WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master
Case No. D2013-0213
1. The Parties
The Complainant is Tumblr, Inc. of New York, United States of America, represented internally.
The Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd, Host Master of Tortola, Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <tumblor.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 8, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 12, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 7, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on March 15, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant submitted affidavit evidence in support of the Complaint. The Complainant is a Delaware corporation that owns and operates a social sharing platform and media network that was released in February 2007. The Complainant's platform (“the Tumblr platform”) allows individuals to create, post, and share digital content (such as text, photos, quotes, links, audio, and videos) online.
The Complainant asserts that the Tumblr platform ranks in the top 15 in terms of reach according to Quantcast.com. As of the date of the lodgment of the Complaint, the Tumblr platform hosts over 91 million blogs with over 140 million unique visitors per month. Since launching the initial version of the platform in February 2007, the Complainant has used the TUMBLR mark in relation to its publishing platform for online media, Internet-based social sharing and media network services, mobile applications, including on Apple iOS and Google Android, as well as many other products and services. The Complainant is the owner of United States Trademark Registration No. 3,714,214 for the TUMBLR mark, filed on October 27, 2008 and registered on November 24, 2009, which is valid and subsisting. The date of first use of the TUMBLR mark is reflected as February 19, 2007.
The Complainant owns and operates a number of websites including its primary website at the domain name <tumblr.com>, through which millions of individuals access the Tumblr platform. The term “tumblr” is a coined word, having no meaning other than as a trade mark denoting the goods and services of the Complainant. The Complainant has continuously and extensively used, advertised, marketed, and promoted its TUMBLR mark, both within the United States and in foreign countries.
According to the Registrar’s verification response, the disputed domain name <tumblor.com> was registered on March 22, 2009.
5. Parties’ Contentions
1. The disputed domain name consists of the TUMBLR mark plus the single letter “o”. The disputed domain name is therefore confusingly similar to the Complainant’s TUMBLR mark. The Respondent, in registering the disputed domain name, is attempting to capitalize on a predictable typographical error of the word “tumblr”. The extra letter “o” is, on a traditional QWERTY keyboard, proximally close to the letter “l” that a user would type on a keyboard in order to spell the domain name <tumblr.com>. The Respondent thus hopes to acquire web traffic from people who accidentally mis-spell the Complainant’s <tumblr.com> domain name. Such “typosquatting” is evidence of confusing similarity. Further, the use of the generic top-level domain (gTLD) “.com” in a disputed domain name does not affect a finding of similarity. The gTLD “.com” is technically required for the operation of a domain name, and thus it is without legal significance in an inquiry of similarity.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that it has established a prima facie as: (i) the Respondent is neither an agent nor a licensee of the Complainant, nor has the Respondent ever been affiliated in any way with the Complainant; (ii) the Respondent has never been authorized by the Complainant to use the TUMBLR mark; and (iii) the Respondent cannot show that it has rights or legitimate interests through the circumstances enumerated in the Policy, viz. that it is
a) using the disputed domain name in connection with a bona fide offering of goods and services;
b) commonly known by disputed domain name; or
c) making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the TUMBLR mark.
In relation to the above three points, the Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because its website redirects to a false plugin error page that generates pop-up advertisements and attempts to install a file called “mPlayer_Setup.exe” on the user’s computer. Panelists in previous cases have held that such services are not bona fide offerings of goods or services. The Respondent, by capitalizing on typosquatting of the TUMBLR mark, aims to deceive Internet visitors to the Complainant’s website at <tumblr.com> into believing the disputed domain name is affiliated with the Complainant, thereby enticing those individuals to download potentially malicious software. This type of misleading diversion is not a bona fide offering of goods or services. There is no evidence that the Respondent is commonly known by the name “tumblor”. Neither an inquiry using the Google search engine nor the website to which the disputed domain name resolves provide any evidence that the Respondent is commonly known as “tumblor” or by the disputed domain name. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
3. The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The totality of the circumstances supports this. The Respondent's typosquatting of the TUMBLR mark coupled with the Respondent’s goal of deceiving individuals into downloading potentially malicious software by encouraging users to upgrade a plugin, demonstrate that the Respondent registered and is using the disputed domain in bad faith. The Respondent registered the disputed domain in March 2009, after the TUMBLR mark was first used in commerce. When a Google search for the term “tumblor” is performed and limited to documents available up to the date March 2009, most of the results on the first page of the search are associated with or concern the Complainant. None of the results involve the Respondent's use of “tumblor” as an independent mark. Thus, it is difficult to believe that the Respondent obtained the disputed domain name without being aware of the Complainant’s TUMBLR mark. The Respondent's typosquatting of the TUMBLR mark and its knowledge of, or willful blindness to, the Complainant's rights in the TUMBLR mark demonstrates the Respondent’s bad faith in registering the disputed domain name. Under the Policy, bad faith use is proven when a respondent has intentionally created a likelihood of confusion with the complainant’s mark in an attempt to attract users to its website for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the complainant is obliged to prove each of these elements before it can obtain an order in its favour:
(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has both registered and unregistered rights in the mark TUMBLR. The Panel finds that the disputed domain name, when directly compared, is confusingly similar to the TUMBLR mark.
The Panel notes that the disputed domain name was registered before the Complainant’s United States Trademark Registration No. 3,714,214 for the TUMBLR mark was granted. However, the ownership of a trademark is generally considered a threshold, or standing, issue. (See paragraph 1.1 of the WIPO Overview 2.0 and Tumblr, Inc. v. 黄素芬 (Huang Sufen), WIPO Case No. D2013-0146).
The Panel therefore finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel draws a negative inference from the fact that the letter “o” is very closely juxtaposed to the letter “l” on a QWERTY keyboard, in respect of the Respondent’s choice of the disputed domain name. Given that the circumstances of this case are strongly indicative of typosquatting, and having considered the submissions made by the Complainant, the Panel concludes that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The Respondent is therefore required to present evidence under paragraph 4(c) of the Policy to disprove the Complainant’s case and demonstrate it has rights to or legitimate interests in the disputed domain name. Under the Policy, this could be done by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name was in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not responded in these proceedings and failed to demonstrate with evidence that it has rights or legitimate interests in respect of the disputed domain name. In the circumstances, the Panel is unable to make a finding other than that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel therefore finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The primary objective of the Policy is to curb the abusive registration of domain names. This objective is captured in paragraph 4(b) of the Policy which states that “any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location”.
Given the Complainant’s reputation and presence on the Internet, the Panel is of the view that it is improbable that the Respondent was unaware of the Complainant prior to registering the disputed domain name. The Panel notes that the disputed domain name was registered before the Complainant’s United States Trademark Registration No. 3,714,214 for the TUMBLR mark was granted. However, Complainant’s TUMBLR mark claims first use in commerce from February 19, 2007. Additionally, TUMBLR is clearly an invented word. Therefore, in this Panel’s view, the Respondent must have been aware of the Complainant when the disputed domain name was registered. Accordingly, the Panel draws the inference that the disputed domain name must have had its value to the Respondent, also because of its confusing similarity to the Complainant’s <tumblr.com> domain name. Further, the Respondent’s use of the disputed domain name to redirect Internet users to a false plugin error page that generates pop-up advertisements and attempts to install a file called “mPlayer_Setup.exe” on the user's computer link to other websites, with the effect of causing Internet users to be exposed to potentially malicious software, are undoubtedly bad faith in nature. In the absence of any explanation or evidence from the Respondent to refute and contradict the case established by the Complainant, the Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the disputed domain name.
The Panel therefore finds that the third element of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <tumblor.com> be transferred to the Complainant.
Date: March 29, 2013