Tumblr, Inc. v. Osbil Technology Ltd. / Ali Bayram / Bireysel / Mehmet Ahmet / UFUK DEMIRAY / Erdem Mutlu / Erdem MUTLU / Rezan Orhan
Claim Number: FA1704001727583
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Osbil Technology Ltd. / Ali Bayram / Bireysel / Mehmet Ahmet / UFUK DEMIRAY / Erdem Mutlu / Erdem MUTLU / Rezan Orhan (“Respondent”), Cyprus.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tumblrtakipcihilesi.com>,<tumblrtakipci.com>, <tumblrtakipciler.com>, <tumblrbegenitakip.com>, <tumblrhile.com>, <freetumblrfollowers.com>, <freetumblrtakipci.com>, <tumblrtakip.com>, <tumblrtakipci.net>, and <tumblrturkiye.org>, registered with 1&1 Internet SE; FBS Inc.; GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com; and Realtime Register B.V.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2017; the Forum received payment on April 18, 2017.
On Apr 19, 2017; Apr 20, 2017; Apr 22, 2017; Apr 26, 2017, 1&1 Internet SE; FBS Inc.; GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com; Realtime Register B.V. confirmed by e-mail to the Forum that the <tumblrtakipcihilesi.com>,<tumblrtakipci.com>, <tumblrtakipciler.com>, <tumblrbegenitakip.com>, <tumblrhile.com>, <freetumblrfollowers.com>, <freetumblrtakipci.com>, <tumblrtakip.com>, <tumblrtakipci.net>, and <tumblrturkiye.org> domain names are registered with 1&1 Internet SE; FBS Inc.; GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com; and Realtime Register B.V., and that Respondent is the current registrant of the names. 1&1 Internet SE; FBS Inc.; GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com; and Realtime Register B.V., have verified that Respondent is bound by the 1&1 Internet SE; FBS Inc.; GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com; and Realtime Register B.V. registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2017 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@tumblrtakipcihilesi.com, postmaster@tumblrtakipci.com, postmaster@tumblrtakipciler.com, postmaster@tumblrbegenitakip.com, postmaster@tumblrhile.com, postmaster@freetumblrfollowers.com, postmaster@freetumblrtakipci.com, postmaster@tumblrtakip.com, postmaster@tumblrtakipci.net, and postmaster@tumblrturkiye.org. Also on May 15, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Complainant is the exclusive owner of the service marks and trademarks “TUMBLR” and “tumblr” (hereinafter “Complainant’s Mark”, the “TUMBLR Mark” or the “Mark”), the trade name TUMBLR, as well as the domain name TUMBLR.COM. In continuous use since at least as early as 2007, Complainant’s Mark is used in connection with a microblogging and social sharing platform. Complainant’s Mark has acquired widespread recognition, as evidenced by the fact that the TUMBLR.COM domain ranks 35th worldwide and 29th in the US in terms of reach according to comScore.com. As of December 16, 2015, TUMBLR.COM had an estimated 550 million unique monthly users, and as of January 2017, the social networking site had surpassed 332.8 million blog accounts, up from 275.9 million in the previous year. Finally, as of April 10, 2017, the Tumblr platform hosts over 343 million blogs containing more than 147.6 billion posts.
2. As a result of Tumblr’s extensive investment and promotion, Tumblr’s services and the TUMBLR Mark enjoy “a substantial degree of public recognition.” Tumblr, Inc. v. Thomas Kimber, D2012-0609 (WIPO May 9, 2012); see also Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (“It is also recognized that the Complainant has continuously and extensively used, advertised, marketed and promoted the Complainant's mark both within the United States and in foreign countries.”); Tumblr, Inc. v. Jingsheng Feng, D2013-0454 (WIPO May 10, 2013) (“It appears to the Panel that [TUMBLR] is a coined term which is not part of the English language and is quite distinctive for the Internet based service provided by the Complainant. Based on the very substantial numbers of users and visitors to the Complainant's website at ‘www.tumblr.com’ it is also reasonable to assume that it enjoys a wide degree of repute.”)
3. In addition to Complainant’s common law rights, Complainant’s name and Mark are protected in countries around the world with numerous trademark registrations for the TUMBLR Mark in the United States and Turkey, including, but not limited to the following registrations:
a. U.S. Trademark Reg. No. 3,714,214, first used February 19, 2007, filed October 27, 2008, issued November 24, 2009, covering electronic publishing services and Internet based social networking services in International Classes 41 and 45.
b. U.S. Trademark Reg. No. 4,319,728, first used April 27, 2007, filed February 13, 2012, issued April 16, 2013, covering computer software, advertising and marketing services, computer services and on-line non-downloadable software in International Classes 9, 35, 38 and 42.
c. U.S. Trademark Reg. No. 4,341,002, first used September 15, 2009, filed March 31, 2012, issued May 28, 2013, covering computer software, advertising and marketing services, computer services, electronic publishing services, on-line non-downloadable software, and internet-based social networking services in International Classes 9, 35, 38, 41, 42 and 45.
d. U.S. Trademark Reg. No. 4,341,003, first used May 27, 2008, filed March 31, 2012, issued May 28, 2013, covering computer software, advertising and marketing services, computer services, electronic publishing services, on-line non-downloadable software and internet- based social networking services in International Classes 9, 35, 38, 41, 42 and 45.
e. Turkey Trademark Reg. No. 2013 80953, filed September 27, 2013, issued May 31, 2015, covering computer software, advertising and marketing services, computer services, electronic publishing services, on-line non-downloadable software and internet-based social networking services in International Classes 9, 35, 38, 41, 42 and 45.
f. Turkey Trademark Reg. No. 2013 80942, filed September 27, 2013, issued July 31, 2015, covering computer software, advertising and marketing services, computer services, electronic publishing services, on-line non-downloadable software and internet-based social networking services in International Classes 9, 35, 38, 41, 42 and 45.
4. Complainant also owns multiple registrations for the TUMBLR Mark outside the United States and Turkey, including, but not limited to, European Trade Mark Nos. 008227209 (Filed April 20, 2009, International Classes 41, 45), 010668631 (Filed February 23, 2012, International Classes 9, 35, 38, 42) and 011111069 (Filed August 10, 2012, International Classes 9, 35, 38, 41, 42, 45); Australia Trade Mark Registration No. 1295070 (Filed April 17, 2009, International Classes 41, 45); Japan Trademark Registration No. 5300691 (Filed April 17, 2009, International Classes 38, 41, 45); New Zealand Trademark Registration No. 805103 (Deemed Registration Date of October 22, 2009, International Classes 41, 45); and China Trademark Registration Nos. 10568065 (Filed March 5, 2012, International Class 38), 10568066 (Filed March 5, 2012, International Class 35), 10568067 (Filed March 5, 2012, International Class 9), 9168973 (Filed March 3, 2011, International Class 45), 9168974 (Filed March 3, 2011, International Class 41).
CONSOLIDATION OF RESPONDENTS: Rules 3(c), 10(e))
5. It is well established that “consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances of a given case indicate that common control is being exercised over the disputed domain names or the websites to which the domain names resolve.” Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to everyday in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo, D2012-2212 (WIPO Feb. 8, 2013); see also C & J Clark International Limited v. Lin Lin, Lin Chang, D2014-0214 (WIPO April 14, 2014). In Guccio Gucci S.p.A, supra, the Panel concluded that sufficient evidence had been “adduced to enable the conclusion to be drawn that common control is being exercised over the disputed domain names” based on the following evidence presented in support of the consolidation request:
“(1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers; (2) The use of the same or similar names in the registration information; (3) Resolving disputed domain names to the same or similar Websites; (4) Using the same domain name servers; (5) Using the same registrars; and (6) Close similarity between the disputed domain names, each of which incorporates the Trade Mark in its entirety in conjunction with non-distinctive, generic or geographical terms.” Id.
(1) Taking into account each of the above-listed factual similarities cited in Guccio Gucci S.p.A, Complainant contends that the Infringing Domain Names are commonly controlled by the same individual or network of individuals in Turkey (collectively, the “Respondent”). As an initial matter, all of the Infringing Domain Names include the entirety of Complainant’s TUMBLR trademark with the addition of generic or descriptive Turkish terms, which include “takip,” “takipci,” “takipciler,” and “takipci hilesi”, which translate to “follow” or “followers” in English, and the terms “hile” and “turkiye”, which translate to “cheat” and “Turkey,” respectively. Additionally, six of the ten (10) Infringing Domain Names previously or currently resolve to similar websites offering artificial Tumblr followers to Tumblr users (hereinafter referred to as “Tumblr Follower Sites”), and as of the date of this Complaint, five (5) of the ten (10) Infringing Domain Names resolve to inactive webpages, two of which resolve to the exact same webpage displaying the name AHMET BUĞRA BULUT3. Furthermore, the following Infringing Domain Names share the same registrant information, same IP address, registrar, name server and/or icons appearing in the websites’ browser tabs:
· Infringing Domain Name Nos. 1 and 2 have the same icon appearing in the websites’ browser tabs;
· Infringing Domain Name Nos. 2 and 3 have the same registrar;
· Infringing Domain Name Nos. 5 and 6 share the same IP address, 212.68.33.2;
· Infringing Domain Name Nos. 5-7 share the same name server, Hasmobilya.com;
· Infringing Domain Name Nos. 6-9 have the same registrar;
· Infringing Domain Name Nos. 6-10 have same registrant, Osbil Technology Ltd;
· Infringing Domain Name Nos. 7-10 share the same IP address, 185.50.70.10;
· Infringing Domain Name Nos. 8-10 share the same name server, and have the same icon appearing in the websites’ browser tabs; and
· Infringing Domain Name Nos. 4 and 10 have the same registrar.
6. Finally, as further evidence of common control (and described in further detail in subparagraph (21) below), the name depicted on the inactive webpages for Infringing Domain Name Nos. 8 and 9 appears to be the operator of Infringing Domain Name No. 1.
In a similar case where most of the disputed domain names were used for similar INSTAGRAM web viewers, and shared other registration information, the Panel held that it was “satisfied that the disputed domain names (and the websites to which they resolve) are subject to common control and that the consolidation would be fair and equitable to all parties.” Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, D2016-2382 (WIPO Apr. 7, 2017); see also Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, D2016-1710 (WIPO Oct. 12, 2016) (holding use of domain names for the same type of web viewer sites is sufficient evidence of commonality).
7. Based on the foregoing (also described in further detail below), Complainant requests consolidation of Respondents on grounds that a single Respondent operates or controls all of the Infringing Domain Names. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, D2010-0281 (WIPO May 18, 2010) (Panel determined that consolidation of Respondents is procedurally efficient and equitable to all the parties based on the presence of a common administrative or technical contact, or other instances of commonality in the registration information such as the same postal address or email address; where the content of their websites were substantially identical; as well as other circumstances in the record indicating that Respondents are related.).
LANGUAGE OF PROCEEDINGS: Rule 11
8. The “spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.” Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014) (finding that although the registration agreement was in Korean, the administrative proceeding would be conducted in English because, inter alia, (1) the disputed domain contained an English word; (2) Respondent registered the disputed domain in connection with the “.com” generic Top-Level Domain, which primarily targets English-speaking Internet users; and (3) the complainant was unable to communicate efficiently in Korean).
9. To the best of Complainant’s knowledge, the language of the registration agreement applicable to the TUMBLRTAKIPCI.COM registered through the registrar FBS, Inc. is Turkish. The language of the registration agreements for the remaining Infringing Domain Names is English. Since Respondent agreed to and accepted registration agreements in English for all of the Infringing Domain Names, except one, it’s clear that Respondent is able to proceed in English and is aware that UDRP proceedings will be conducted in English. See Instagram, LLC v. Sedat Das, Arda Arda, Domain Admin, whoisprotection biz, Domain Admin Domain Admin, whoisprotection biz, D2016- 2382 (WIPO Apr. 7, 2017) (“Although the language of the registration agreement of 10 disputed domain names is Turkish (with the remaining disputed domain names having English registration agreements), the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request a Turkish translation of the Complaint…”).
10. Furthermore, since Complainant is a US-based company that conducts its daily operations in English, it would be “cumbersome and to [Tumblr’s] disadvantage to be forced to” conduct this proceeding in Turkish. Wordpress Foundation v. duanxiangwang, D2011-0836 (WIPO July 6, 2011). The Infringing Domain Names also incorporate Complainant’s TUMBLR Mark which is a highly distinctive term in English and, until the launch of Complainant’s services, the word “Tumblr” was not a term used in normal parlance. See Tumblr, Inc. v. LinYu, Xiamen eName Technology Co., Ltd. / NAME AVEN, D2014-0410 (WIPO May 19, 2014) (“The term ‘Tumblr’ is a coined word, having no meaning other than as a trademark denoting the goods and services of the Complainant.). Finally, TUMBLRTAKIPCI.COM is registered in connection with the “.com,” Top- Level Domain, which primarily targets English-speaking Internet users, and the advertisements displayed on TUMBLRTAKIPCI.COM are displayed in English. See Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014) (finding that “.com” generic Top-Level Domains primarily target English-speaking Internet users); and Swarovski Aktiengesellschaft v. wutianhao, D2010-0503 (WIPO May 24, 2010) (conducting proceeding in English in part because the website displayed at the infringing domain name “displays the contents in English.”). Since Respondent is clearly capable of corresponding in English, and because Tumblr’s counsel cannot correspond in Turkish without enduring cumbersome and costly efforts, in the spirit of fairness under paragraph 11, Complainant requests the language of the proceedings be English.
FACTUAL AND LEGAL GROUNDS: Rule 3(b)(ix)
A. Complainant’s Globally-Recognized TUMBLR Mark and Service
11. The term “TUMBLR” is a coined word, having no meaning other than as a trademark denoting the goods and services of Tumblr. Complainant’s TUMBLR platform allows individuals to post and share content (such as text, photos, quotes, links, audio, and videos) to a unique Internet- accessible blog. Posts can be made from one’s browser, phone, desktop, or email.
12. Tumblr.com has been one of the fastest growing social networking websites. By the end of 2011, the Tumblr.com website had over 15.9 million monthly U.S. visitors. (comScore.com article titled “State of the U.S. Social Networking Market: Facebook Maintains Leadership Position, but Upstarts Gaining Traction” dated December 23, 2011). Tumblr has developed worldwide recognition and as early as 2011 was featured in media articles throughout the United States, the United Kingdom, and around the world. (comScore.com article titled “It’s a Social World: Social Networking Leads as Top Online Activity Globally, Accounting for 1 in Every 5 Online Minutes” dated December 21, 2011). By October 2013, Tumblr.com had over 36 million unique visitors in the United States alone and continues to grow with an estimated 550 million unique monthly users as of December 2015. As of April 2017, an average of 35.2 million posts are added to Tumblr.com each day.
13. Since 2007, Tumblr has registered many domain names containing the TUMBLR Mark including, but not limited to, <tumblr.com>, <tumblr.ae>, <tumblr.co>, <tumblr.de>, <tumblr.fr>, <tumblr.gr>, and <tumblr.org>.
14. To date, Tumblr has prevailed in UDRP actions involving more than forty-five domain names that were identical or confusingly similar to the TUMBLR Mark, including but not limited to <rumblr.org>, <tumblkr.com>, <tymblr.com>, <tumbklr.com>, <trumblr.com>, <thumblr.com>, and <ttumblr.com>.
15. All of the Infringing Domain Names were registered during the period between March 15, 2016, and February 16, 2017, long after the TUMBLR mark became internationally famous and several years after the September 27, 2013, registration date of the TUMBLR Mark in Turkey.
B. Respondent’s Infringing Acts
16. As mentioned in the Consolidation of Respondents section above, all of Respondent’s Infringing Domain Names include the entirety of Complainant’s TUMBLR trademark with the addition of generic or descriptive terms in English and Turkish. Additionally, the Infringing Domain Names either resolve to Tumblr Follower sites (1) are registered by the same entity; (2) share the same IP address and name servers; (3) share the same registrar; and/or (4) have the same icon appearing in the respective websites’ browser tab. The earliest of the Infringing Domain Names was registered on March 15, 2016, after Complainant extensively used and registered the TUMBLR trademark worldwide and specifically in Turkey.
17. Specifically, six (6) of the ten (10) Infringing Domain Names previously or currently resolve to nearly identical Tumblr Follower Sites which offer for sale artificial Tumblr followers. Indeed, operating Tumblr Follower Sites is an express violation of Complainant’s Terms of Service (para. 3), as well as its Community Guidelines (para. titled “Non-Genuine Social Gesture Schemes”) and Application Developer and API License Agreement (para. 3(q)). In addition to offering artificial Tumblr follower services prohibited by Complainant, Respondent also displays pay-per-click advertisements on the resolving webpages of its active Infringing Domain Names.
18. Moreover, upon information and belief, when a Tumblr user visits one of Respondent’s Tumblr Follower Sites, the user is prompted to sign up for an account by logging into the Tumblr user’s Tumblr account. When a user clicks on “Sign in with Tumblr” the Tumblr user is redirected to a Tumblr.com Login page which requires the user to enter the email address and password registered with Tumblr.com. Upon entering these credentials, the user is then redirected back to Respondent’s website where the user is prompted to enter either the number of artificial followers the Tumblr user desires, or a link to a new Tumblr post and the number of likes the users desires for the post. Because the Tumblr user is required to sign in using its email address and Tumblr password, Complainant contends that the Infringing Domain Names are used to perpetrate a phishing scheme.
19. As of the date of the Complaint, five (5) of the ten (10) Infringing Domain Names resolve to inactive webpages. Of these, TUMBLRTAKIP.COM and TUMBLRTAKIPCI.NET notably resolve to inactive webpages displaying the name AHMET BUĞRA BULUT.
20. Of particular note, and as further evidence of common control of the Infringing Domain Names, TUMBLRTAKIPCIHILESI.COM appears to be controlled by the same entity that owns and operates the domain name <begeniyap.com>. Specifically, the resolving homepage for TUMBLRTAKIPCIHILESI.COM displays a YouTube.com video that displays the domain name <begeniyap.com> within a URL and as a logo superimposed on the right bottom corner of the video (as shown below). Additionally, the <begeniyap.com> domain is included in the copyright attribution information for TUMBLRTAKIPCIHILESI.COM (© 2016 TumblrTakipçi (begeniyap.com)- Ege Beşe). The <begeniyap.com> domain is registered to Ahmet Buğra BULUT, the same name that appears on the resolving webpages for TUMBLRTAKIP.COM and TUMBLRTAKIPCI.NET.
21. Respondent has also demonstrated a pattern of registering Infringing Domain Names after receipt of cease and desist notices from Complainant. Complainant sent a cease and desist notice to the registrant of TUMBLRTAKIPCIHILESI.COM on January 23, 2017 notifying the registrant of Complainant’s rights and requesting that Respondent deactivate the TUMBLRTAKIPCIHILESI.COM domain name and immediately cease using its famous name and TUMBLR trademark on any other under common control. On the same day, Complainant also sent a notice to the ISP/host of the TUMBLRTAKIPCIHILESI.COM domain name. Despite Complainant’s notices, Respondent registered two additional domain names incorporating the TUMBLR trademark, TUMBLRTAKIP.COM and TUMBLRTAKIPCI.NET, on January 28, 2017. On February 6, 2017, Complainant sent a second notice to both Respondent and the ISP/host of TUMBLRTAKIPCIHILESI.COM, and similar to Respondent’s response to Complainant’s first notice, Respondent ignored Complainant’s demand to deactivate the Infringing Domain Name and instead proceeded to register three additional domain names incorporating the entirety of the TUMBLR mark, namely, TUMBLRBEGENITAKIP.COM registered on February 11, 2017, TUMBLRTAKIPCILER.COM registered on February 15, 2017, and TUMBLRTURKIYE.COM registered on February 16, 2017.
C. Legal Analysis
The Infringing Domain Names Are Identical or Confusingly Similar to Complainant’s Mark
UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i)
22. Through Complainant’s use of Complainant’s TUMBLR Mark and based upon its trademark registrations, and common law rights, Complainant has acquired trademark rights in and to the TUMBLR Mark. The Infringing Domain Names are likely to confuse consumers as to their connection with Complainant because all the Infringing Domain Names incorporate the entirety of Complainant’s TUMBLR Mark with the addition of descriptive and/or generic terms. It has been well established that incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark. See e.g., Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013) (“The disputed domain name <tumblrcom.com> is confusingly similar to the Complainant's mark TUMBLR in that it incorporates the Complainant's mark in its entirety.”); Intuit Inc. v. PrivacyProtect.org / Purple Bucquet, D2010- 1107 (WIPO Aug. 24, 2010) (“Many UDRP decisions have found that domain names are confusingly similar to trademarks when the domain name incorporates the trademark in its entirety.”) (citing PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), D2003-0696 (WIPO Oct. 28, 2003) (a domain name is “nearly identical or confusingly similar” to a complainant's mark when it “fully incorporate[s] said mark”, holding <pepsiadventure.net>, <pepsitennis.com>, and other domains confusingly similar to complainant's PEPSI mark).
23. Moreover, not only have numerous courts and prior UDRP panels established that adding generic or descriptive terms to a Complainant’s Mark does not differentiate the domain name from Complainant’s Mark, but in cases where the descriptive or generic term is strongly related to the Complainant’s activities, e.g., Respondent’s use of the term “followers”, the likelihood of confusion is even greater. See e.g., Tumblr, Inc. v. Thomas Kimber, D2012-0609 (WIPO May 9, 2012) (finding the domain name <tumblerlinks.com> confusingly similar to the registered service mark TUMBLR despite the addition of the generic term “links.”); Facebook, Inc. and Instagram, LLC v. Adam Szulewski, D2016-2380 (WIPO Jan. 24, 2017) (“Such terms, particularly ‘likes’ and ‘followers’, are strongly related to the Complainants’ activities and the Panel is of the view that these terms are likely to reinforce the confusing similarity with the Marks and corroborate the impression that the disputed domain names belong to, or are affiliated with the Complainants.”). This is true even when respondents use the generic and/or descriptive terms in different language, for instance, as in this case, in Turkish. See e.g., Google Inc. v. Mahmut Karaca / Karaca Grup Ltd. Sti., FA1607001682647 (July 25, 2016) (Panel holding that adding the descriptive terms “reklam verme” -which translates from Turkish to English as “give advertising”- to Complainant’s GOOGLE mark “does nothing to distinguish the <googlereklamverme.com> domain name from the trademark, particularly when the added terms suggest Complainant’s advertising business.”).
24. Finally, since the addition of gTLDs is irrelevant in an analysis of similarity, all the Infringing Domain Names are confusingly similar, if not identical to Complainant’s Marks under the Policy. See e.g., Tumblr, Inc. v. Above.com Domain Privacy/Transure Enterprise Ltd., Host Master, D2013-0213 (WIPO March 29, 2013) (“the use of the generic top-level domain (gTLD) ‘.com’ in a disputed domain name does not affect a finding of similarity); Gardline Surveys Ltd v. Domain Finance Ltd., FA153545 (Forum May 27, 2003).
25. As such, based on Complainant’s clear rights to the TUMBLR Mark and the public’s strong association of Complainant’s Mark with Complainant, Respondent’s registration and use of the Infringing Domain Names are likely to cause consumer confusion and initial interest confusion.
Respondent Has No Right or Legitimate Interest in the Infringing Domain Names
UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii)
26. The primary factors the Panel considers when evaluating whether Respondent has rights or legitimate interests in the domain name are: 1) whether Respondent previously used the domain name in connection with bona fide offering of goods or services; 2) whether Respondent has been commonly known by the domain name; and 3) whether Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy Para. 4(c). It “is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.” Tumblr, Inc. v. Duanxiangwang, D2013- 0441 (WIPO May 18, 2013).
27. Respondent’s Use of the Infringing Domain Names Demonstrates an Attempt to Divert Internet Users Seeking Complainant’s Goods and Services. It has been well established that “Respondent’s use of the domain name to divert Internet users to its own website for profit is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name.” Google Inc. v. GOOGLE REKLAM EK?B? / GOOGLE REKLAM, FA 1501001602374 (Forum Feb. 25, 2015). By incorporating Complainant’s well-known TUMBLR Mark in the Infringing Domain Names to offer services associated with and incorporating Complainant’s Tumblr platform, it is indisputable that Respondent intends to mislead and deceive unsuspecting consumers in an attempt to divert traffic intended for Complainant’s http://tumblr.com website to the Infringing Domain Names for Respondent’s financial gain. Specifically, Respondent’s Tumblr Follower Sites advertise and offer to Internet users in the U.S. and Turkey artificial Tumblr followers. In Instagram, LLC v. Douglas Tarry / Statigram, the Panel held that “purporting to sell Instagram followers, which is in direct violation of Complainant’s Terms of Use” does not constitute “making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, as Respondent is attempting to pass itself off as Complainant.” Instagram, LLC v. Douglas Tarry / Statigram, FA1403001550202 (May 7, 2014); see also Facebook, Inc. and Instagram, LLC v. Adam Szulewski, D2016-2380 (WIPO Jan. 24, 2017) (Holding Respondent had no rights or legitimate interests where, inter alia, the “[t]he website associated with the disputed domain names offers for sale ‘likes’ or ‘followers’, contrary to the Complainants’ terms of service”). Moreover, a number of the Infringing Domain Names previously and/or currently resolve to Tumblr Follower Sites displaying third-party advertisements or sponsored links that Respondent presumably profits from by way of click-through income. Such use of the Infringing Domain Names demonstrates that Respondent “has intentionally chosen domain names based on registered trademarks in order to generate traffic to his web sites and through this procedure generate income through sponsored links.” LEGO Juris A/S v. Transure Enterprise Ltd, D2009-1347 (WIPO Dec. 19, 2009); See e.g. Google Inc. v. Rob Lie/Rob Smith, FA1507001631045 (Forum Sept. 2, 2015) (holding that unrelated third party advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if Respondent is itself commercially profiting from the click-through fees). Accordingly, it is indisputable that Respondent’s Infringing Domain Names are primarily a pretext for commercial advantage and, as such, cannot constitute a bona fide offering of goods or services or legitimate noncommercial or fair use.
28. Infringing Domain Names that Resolve to Inactive Webpages. Respondent’s failure to make active use of certain Infringing Domain Names as of the date of this Complaint constitutes a failure to make a bona fide offering of goods or services and further establishes Respondent’s lack of rights and legitimate noncommercial or fair use under Policy ¶4(c)(i) or ¶4(c)(iii). See e.g., Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, D2016-1710 (WIPO Oct. 12, 2016) (“Respondents’ failure to make current active use of this disputed domain name constitutes a failure to make a bona fide offering of goods or services and further establishes that Respondents are not making a legitimate non-commercial or fair use of the disputed domain name.”); Google Inc. v. Jiang Wei / HangZhou Eplus Science & Technology Co.,Ltd, FA 1411338 (Forum Nov. 15, 2011)
29. Respondent’s Use of the Infringing Domain Names as Part of a Phishing Scheme. Upon information and belief, Respondent’s Infringing Domain Names that previously or currently resolve to Tumblr Follower Sites encourage Internet Users to share personal and sensitive information, i.e., email address and Tumblr password, as part of Respondent’s phishing scheme. It has been established that the “act of ‘phishing,’ as such practices are known, does not constitute a bona fide offering of goods and services or a legitimate non-commercial or fair use.” Wells Fargo &Company v. blend kent / wellsargoverification, FA1510001643442 (Forum Nov. 25, 2015).
30. Respondent is Not Commonly Known by the Infringing Domain Names. Nothing in the Whois information for the Infringing Domain Names nor the record demonstrates that Respondent is commonly known by the Infringing Domain Names, and Complainant has not authorized Respondent to use its TUMBLR Mark. See, e.g., Yahoo! Inc. v. Junlong Zheng c/o OnlineNIC, FA 1142567 (Forum March 25, 2008) (holding respondent has no rights or legitimate interests because there is no evidence in the record or WHOIS information indicating respondent is commonly known by the disputed domain name and because Complainant did not authorize respondent to use its YAHOO mark); Tumblr, Inc. v. Privacy Protect.org/JiangJhunyuan, D2013-0243 (WIPO March 15, 2013) (transferring domain name <tubmlr.com> where “Respondent cannot demonstrate nor is there evidence to show that it is commonly known by the name ‘tubmlr’.”). Since Respondent has not been commonly known by the Infringing Domain Names, Respondent cannot demonstrate that he has rights to and legitimate interests in the Infringing Domain Names.
Respondent Registered and Used the Infringing Domain Names in Bad Faith
UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii)
31. Respondent Registered the Infringing Domain Names with Complainant’s Mark in Mind and with Intent to Cause Confusion. Complainant first made use of the TUMBLR Mark in 2007, whereas Respondent did not register the earliest of the Infringing Domain Names until March 15, 2016, well after Complainant’s TUMBLR Mark had enjoyed unparalleled growth, become internationally recognized – and likely famous – and after Complainant’s TUMBLR Mark matured to registration in the United States, Turkey and elsewhere around the world. Since Complainant’s TUMBLR Mark has been recognized and relied upon by online consumers throughout the world to identify and distinguish Complainant’s website and services from the goods and services of others, Respondent’s registration of the Infringing Domain Names are sufficient to satisfy the bad faith requirement. See e.g., Tumblr, Inc. v. Balticsea LLC, FA1402001542323 (Forum Match 13, 2014) (finding that “due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights.”); Tumblr, Inc. v. Privacy Protect.org/Jiangchunyuan, D2013-0243 (WIPO March 15, 2013) (bad faith established where panel “finds it difficult to believe that Respondent was unaware of the TUMBLR mark and of the Complainant prior to registering the disputed domain name” and “draws the inference that the disputed domain name must have had its value to Respondent because of the confusing similarity to the Complainant’s TUMBLR mark and <tumblr.com> domain name.”); Tumblr, Inc. v. Jingsheng Feng, D2013-0454 (WIPO May 10, 2013); Tumblr, Inc. v. Thomas Kimber, D2012-0609 (WIPO May 9, 2012) (observing that as of February 17, 2012, “TUMBLR services enjoyed a substantial degree of public recognition”); Tumblr, Inc. v. Kenny Kim, D2013-0440 (WIPO April 28, 2013); Tumblr, Inc. v. zhao xiaobing, FA1303001492271 (Forum May 14, 2013).
32. Moreover, given that most of the Infringing Domain Names have resolved, or currently resolve to websites offering artificial Tumblr followers and/or displaying third-party pay- per-click advertisements, there is no doubt that Respondent targeted Complainant, and is using the Infringing Domain Names for commercial gain in bad faith. See e.g., Facebook, Inc. and Instagram, LLC v. Adam Szulewski, Case No. D2016-2380 (WIPO Jan. 24, 2017) (“the disputed domain names resolve to the website “www.socialmarketingmadness.com” which offers for sale “likes” and “followers” which indicates that Respondent is targeting the Complainants and is using for commercial gain the disputed domain names in bad faith.”); Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“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).”).
33. Respondent’s Phishing Activity is Further Evidence of Bad Faith. As found by prior panels, where, as is the case here, “a confusingly similar domain name is used to acquire personal or financial information, such phishing supports findings of bad faith registration and use.” See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum Jul. 13, 2015).
34. Respondent Has Demonstrated a Pattern of Bad Faith Use and Registration. As discussed above, Respondent has registered and used at least ten Infringing Domain Names with the bad faith intent to trade off the goodwill invested in Complainant’s TUMBLR Mark. “It is well established that the registration of multiple confusingly similar domain names to a Complainant's trademark is indicative of a pattern of bad faith registration.” Instagram, LLC v. Ozgur Kalyoncu, Seo Master and Huseyin Erdem, D2016-1710 (WIPO Oct. 12, 2016); see also Facebook, Inc. and Instagram, LLC v. Adam Szulewski, D2016-2380 (WIPO Jan. 24, 2017) (“The fact that Respondent registered so many domain names confusingly similar to the Marks over a relatively short period of time confirms the implausibility of a random registration of the disputed domain names and by contrast reveals a pattern of conduct in the meaning of paragraphs 4(b)(ii) and (iii) of the UDRP to prevent the Complainants from reflecting the Marks in corresponding domain names, such conduct being strongly indicative of bad faith.”).
35. In conclusion, based on the circumstances enumerated above, it is clear that Respondent registered and used the Infringing Domain Names in bad faith and in violation of the Policy. Respondent registered domains that are confusingly similar to Complainant’s TUMBLR Mark and Respondent has no legitimate interest in the Infringing Domain Names, demonstrating that Respondent is a cybersquatter. Registrant’s activities prevent Complainant from commercially exploiting its mark on the Internet.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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(f), 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 (Forum July 31, 2000) (holding that 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.”).
PRELIMINARY ISSUE: LANGUAGE
Complainant claims the proceeding should be conducted in English because Respondent is conversant and proficient in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because Respondent submitted a response in English after receiving the complaint in Korean and English). Complainant claims Respondent is conversant in English because only one out of the ten registered domain names, <tumblrtakipci.com>, was registered in Turkish. The remaining domain names were registered in English. When Complainant sent a cease and desist demand to Respondent, Respondent responded by registering more infringing domain names. In light of these facts and circumstances, the Panel is persuaded Respondent communcuiates well in English and elects to proceed in English.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant claims the disputed domain names are commonly controlled by the same individual or network of individuals in Turkey (collectively, “Respondent”). All of the domain names include the entirety of complainant’s TUMBLR mark with the addition of generic or descriptive Turkish terms, which include “takip,” “takipci,” “takipciler,” and “takipci hilesi”, which translate to “follow” or “followers” in English, and the terms “hile” and “turkiye”, which translate to “cheat” and “Turkey,” respectively.
There are a number of factors a Panel may consider in deciding whether or not several apparently different named people are actually one and the same person, including:
(1) The use of common registration information such as administrative contact details, technical contact details, postal addresses, email addresses, IP addresses, and telephone and fax numbers;
(2) The use of the same or similar names in the registration information;
(3) Resolving disputed domain names to the same or similar Websites;
(4) Using the same domain name servers;
(5) Using the same registrars; and
(6) Close similarity between the disputed domain names, each of which incorporates the Trade Mark in its entirety in conjunction with non-distinctive, generic or geographical terms.
Citing to Guccio Gucci S.p.A v. Andrea Hubner, Beijing Harmony Software Co.Ltd., jiang wang, brian miller, Pornsawang Chotima, Domain Whois Protection Service, Whois Agent, Jie Zhou, Jayzhou, Hi to every day in Zhengzhou Medical Devices Co., Ltd., tian jin hua jin you xian gong si, lihong jay, hu, lizhu hu, da tou, Tamia Liu, Wang Jie, Yijiwangluo. Case No. D2012-2212 (February 8, 2013) with approval.
Six of the ten Infringing Domain Names previously or currently resolve to similar websites offering artificial Tumblr followers to Tumblr users. A variety of the sites have identical registrant information, IP addresses, registrars, name servers and/or icons appearing in the websites’ browser tabs as noted below:
· Infringing Domain Name Nos. 1 and 2 have the same icon appearing in the websites’ browser tabs;
· Infringing Domain Name Nos. 2 and 3 have the same registrar;
· Infringing Domain Name Nos. 5 and 6 share the same IP address, 212.68.33.2;
· Infringing Domain Name Nos. 5-7 share the same name server, Hasmobilya.com;
· Infringing Domain Name Nos. 6-9 have the same registrar;
· Infringing Domain Name Nos. 6-10 have same registrant, Osbil Technology Ltd;
· Infringing Domain Name Nos. 7-10 share the same IP address, 185.50.70.10;
· Infringing Domain Name Nos. 8-10 share the same name server, and have the same icon appearing in the websites’ browser tabs; and
· Infringing Domain Name Nos. 4 and 10 have the same registrar.
When Complainant sent a cease and desist letter in English, Respondent registered additional domain names. This Panel is persuaded Respondent is effectively a single entity.
Complainant registered its TUMBLR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,714,214, registered Nov. 24, 2009). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). It should be noted Complainant also has rights in Turkey. Complainant has rights in the TUMBLR mark under Policy ¶4(a)(i).
Complainant claims Respondents’ disputed domain names are confusingly similar to Complainant’s mark because the names fully incorporate Complainant’s mark and simply include generic, descriptive or geographical terms in Turkish, and one of the gTLDs “.com,” “.net,” or “.org”. Adding foreign language generic or descriptive terms to a mark does not sufficiently distinguish a domain name from a mark to prevent a finding of confusing similarity under Policy ¶4(a)(i). See Google Inc. v. Mahmut Karaca / Karaca Grup Ltd. Sti., FA 1682647 (Forum July 25, 2016) (Adding the descriptive terms “reklam verme” -which translates from Turkish to English as “give advertising”- to Complainant’s GOOGLE mark “does nothing to distinguish the <googlereklamverme.com> domain name from the trademark, particularly when the added terms suggest Complainant’s advertising business.”). Likewise, added geographic terms are not sufficient to distinguish a domain name from a mark under a Policy ¶4(a)(i) analysis. See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶4(a)(i) analysis). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The disputed domain names include the TUMBLR mark, the gTLDs “.com,” “.net,” or “.org”, and include generic, descriptive or geographical terms such as “takip,” “takipci,” “takipciler,” and “takipci hilesi”, which translate to “follow” or “followers” in English, and the terms “hile” and “turkiye”, which translate to “cheat” and “Turkey”. The disputed domain names are confusingly similar to Complainant’s mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (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 claims Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its TUMBLR mark in any fashion. The Panel accepts this assertion as true because there is no contradictory evidence in the record. See Navistar International Corporation v. N Rahmany, FA 1620789 (Forum June 8, 2015) (finding that Respondent was not commonly known by the disputed domain name where the complainant had never authorized Respondent to incorporate its NAVISTAR mark in any domain name registration). Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, especially when a privacy service is shown as the registrant. See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent’s failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).”). The disputed domain names currently list “OSBIL TECHNOLOGY LTD.,” “ALI BAYRAM,” “BIREYSE,” “MEHMET AHMET,” “UFUK DEMIRAY,” “ERDEM MUTLU,” “ERDEM MUTLU,” or “REZAN ORHAN,” as the registrant. There is no obvious relationship between these names and the disputed domain names. Respondent is not commonly known by any of the disputed domain names.
Complainant claims Respondent only uses Complainant’s famous marks to benefit from it. Panels have held this type of use demonstrates a lack of a bona fide offering of goods or services and a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). There would be no other reason for Respondent to have registered any confusingly similar domain name using the TUMBLR mark if it did not to commercially benefit from diverting Internet users to Respondent’s own webpage. Respondent has not made a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use per Policy ¶4(c)(iii).
Complainant claims Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of five of the disputed domain names (freetumblrtakipci.com, tumblrturkiye.org, tumblrtakipciler.com, tumblrtakip.com and tumblrtakipci.net) because they do not resolve to an active webpage. Failure to use a disputed domain name is generally not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). While a domain name can be used other than to host a web page (such as an email server or a private ecommerce backend), Respondent has made no such claim here. Complainant has provided screenshots of Respondent’s inactive webpages. The Panel must conclude Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶4(c)(i) or (iii).
Complainant claims Respondent has registered at least one domain name (<tumblrtakip.com>) in furtherance of a phishing scheme. Using a disputed domain name for the purpose of phishing for Internet users’ personal information is not a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Complainant has provided screenshot evidence of Respondent’s <tumblrtakip.com> domain name resolving to a webpage which prompts internet users provide their TUMBLR account information. Respondent’s web site passes the information along to Complainant’s web site (acting as a “ParaSite”). Presumably, Respondent saves a copy of this information (and likely pulls other information from the user’s TUMBLR account in the background). The Panel must conclude Respondent uses at least one of the disputed domain names to further a phishing scheme and, therefore, has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names under Policy ¶¶4(c)(i) or (iii).
Respondent registered TumblrTakipciHilesI.com, TumblrTakipci.com, TumblRbEgenItakIp.com, and TumblRhIle.com using a privacy service. This means Respondent has taken no steps to publicly associate itself with these disputed domain names. Respondent cannot acquire any rights by simply registering these domain names using a privacy service.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has engaged in bad faith registration in the instant case by registering multiple domains. This Panel disagrees. Policy ¶4(b)(ii) requires Complainant be prevented from registering a domain name to reflect its mark. This has not occurred because Complainant has reflected its mark in TUMBLR.COM since 2007. While there is decision precedent to the contrary, this Panel declines to follow it under the facts of this case.
Complainant claims Respondent has registered and is using the disputed domain names in bad faith under Policy ¶4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the TUMBLR mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant has provided screenshot evidence of Respondent’s resolving webpages, some of which prominently display Complainant’s marks. Respondent created a likelihood of confusion and therefore registered and uses the domain names in bad faith under Policy ¶4(b)(iv).
Complainant claims it is inconceivable Respondent could have registered the disputed domain names without actual knowledge of Complainant’s rights in the mark in light of the fame and notoriety of Complainant’s TUMBLR mark. Actual knowledge of a complainant’s rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). In this case, Respondent created a web site that interacts with Complainant’s web site by passing along login information (and presumably kept a copy for Respondent’s purposes, as well as pulling a copy of the user’s TUMBLR account information in the background). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”). Complainant’s TUMBLR mark has created significant good will and consumer recognition around the world and has been in use since 2009. Respondent had actual knowledge of Complainant’s rights when the disputed domain names were registered and subsequently used because of the fame of Complainant’s mark and Respondent’s use of the same mark.
Complainant claims Respondent does not making an active use of some of the disputed domain names’ resolving webpages. A respondent’s inactive holding of a disputed domain name’s without a resolving webpage certainly suggests bad faith registration and use. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). Complainant has provided screenshot evidence of the disputed domain names’ inactive resolving webpage. Respondent does not contend any of the apparently inactive domain names are being used otherwise (such as an email server or an ecommerce back end). Respondent has acted in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent uses some of the disputed domain names in connection with a phishing scheme. Phishing for Internet users’ information is evidence of bad faith under Policy ¶4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).”). Complainant has provided a screenshot which shows users seeking Complainant can apparently log into Respondent’s webpage mimicking Complainant’s website. While this login information is passed along to Complainant’s web site, there is no doubt Respondent maintains a copy of the information. Respondent engaged in a phishing scheme and, therefore, acted in bad faith under Policy ¶4(a)(iii).
Respondent registered TumblrTakipciHilesI.com, TumblrTakipci.com, TumblRbEgenItakIp.com, and TumblRhIle.com using a privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <tumblrtakipcihilesi.com>,<tumblrtakipci.com>, <tumblrtakipciler.com>, <tumblrbegenitakip.com>, <tumblrhile.com>, <freetumblrfollowers.com>, <freetumblrtakipci.com>, <tumblrtakip.com>, <tumblrtakipci.net>, and <tumblrturkiye.org> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, June 19, 2017
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