Tumblr, Inc. v. Jan Kancler
Claim Number: FA1402001543255
Complainant is Tumblr, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Jan Kancler (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tumbld.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 11, 2014; the National Arbitration Forum received payment February 11, 2014.
On February 12, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <tumbld.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 4, 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@tumbld.com. Also on February 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant operates a web platform that allows individuals to post content to an Internet-accessible blog. Complainant has over 175 million unique visitors per month to its website, located at <tumblr.com>.
b) Complainant has rights in the TUMBLR mark, used in connection an online content-posting forum. Complainant owns registrations for the TUMBLR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,714,214 registered Nov. 24, 2009).
c) Respondent’s <tumbld.com> domain name is confusingly similar to Complainant’s TUMBLR mark. The disputed domain name incorporates Complainant’s mark in its entirety, with the only difference being the substitution of the letter “r” in Complainant’s mark for the letter “d” in the disputed domain name. The disputed domain name also adds the generic top-level domain (“gTLD”) “.com.”
d) Respondent has no rights or legitimate interests in the <tumbld.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its TUMBLR mark in any way.
b. The <tumbld.com> domain name resolves to a DNS error page, which states, “Oops! Google Chrome could not find tumbld.com.” See Complainant’s Exhibit M.
e) Respondent registered and is using the <tumbld.com> domain name in bad faith.
a. Respondent has been involved in a prior UDRP proceeding in which the disputed domain name was ordered to be transferred.
b. Respondent had knowledge of Complainant’s mark prior to registering the <tumbld.com> domain name domain name because Complainant’s mark is internationally recognized.
c. Respondent is typosquatting, which constitutes bad faith.
Respondent did not submit a Response in this proceeding.
The Panel notes that Respondent registered the <tumbld.com> domain name June 20, 2012.
Complainant established that it has rights and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights or legitimate interests.
The domain name containing Complainant’s protected mark is confusingly similar to Complainant’s mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends it has rights in the TUMBLR mark, used in connection with an online content-posting forum. Complainant states it owns registrations for the TUMBLR mark with the USPTO (e.g., Reg. No. 3,714,214 registered Nov. 24, 2009). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation; it is sufficient that a complainant own a registration in a different country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the TUMBLR mark within the meaning of Policy ¶ 4(a)(i) because Complainant owns a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <tumbld.com> domain name is confusingly similar to Complainant’s TUMBLR mark. Complainant states that the disputed domain name incorporates Complainant’s mark in its entirety, with the only difference being the substitution of the letter “r” in Complainant’s mark for the letter “d” in the disputed domain name. Complainant also notes that the disputed domain name adds the gTLD “.com.” First, the Panel finds that changing one letter in a trademark that has been inserted into a disputed domain name does not negate a finding of confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. 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.”). Therefore, the Panel finds that Respondent’s <tumbld.com> domain name is confusingly similar to Complainant’s TUMBLR mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof 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 contends that Respondent does not have any rights or legitimate interests in the <tumbld.com> domain name. Complainant argues that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its TUMBLR mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “Jan Kancler.” Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as a whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the TUMBLR mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <tumbld.com> domain name under Policy ¶ 4(c)(ii).
Complainant claims that the <tumbld.com> domain name resolves to a DNS error page, which states, “Oops! Google Chrome could not find tumbld.com.” See Complainant’s Exhibit M. Past panels have found that failing to make an active use of a disputed domain name does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“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).”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii) because Respondent failed to make an active us of the <tumbld.com> domain name.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims Respondent has been involved in a prior UDRP proceeding in which the disputed domain name was ordered to be transferred. See CarMax Bus. Servs., LLC v. Jan Kancler, FA 1105737 (Nat. Arb. Forum Dec. 12, 2007) (finding that Respondent registered and used the domain name <carmax.biz> in bad faith). Past panels have found that a respondent who has been involved in a prior UDRP proceeding in which the disputed domain name was ordered transferred provides evidence of bad faith in the current case. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, the Panel finds that Respondent registered and is using the <tumbld.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent was involved in a prior UDRP proceeding in which respondent’s domain name was ordered transferred for failure to comply with URDP rules.
Complainant contends that Respondent registered and is using the <tumbld.com> domain name in bad faith. Complainant asserts that Respondent had knowledge of Complainant’s mark prior to registering the <tumbld.com> domain name domain name because Complainant’s mark in internationally recognized. The Panel notes that constructive notice is generally regarded as insufficient to support a finding of bad faith. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith). However, the Panel here finds that Respondent was well aware of Complainant’s mark at the time Respondent registered the disputed domain name. Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See GO Local NC Farms, LLC v. Paul Darcy, FA 1426087 (Nat. Arb. Forum March 13, 2012) (“[A] finding of bad faith hinges squarely on the probability that it was more likely than not that [the] [r]espondent knew of, and targeted, [the] [c]omplainant’s trade mark.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant claims Respondent is typosquatting, which constitutes bad faith. 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.” The Panel notes that the disputed domain name replaces the letter “r” in Complainant’s TUMBLR mark with the letter “d,” which is near the letter “r” on a QWERTY keyboard. Past Panels have found that typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, the Panel finds that Respondent is typosquatting, and registered and is using or passively holding the <tumbld.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and held the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tumbld.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: March 24, 2014.
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