respondent has then linked the <tummblr.com> domain name to a website that
Directs internet users to a parked webpage which features links to commercial third-party websites and the<tumnlr.com> domain name to a website that redirects users to the malware website <lpcloudsvr302.com> which attempts to download computer viruses on the computers of unsuspecting Internet users;
(c)Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant claims that Respondent is not commonly known by the <tummblr.com> and <tumnlr.com> domain names. Complainant states that nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the infringing domain names. The Panel observes that the WHOIS record identifies “Ryan G Foo / PPA Media Services” as the registrant of the disputed domain names. See Complainant’s Annex A. Complainant also asserts that it has not authorized Respondent to use its TUMBLR mark. As the Panel finds that Respondent is not commonly known by the <tummblr.com> and <tumnlr.com> domain names pursuant to Policy ¶ 4(c)(ii), the Panel holds that Respondent has no rights or legitimate interests in the disputed domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(e) Complainant asserts that Respondent’s <tummblr.com> website directs Internet users to a parked webpage which features links to commercial third-party websites. The Panel notes that Respondent’s disputed domain name resolves to a webpage featuring links titled “FOREX TRADING,” “GET YOUR DREAM JOB,” “DEFEAT THE DRAGON!” and more. See Complainant’s Annex S. The Panel notes that the hyperlinks featured on Respondent’s website may be considered unrelated to Complainant’s business. However, Complainant argues that Respondent receives pay-per-click fees from the linked websites that appear on Respondent’s webpage. In WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003)m the panel found that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to complainant’s mark, websites where 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. Accordingly, the Panel determines that Respondent has not made a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <tummblr.com> domain name;
(f) Complainant argues that Respondent’s <tumnlr.com> website redirects users to the malware website <lpcloudsvr302.com> which attempts to download computer viruses on the computers of unsuspecting Internet users. See Complainant’s Annex S. Previous panels have held that a respondent’s use of a disputed domain name to redirect Internet users to a malware website is not recognized as a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (finding “Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the site accessible redirects to the dangerous malware site <gaja79.com>”). Therefore, the Panel finds that Respondent is not using the <tumnlr.com> 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).
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 names.
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 names were registered in bad faith and have 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
names were registered and used in bad faith. That is so for the following
reasons.
First, Complainant asserts that Respondent has demonstrated a pattern of bad faith use and registration. Complainant argues that Respondent has registered and used the infringing domain names, both of which include a misspelling of Complainant’s TUMBLR mark. Complainant claims that Respondent’s registration of multiple domain names confusingly similar to Complainant’s mark is “indicative of a pattern of bad faith registration and use under Policy 4(b)(ii).” See Yahoo! Inc. v. VALUE DOMAIN / DIGIROCK, INC.; DIGIROCK, INC. / DOMAIN SECTION VALUE DOMAIN, FA1206001450315 (Nat. Arb. Forum Jul. 6, 2012). Accordingly, the Panel finds that Respondent’s registration of multiple domain names in the present case evidences a pattern of bad faith registration, demonstrating bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant argues that Respondent’s <tummblr.com> domain name resolves to a website containing links to competing third-party websites. The Panel observes that Respondent’s disputed domain name links to a website that contains third-party hyperlinks titled “Forex Trading,” “Msn Messenger,” “Videos X” and others. See Complainant’s Annex S. Prior UDRP panels have determined that a respondent’s use of a domain name to provide links to related products and services disrupts complainant’s business and shows bad faith under Policy ¶ 4(b)(iii). The Panel notes that the links listed on Respondent’s disputed domain name may be considered unrelated to Complainant’s business. However, as the Panel finds that Respondent has linked its <tummblr.com> domain name to a webpage displaying competing links, the Panel finds bad faith disruption of Complainant’s business, which demonstrates bad faith under Policy ¶ 4(b)(iii). 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).”).
Thirdly, Complainant claims that Respondent registered the <tummblr.com> and <tumnlr.com> domain names with intent to cause confusion. Complainant asserts that Respondent’s <tummblr.com> website directs consumers to a webpage featuring links to unrelated third-party websites and uses the <tumnlr.com> website to divert users to a website <lpcloudsvr302.com> which attempts to download computer viruses on the computers of an unsuspecting Internet user. See Complainant’s Annex S. The Panel observes that Respondent can collect pay-per-click or referral fees through its use of the disputed domain names. As the Panel finds that Respondent has attempted to divert Internet users from Complainant’s website to its own website for commercial gain, the Panel finds that Respondent has demonstrated bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 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)); see also Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
Fourthly, Complainant claims that Respondent’s redirection of users to a malware website proves bad faith. Complainant alleges that Respondent’s <tumnlr.com> website redirects users to the malware website <lpcloudsvr302.com> which attempts to download computer viruses on the computers of unsuspecting Internet users. See Complainant’s Annex S. In WordPress Foundation v. Ensei Tankado, FA1312001536197 (Nat. Arb. Forum Jan. 21, 2014), the panel found that the redirection of Internet users to a website with possible malware, “in and of itself, shows Respondent’s bad faith under Policy ¶ 4(a)(iii).”). Thus, the Panel finds that Respondent registered and is using the <tumnlr.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant contends that typosquatting alone is sufficient to prove bad faith. The Panel notes that Respondent adds a letter “m” to its <tummblr.com> domain name and substitutes the letter “b” for the letter “n” and its <tumnlr.com> domain name. The Panel finds typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the 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, as the Panel finds that Respondent’s <tummblr.com> and <tumnlr.com> domain names contain common typographical errors, the Panel holds that Respondent has engaged in typosquatting, showing bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Sixthly, Complainant asserts that Respondent registered the <tummblr.com> and <tumnlr.com> domain names with Complainant’s mark in mind. Complainant alleges that the original registrant of the disputed domain names registered the domain names in bad faith since the <tummblr.com> domain name was registered on November 2, 2008, the day after Complainant’s founder David Karp announced the launch of the improved <tumblr.com> website. Therefore, the Panel finds that, due to Respondent’s registration of the <tummblr.com> domain name immediately after the launch of Complainant’s newly improved <tumblr.com> website, 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 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).
Finally, 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 names using the TUMBLR mark and in view of the conduct that Respondent has engaged in when using them, Respondent registered and used the disputed domain names 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 <tummblr.com> and <tumnlr.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 24, 2014
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