Tumblr, Inc. v. Anshul Goyal / Guava Softs Pvt Ktd / Guava Softs Pvt Ltd
Claim Number: FA1403001546767
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Anshul Goyal / Guava Softs Pvt Ktd / Guava Softs Pvt Ltd (“Respondent”), represented by Ankur Raheja of MCA LLB FCS OCA B.Com(H), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tumblr.biz> and <tumbler.biz>, registered with GODADDY.COM, INC.
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.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2014; the National Arbitration Forum received payment on March 4, 2014.
On March 5, 2014, GODADDY.COM, INC. confirmed by e-mail to the National Arbitration Forum that the <tumblr.biz> and <tumbler.biz> domain names are registered with GODADDY.COM, INC. and that Respondent is the current registrant of the names. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. 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 March 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@tumblr.biz and postmaster@tumbler.biz. Also on March 5, 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.
A timely Response was received and determined to be complete on March 25, 2014.
Complainant’s Additional Submission was received on March 31, 2014.
On April 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
Respondent’s Additional Submissions were received on April 4, 2014
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.
Complainant requests that the disputed domain names <tumblr.biz> and <tumbler.biz> be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that the disputed domain names are identical and confusingly similar to Complainant’s TUMBLR mark in which it has acquired rights through the established goodwill and reputation of the microblogging and social sharing platform at <tumblr.com> and its international portfolio of registered trademarks, details of which are set out below.
Complainant registered the <tumblr.com> domain name in June 2006 and commenced use of the TUMBLR mark in February 2007. Complainant’s business enjoyed early success and had over 75,000 registered users of the <tumblr.com> website prior to the registration of the disputed <tumbler.biz> domain name on August 29, 2009 and the subsequent registration of the disputed <tumblr.biz> domain name. Complainant’s business has continued to grow with exponential increase in the number of users.
Complainant submits that Respondent’s <tumblr.biz> domain name is identical to, and the <tumbler.biz> domain name is confusingly similar to Complainant’s TUMBLR trademark, arguing that the <tumblr.biz> domain name includes Complainant’s mark in its entirety while the <tumbler.biz> adds the letter “e,” thereby creating a common misspelling of Complainant’s mark. Both disputed domain names also add the generic top-level domain (“gTLD”) “.biz.”
Complainant submits that Respondent does not have any rights or legitimate interests in the disputed domain names: Respondent registered the domain name <tumblr.biz>, which exactly replicates Complainant’s TUMBLR mark on March 25, 2011; shortly thereafter, on or about January 16, 2012, Respondent acquired the <tumbler.biz> domain name.
The disputed domain names resolve to websites that offer personalized e-mail services established by Respondent at the <email.biz> address.
Complainant submits that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its mark in any way. The disputed domain names resolve to a parked page featuring links for Respondent’s commercial website on which Respondent operates an e-mail service called Email.biz with options to register premium personalized e-mail addresses with extensions such as “@tumbler.biz.” Respondent does not have Complainant’s permission to use its TUMBLR mark in such extensions for e-mail addresses or otherwise and is attempting to capitalize on the common typographical error of the word “tumblr” caused by the proximate placement of letters on a QWERTY keyboard.
Complainant further submits that Respondent registered and is using the <tumblr.biz> and <tumbler.biz> domain names in bad faith.
Respondent was an unsuccessful respondent in a prior action under the Policy in which the panel ordered the transfer of the domain name in issue to the complainant. Complainant submits that this demonstrates Respondent’s pattern of bad faith registration and use of the disputed domain names.
The web page to which the disputed <tumblr.biz> and <tumbler.biz> domain names resolve redirects Internet users to Respondent’s <email.biz> website. The Internet services which Respondent provides are in the same nexus as Complainant’s services, and therefore constitutes a competing commercial website. Complainant alleges that Respondent’s use and acquisition of the <tumbler.biz> domain name to redirect Internet users to a competing third-party website is classic typosquatting.
Complainant alleges that Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services or for any legitimate non-commercial or fair use. Respondent’s registrations of the disputed domain names are intended to divert Internet users seeking Complainant’s services to Respondent’s website for the purpose of financial gain by exploiting the goodwill and recognition Complainant gained in its TUMBLR mark, and thus constitutes bad faith registration. See Yahoo! Inc. v. JOR9.COM / Rezq, FA1211001471070 (Nat. Arb. Forum Jan. 9, 2013).
Complainant alleges that Respondent had knowledge of Complainant’s TUMBLR mark prior to registering the disputed domain names because Complainant’s mark is registered throughout the world, the mark is recognized by online consumers throughout the world, and Respondent appears to have extensive knowledge of the global domain name industry.
B. Respondent
Respondent submits that the <tumbler.biz> domain name is comprised of the generic term “tumbler” which is commonly used in the English language and has a separate meaning from Complainant’s TUMBLR mark.
Respondent began a unique e-mail service business, located at <email.biz>, in 2012. Respondent owns over 22,000 domain names for the legitimate use of providing the domain names as e-mail extensions. Further, the <tumblr.biz> and <tumbler.biz> domain names have never been used to offer any competitive services or pay-per-click advertisements of any kind. Therefore, Respondent submits that he is operating a legitimate business through the use of the disputed domain names.
Respondent further submits that he did not register and is not using the <tumblr.biz> and <tumbler.biz> domain names in bad faith; that he is operating a legitimate business in good faith; that the <tumbler.biz> domain name was registered in good faith as a generic term and not for the value attached to any trademark associated with the term through typosquatting or any other means.
Many businesses around the world which include the word “tumbler” in their names, have incorporated the word in corresponding domain names, including a Tervis Tumblers (Registered Trademark) in USA, who owns domain name <tumbler.com>.
Respondent denies that Complainant’s TUMBLR mark is popular in India or South East Asia, and submits that therefore there is no basis for a finding that Respondent had prior knowledge of Complainant’s business prior to registering the <tumblr.biz> and <tumbler.biz> domain names. For example, Complainant has exhibited an article about itself from an Indian website which had zero comments on it two years after the publishing date, even though the website on which the article was published had 6,000 “likes” on Facebook. Complainant has only one trademark from this region in Japan.
Similar domain names held by the Respondent are: <crockery.biz>, <cup.biz>, <bowl.biz>, <plate.biz>, <plates.biz>, <tray.biz>, <trays.biz>, <teapot.biz>, <teaset.biz>, <teasets.biz>, <saucers.biz> and <teaspoons.biz>, WHOIS details of which are set out in an annex to the Response.
Respondent submits that he owns a portfolio of 22,000 <.biz> domain names which have been acquired over many years based upon research of numerous factors. And it is not possible for Respondent or his team to either have knowledge or keep track of registration of any keyword used in a domain name as a trade mark in different countries. It is impossible to verify the individual domain names after they have been registered, due to the vast domain portfolio. The rare proceedings against Respondent over the years point to the fact that mostly general domain names have been acquired, such as <tumbler.biz>, but there is always a chance that few domain names such as <tumblr.biz>, which may sound similar to a registered trademark registered globally, may enter the portfolio.
Complainant’s trademark, TUMBLR, was brought to the notice of Respondent in September/October 2013. Respondent offered to hand over the <tumblr.biz> domain name in November 2013 on payment of out-of-pocket expenses but refused to transfer the other dictionary-based <tumbler.biz> domain name. Thereafter, Respondent heard no further from Complainant until he was notified of this Complaint.
Respondent states that the WHOIS information about the disputed domain names is incorrect and in particular the disputed domain name <tumbler.biz> was registered as early as June 12, 2005 as shown in archive information from DomainTools.com.
C. Complainant’s Additional Submissions
Complainant submits that the services offered by Respondent, namely, a personalized e-mail service offered by Email.biz directly overlap with services offered by the Complainant. Specifically, Complainant provides personalized e-mail addresses with the @tumblr.com extension to its users in order for a user to publish content to his/her individual blog via e-mail or a mobile phone. Since Respondent offers nearly identical @tumblr.biz and/or @tumbler.biz personalized email services for a fee, use of the <tumblr.biz> and <tumbler.biz> domain names to direct traffic intended for Complainant’s <tumblr.com> website, violates Policy ¶ 4(a)(ii). See Yahoo! Inc. v. Mohit Arora / E-squad Techs., FA1311001531666 (Nat. Arb. Forum December 31, 2013) (“Prior panels have held that a respondent’s use of a disputed domain name to provide competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.”).
Respondent’s use of the disputed domain names to divert unsuspecting users to a parked webpage with links to Respondent’s commercial website, Email.biz, is not legitimate noncommercial or fair use. Use of the disputed domain name <tumblr.biz> incorporating Complainant’s exact mark with the .biz gTLD does not amount to bona fide use or a legitimate interest without proof of Complainant’s permission or authorization.
Similarly, Respondent does not use the <tumbler.biz> domain name for the provision of services pertaining to any generic meaning of the word “tumbler” as claimed in the Response, but rather uses the domain name to provide personalized e-mail services directly competing with the services offered under the TUMBLR mark. Such use of a dictionary word, which is confusingly similar to Complainant’s famous TUMBLR mark, for competing services to those provided under Complainant’s famous trademark is neither legitimate nor fair. See Apple Inc. v. Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (“Complainant’s [APPLE] mark is undeniably distinctive for computers and the other products and services offered by Complainant… however, ‘apple’ is a dictionary word and not necessarily distinctive for apples, fruit, groceries, or similar produce. Similarly, the four-letter sequence that comprises the disputed domain name [www.appl.com] could be an abbreviation for other common words, such as “appliance” or “application”. What makes Respondent’s conduct obvious cybersquatting is the similarity of the disputed domain name to the APPLE mark combined with competitive use, sometimes called ‘targeting’ Complainant and its marks.”).
Addressing Respondent’s defense that the TUMBLR mark “has never been famous in India, so as to prove any bad faith at the time of registration of Tumblr.biz.,” Complainant submits that the proper inquiry is not whether Complainant’s mark was famous in the country in which the Respondent is located; rather, the proper inquiry is whether Respondent knew of Complainant’s rights in its trademark prior to registering an identical or confusingly similar domain name and with intent to cause confusion.
In this case, given (i) the description of “tumblr” displayed on the Respondent’s <tumblr.biz> website; (ii) the Internet-related services offered by Respondent, (iii) the explanation of the domain name-picking process offered by the Respondent, (iv) the fact that the Respondent is familiar with information technology and Internet services, and (v) that Respondent registered the domain with a U.S. registrar and provides its contents in English, it is implausible that Respondent was not aware of the TUMBLR mark or the <tumblr.com> website prior to registration of the <tumblr.biz> website.
Respondent included the following statements on its <tumblr.biz> website directly tying its services to those of Complainant: “Welcome to tumblr.biz… 1. Its also an virus. 2. It's means - The end of your social life. 3. A place where you can post anything and no one will judge you for it.” Respondent’s use of the phrases “the end of your social life” and “a place where you can post anything” clearly evidence Respondent’s knowledge of services offered under Complainant’s TUMBLR mark, thereby invalidating Respondent’s denial “that it anywhere indicated [on the disputed domain names] the knowledge of exact ‘Tumblr.com’ website or its popularity.”
Respondent alleges that the “different Domain Names of single extensions have been acquired after prudent research by the Respondent’s research team, based upon various different factors…” Complainant argues that given the Internet-related services provided by Respondent, and that fact that Respondent’s definitions cited in the Response came from the Internet website Dictionary.com, it is safe to assume that “prudent research” involves searching the proposed term through an online search engine. Since Complainant received substantial media coverage for the novel services offered on Complainant’s <tumblr.com> website and the rapid growth of the <tumblr.com> website, there is no doubt that searching for “tumblr” on the Internet would have provided a plethora of results alerting Respondent to Complainant’s TUMBLR mark and the <tumblr.com> website.
Complainant further argues that Respondent registered the <tumblr.biz> and <tumbler.biz> domains with Godaddy.com, LLC, a U.S. based registrar and provides its services in English. Accordingly, it is simply impossible that Respondent was unaware of the Complainant’s TUMBLR Mark and/or <tumblr.com> website.
As indicated in a case relied on by Respondent, “[w]hen a domain name changes hands, the recording of the new name on the register constitutes a fresh registration under the Policy notwithstanding the fact that the WhoIs database will still show the original creation date.” See Marden Grp. B.V. v. Tucows.com.co, D2011-1061 (WIPO August 24, 2011). As such, according the archived WHOIS information for both domain names at issue, Respondent was first listed as the registrant of the <tumblr.biz> domain name in October 2011, whereas Respondent acquired the disputed <tumbler.biz> domain name in January 2012.
Respondent’s contentions that the disputed <tumblr.biz> domain name was obtained as a misspelling of <tumbler.biz>, is belied by the evidence which establishes that Respondent acquired the <tumblr.biz> first in 2011 which was well after Complainant’s mark had been registered and received worldwide notoriety.
Complainant refers to material produced by Respondent as being archived WHOIS information on DomainTools.com which indicates that:
a) the <tumblr.biz> domain was registered on August 7, 2008 by a registrant located in Hamburg Germany, transferred on or around January 9, 2010 to a registrant located in Moscow, Russian Federation and transferred to Respondent on or around October 24, 2011, and
b) the <tumbler.biz> domain was registered on June 12, 2005 by a registrant tumbler, located in New York, United States, transferred on or around March 5, 2008 to a registrant located in Fukuoka, Japan, subsequently transferred to a registrant located in Phoenix, Arizona on or around August 30, 2009, then transferred to a registrant in Bangalore, India on or around November 6, 2011, and ultimately transferred to Respondent on or around January 16, 2012,
but argues that the evidence makes it quite clear that Respondent knew of Complainant’s TUMBLR mark and the services offered under the TUMBLR mark and registered the <tumblr.biz> domain to trade off the goodwill Complainant acquired in its TUMBLR mark.
D. Respondent’s Additional Submissions
In his Additional Submissions, Respondent argues that Complainant’s Additional Submissions are an attempt to rehabilitate the Complaint and to introduce new arguments and claims, which has the effect of amending the original Complaint in violation of Rule 7(f) of Supplemental Rules. Most of the allegations made in Complainant’s Additional Submissions were already addressed in the Response, however the new allegation that the services rendered by Respondent compete with the Complainant is denied. Nothing of sort was provided in the original Complaint and it appears to be an attempt to amend the Complaint. Respondent submits that Complainant renders blogging services only, while the Respondent is rendering e-mail services to its clients, who are in different nature of business and to allege otherwise in an attempt to mislead this Panel.
Complainant’s denial of the importance of the fact, whether Complainant's mark was famous in India or not, is deliberate attempt to ignore the real truth about the website popularity in India. Because if Tumblr was really famous and liked in India, Yahoo India would have provided link to the same upon its <in.yahoo.com> homepage, after its acquisition in 2013 and furthermore, Complainant would have filed for an Indian trademark registration as well.
The fact that Respondent is in the business of offering Internet related services and familiar with information technology and his registration of domain names with a U.S. registrar does not prove the knowledge of Complainant’s trademark. It is submitted that millions of websites exists on the Internet and thousands of trademark registrations exist in respect of those websites in different jurisdictions, whose knowledge one cannot be expected to have.
Complainant is the owner of and has rights in the TUMBLR trademark through its Internet business established at <tumblr.com> in 2007 and the following portfolio of registered trademarks:
United States Trademark TUMBLR Registration Number 3,714,214, first used on February 19, 2007 filed October 27, 2008 registered on November 24, 2009 in International Classes 41 and 45;
United States Trademark TUMBLR Registration No. 4,319,728, first used April 27, 2007, filed February 13, 2012, registered on May 28, 2013 in International Classes 9, 35, 38 and 42;
United States Trademark TUMBLR & Design, Registration No. 4,341,002 first used September 15, 2009, filed March 31, 2012, registered on May 28, 2013 in International classes 9, 35, 38, 41, 42, and 45;
United States Trademark TUMBLR Registration No. 4,341,003 first used May 27, 2008, filed March 31, 2008 in International Classes 9, 35, 38, 41, 42 and 45.
Community Trade Mark TUMBLR Registration Number 010668631, filed February 23, 2012 in International Classes 9, 35 38, 41, 42, 45;
Community Trade Mark TUMBLR. Registration Number 011111069, filed August 10, 2012 in International Classes 9, 35, 38, 41, 42, 45;
And further registrations in Australia, Japan and New Zealand:
Australia Trade Mark Registation No. 1295070, filed April 17, 2009, International Classes 41 and 45;
Japan Trade Mark Registration No. 5300691, filed April 17, 2009 in International Classes 38, 41 and 45; and
New Zealand Trade Mark Registration No. 805103, deemed registration date October 22, 2009, in International Classes 41 and 45.
Complainant enjoyed rapid and remarkable success prior to the registration of the disputed domain names.
Respondent is the registrant of the disputed domain names and is using them to direct Internet traffic to his business at <email.biz>, which he established in 2012 offering premium personalized e-mail addresses to the public.
The registrar has confirmed in response to the NAF verification request that the disputed domain name <tumbler.biz> registered August 29, 2009 and the domain name <tumblr.biz> was registered March 25, 2011.
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.
Respondent has argued that Complainant has raised new arguments in its Additional Submissions which should not be considered. This Panel finds that while Complainant’s Additional Submissions expressly allege that Respondent is a competitor, it had already argued that both parties’ business activities were within the same “nexus” and so the point was not new entirely. In any event this decision does not turn on whether the parties are in competition.
Complainant has provided the abovementioned evidence that it has acquired extensive and valuable rights in the TUMBLR trademark.
This Panel accepts Complainant’s submissions that the disputed <tumblr.biz> domain name is identical to Complainant’s TUMBLR mark, and the <tumbler.biz> domain name is confusingly similar to Complainant’s mark.
The <tumblr.biz> domain name includes Complainant’s TUMBLR mark in its entirety, while the <tumbler.biz> adds the letter “e,” creating what is likely to be a common misspelling of Complainant’s mark, given the aural identity and visual similarity between Complainant’s TUMBLR mark and the English language word “tumbler”.
In the present case the addition of the single letter is not sufficient to distinguish the <tumbler.biz> domain name from the TUMBLR trademark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
It is well accepted that the addition of a gTLD extension is irrelevant for the purposes of the comparison of the disputed domain names and Complainant’s mark. 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.”).
This Panel finds that Complainant has therefore satisfied the first element of the test in Policy ¶ 4(a)(i).
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 has satisfied this Panel that it is the owner of substantial rights in the TUMBLR trademark; that the TUMBLR trademark is a coined word; and that Complainant has not given Respondent permission to use the TUMBLR trademark or any similar mark. Furthermore Complainant has made out a prima facie case that Respondent is not commonly known by the name “tumblr” or “tumbler.”
Respondent has argued that he is using the disputed domain names for the purposes of his legitimate e-mail business and so has a legitimate interest in the domain names. He submits that he also owns the similar domain names: <crockery.biz>, <cup.biz>, <bowl.biz>, <plate.biz>, <plates.biz>, <tray.biz>, <trays.biz>, <teapot.biz>, <teaset.biz>, <teasets.biz>, <saucers.biz> and <teaspoons.biz>. An analysis of the WHOIS details submitted in the Response shows that while some of them were registered as early as 2004 and 2005, Respondent acquired all of them in the years 2011, 2012 and 2013. Furthermore, he has not provided any evidence of his use of these domain names or how he may be using them, if at all. So his acquisition of these similar domain names after he became aware of Complainant’s business and reputation in TUMBLR, does not assist him in the discharge of the burden of proof that he has rights or legitimate interest in the similar disputed domain names.
Respondent denies that he was aware of Complainant’s business when the disputed domain names were registered and acquired by him. He has submitted that the WHOIS information about the disputed domain names is incorrect and in particular submits that the disputed domain name <tumbler.biz> was created on June 12, 2005 prior to the establishment of Complainant’s business. The registrar has, however, confirmed in response to the NAF verification request that the disputed domain name <tumbler.biz> was created on August 29, 2009 and the domain name <tumblr.biz> was created on March 25, 2011.
This Panel finds on the balance of probabilities that the registrar’s WHOIS information is correct as the WHOIS data is such a fundamental part of the domain name system.
The initial creation of both of the disputed domain names therefore post-date the establishment of Complainant’s business and reputation and this Panel finds that on the balance of probabilities both of the disputed domain names were chosen and registered in bad faith to knowingly take advantage of Complainant’s goodwill and reputation to divert Internet users away from Complainant’s website for the commercial purposes of the registrant.
Even if this were not the case, the manner in which Respondent has used the disputed domain names would not be capable of establishing rights or legitimate interests in them. The disputed domain names were each registered subsequent to the establishment of Complainant’s business which was launched in 2007.
This Panel finds that on the balance of probabilities Respondent chose and registered the <tumbler.biz> mark in order to take predatory advantage of Complainant’s fast-growing reputation and goodwill so as to divert customers to its web-mail services. Such use, being in bad faith, cannot by definition be the basis for the acquisition of any rights or legitimate interest by Respondent. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Therefore, whether or not the Respondent’s business competes with Complainant, Respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
This Panel also rejects Respondent’s submissions that there is a similarity between his position and that of businesses which incorporate the word “tumbler” in their names and have incorporated Tumbler in corresponding domain names. There is no evidence that Respondent has ever been known as”tumblr” or “tumbler.”
This Panel finds that Complainant has therefore satisfied the second element of the test in Policy ¶ 4(a)(ii).
As discussed above, this Panel finds that the initial creation of both of the disputed domain names post-date the establishment of Complainant’s business and reputation at a time when Complainant’s TUMBLR business was already enjoying considerable international success.
This Panel therefore finds on the balance of probabilities that both of the disputed domain names were registered in bad faith to knowingly take advantage of Complainant’s goodwill and reputation to divert Internet users away from Complainant’s website for the purposes of the registrant in each case.
In these circumstances, therefore, it is not necessary to decide whether Respondent’s acquisition of the disputed domain name <tumbler.biz> in January 2012 was a “registration” for the purposes of Policy ¶ 4(a)(iii).
It is improbable that Respondent was not aware of Complainant’s rights or interests prior to the registration of the <tumblr.biz> domain name and the acquisition of the <tumbler.biz> domain name. This is particularly the case given that he has a very significant investment in a domain name business with over 22,000 domain names. On the balance of probabilities would have been aware of Complainant’s very successful new business. Also he would have come across Complainant’s <tumblr.com> domain name in the course of the extensive research that he claims to have carried out for his business.
Additionally, while a domain name consisting of a generic dictionary word such as “tumbler” could be innocently registered and used under the Policy, in the present case Respondent is using both <tumblr.biz> and <tumbler.biz> domain names in the same manner and for the same purpose and does not make any distinction with regard to how he is using the domain name that is identical to Complainant’s coined-word trademark and the domain name which he argues is a generic dictionary word.
The word “tumbler” is the phonetic equivalent of Complainant’s TUMBLR mark. the addition of the letter “e” which is next to the letter “r” on the QWERTY keyboard, which indicates that Respondent is engaged in typosquatting by its particular use of the domain name.. 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.” Past panels have determined that typosquatting is in and of itself evidence of bad faith. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). It is more probable however that Respondent acquired the <tumbler.biz> domain name because of its aural similarity to Complainant’s mark.
This Panel finds that Complainant has therefore also satisfied the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumblr.biz> and <tumbler.biz> domain names be TRANSFERRED from Respondent to Complainant.
James Bridgeman, Panelist
Dated: April 16, 2014
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