Tumblr, Inc. v. Dragan Platic / Poste restante
Claim Number: FA1402001543767
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Dragan Platic / Poste restante (“Respondent”), Republic of Croatia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tumbolr.com> and <tumnblr.com>, registered with Hebei Guoji Maoyi (Shanghai) Ltd d/b/a HebeiDomains.com.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2014; the National Arbitration Forum received payment on February 14, 2014.
On February 17, 2014, Hebei Guoji Maoyi (Shanghai) Ltd dba HebeiDomains.com confirmed by e-mail to the National Arbitration Forum that the <tumbolr.com> and <tumnblr.com> domain names are registered with Hebei Guoji Maoyi (Shanghai) Ltd dba HebeiDomains.com and that Respondent is the current registrant of the names. Hebei Guoji Maoyi (Shanghai) Ltd dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) Ltd dba HebeiDomains.com 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@tumbolr.com, postmaster@tumnblr.com. Also on February 21, 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 19, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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
Policy ¶ 4(a)(i)
Policy ¶ 4(a)(ii)
Policy ¶ 4(a)(iii)
B. Respondent
Respondent did not submit a response. The Panel notes that the <tumbolr.com> domain name was registered on July 9, 2010, and the <tumnblr.com> domain name was registered on September 26, 2009.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 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 explains that it uses the TUMBLR mark in connection with microblogging and social media services. Complainant has registered the TUMBLR mark with the USPTO (e.g. Reg. No. 3,714,214 registered on Nov. 24, 2009). The Panel agrees that USPTO registration evidences sufficient rights under Policy ¶ 4(a)(i), regardless of where Respondent resides. See Scripps Networks, LLC v. chen wenjie, FA 1523127 (Nat. Arb. Forum Nov. 12, 2013) (“The Panel finds that Complainant’s USPTO registration establishes Complainant’s rights in the mark under Policy ¶ 4(a)(i), even despite the fact that Respondent appears to reside out of the United States.”).
Complainant next argues that Respondent’s <tumbolr.com> and <tumnblr.com> domain names are confusingly similar to the TUMBLR mark. Complainant argues that Respondent adds the irrelevant gTLD “.com” and then makes minor spelling errors to the TUMBLR mark. Complainant states that there is nothing else to differentiate the domain names beyond the insertion of a single extraneous letter that Internet users may mistakenly add when seeking Complainant’s <tumblr.com> domain name. The Panel agrees that these domain names merely add a single letter to the domain name along with the gTLD, and thus are confusingly similar to the TUMBLR mark under Policy ¶ 4(a)(i). See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain).
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 argues that Respondent is not commonly known by these domain names. Complainant further disavows any association, license, or authorization to Respondent for use of the TUMBLR mark in domain names. The Panel notes that the WHOIS record for the disputed domain names lists “Dragan Platic” of “Poste restante” as the registrant of record. The Panel agrees that the record provided contains no basis for a finding in favor of Respondent under Policy ¶ 4(c)(ii). 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).
Complainant next argues that Respondent has parked both of the <tumbolr.com> and <tumnblr.com> domain names so that they take Internet users through to hyperlink advertisement-filled websites. The Panel notes that both domain names appear to resolve to websites that contain random unrelated hyperlink advertisements. See Compl., at Attached Ex. O. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) the panel declined to find a Policy ¶ 4(c)(i) bona fide offering when the domain name was used for the purpose of promoting various commercial advertisements. The Panel here agrees that Respondent’s decision to allow hyperlink advertisement pages on the disputed domain names defeats any Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent’s bad faith can be traced to the fact it has offered to sell the domain names publically. Complainant specifically notes that the WHOIS data report included an explicit offer of the <tumbolr.com> domain name for $4,750, and the <tumnblr.com> domain name for $5,066. See Compl., at Attached Annex A. The Panel agrees that this evidence does indeed provide an inference as to Policy ¶ 4(b)(i) bad faith, as it suggests that Respondent seeks to profit from the sale of confusingly similar domain names. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Complainant also claims that Respondent has exhibited a pattern of bad faith domain name registration by registering two domain names, <tumbolr.com> and <tumnblr.com>, that clearly infringe on the TUMBLR mark. Past panels have found that the registration of multiple infringing domain names may serve as evidence of a pattern of bad faith registration. See, e.g., YAHOO! INC v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in the respondent's registration of two domain names incorporating the complainant's YAHOO! mark). The Panel in this case finds bad faith under Policy ¶ 4(b)(ii) because both of the <tumbolr.com> and <tumnblr.com> domain names are confusingly similar to the same TUMBLR mark.
Complainant further claims that Respondent is capitalizing on typosquatting by registering two domain names that do little more than encapsulate minor errors made by Internet users in reaching the <tumblr.com> website run by Complainant. In the case of Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) the panel agreed that the respondent had “typosquatted” in that it registered a domain name that added a gTLD along with a minor alteration to the spelling of the complainant’s mark—subtle enough to infer that the respondent was attempting to capitalize on the odds that Internet users would mistakenly enter the domain name to find the complainant’s websites. The Panel here agrees that adding a single letter into what is otherwise Complainant’s <tumblr.com> is evidence of Respondent’s Policy ¶ 4(a)(iii) bad faith through an inference of typosquatting.
Complainant also argues that Respondent undoubtedly had constructive or actual knowledge of Complainant’s rights in the TUMBLR mark when registering and using the <tumbolr.com> and <tumnblr.com> domain names. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumbolr.com> and <tumnblr.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: March 26, 2014
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