Tumblr, Inc. v. XinWei Liu
Claim Number: FA1401001539819
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is XinWei Liu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumblr.com.co>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2014; the National Arbitration Forum received payment on January 17, 2014.
On January 20, 2014, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <tumblr.com.co> domain name is registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the name. 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 January 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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.com.co. Also on January 21, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Tumblr, Inc. uses its TUMBLR mark in connection with a microblogging and social sharing platform initially launched in 2007.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TUMBLR mark (e.g., Reg. No. 3,714,214, registered November 24, 2009) as well as other registrations worldwide.
Respondent’s <tumblr.com.co> domain name consists of the entire <tumblr.com> domain name with the attachment of the country-code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the infringing domain name. Respondent’s infringing domain name resolves to a DNS error page.
Respondent registered and used the infringing domain name in bad faith. Respondent registered the infringing domain name with Complainant’s mark in mind and with intent to cause confusion. Respondent registered the infringing domain name after Complainant’s TUMBLR mark had gained worldwide recognition—and likely fame—and well after Complainant had applied for and/or obtained registration for its TUMBLR mark in the United States and elsewhere.
Respondent registered the <tumblr.com.co> domain name on August 16, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for the TUMBLR mark as well as other registrations for TUMBLR worldwide.
Respondent is not affiliated with Complainant and had not been authorized to use the TUMBLR mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired rights in TUMBLR.
Attempting to use the <tumblr.com.co> domain name as an Internet address returns a DNS error page.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant demonstrates that it has rights in a mark for the purposes of the Policy by virtue of its USPTO registration for the TUMBLR mark. Such rights also flow from Complainant’s other registrations for the TUMBLR worldwide. For the purposes of Policy ¶4(a)(i), it is irrelevant that Respondent may operate outside the jurisdiction of the relevant trademark registrars. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that its is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <tumblr.com.co> domain name consists of Complainant’s entire TUMBLR trademark with “.com.co” appended thereto. Adding the “.com.co” domain name to Complainant’s mark does not distinguish the domain name from the mark under Policy ¶ 4(a)(i).Therefore, the Panel concludes that Respondent’s <tumblr.com.co> domain name is identical to Complainant’s TUMBLR mark under the Policy ¶ 4(a)(i). See Yahoo! Inc. v. YAHOO.COM / YAHOO! INC., FA 1532273 (Nat. Arb. Forum Jan. 10, 2014) ("The Panel notes that Respondent utilizes the third-level domain name features offered through the “.co” registry, and that in this case Respondent’s domain name includes the top-level “.co” and second-level “.com” domains. The Panel finds that these additions are not . . . relevant to a Policy proceeding.").
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with affirmative evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting any finding pursuant to Policy 4(c) suggesting that Respondent has rights in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies Respondent as “XinWei Liu” and the record before the Panel contains no evidence that might otherwise tends to prove that Respondent is commonly known by the at-issue domain name notwithstanding the contrary WHOIS information. The Panel therefore finds that Respondent is not commonly known by the <tumblr.com.co> domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s <tumblr.com.co> domain name returns a DNS error page stating “Oops! Google Chrome could not find <tumblr.com.co>.” Respondent’s failure to make active use of the disputed domain name indicates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“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).”).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii).
Respondent’s failure to make any active use of a domain name identical to Complainant’s TUMBLR trademark suggests that Respondent purpose in registering the domain name was to eventually use the domain name to mislead consumers for commercial gain. Therefore, without any alternative motive before the Panel it appears that Respondent registered the <tumblr.com.co> domain name intending to cause confusion between the domain name and Complainant’s trademark, notwithstanding that the domain name does not appear to be linked any particular IP address. Registering the domain name for such purposes demonstrates bad faith under Policy ¶ 4(b)(iv). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”).
Respondent registered the <tumblr.com.co> domain name after Complainant’s TUMBLR mark had gained worldwide recognition—and likely fame—well after Complainant had applied for and/or obtained registration for its TUMBLR mark in the United States and elsewhere. Therefore, it is evident that Respondent had actual knowledge of Complainant’s unique trademark prior to registering the at-issue domain name. Respondent’s prior knowledge of Complainant's trademark shows Respondent’s bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumblr.com.co> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 13, 2014
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