WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. Privacy Protect.org / jiangchunyuan
Case No. D2013-0243
1. The Parties
The Complainant is Tumblr, Inc. of New York, United States of America represented internally.
The Respondent is Privacy Protect.org of Queensland, Australia / jiangchunyuan of jiangxi, China.
2. The Domain Name and Registrar
The disputed domain name <tubmlr.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3.1 Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2013. On February 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 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 11, 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 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2013. The Respondent filed a series of informal email responses from February 13, 2013 through to March 7, 2013.
The Center appointed Francine Tan as the sole panelist in this matter on March 13, 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.
3.2 Language of the proceedings
The Respondent’s first email communication of February 13, 2013 was in the Chinese language. The Center sent an acknowledgment of receipt of the email communication to the Respondent but also pointed out that the language of the proceedings, as confirmed by the Registrar, is English and therefore all communication should, in the absence of agreement otherwise between the parties, be in English. The subsequent informal email communications from the Respondent were sent in both English and Chinese.
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 trade 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 TUMBLR (the “TUMBLR mark”) 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 site with 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.
5. Parties’ Contentions
The disputed domain name <tubmlr.com > consists of a misspelling of the Complainant’s TUMBLR trade mark in which the two letters “b” and “m” are switched, and is therefore confusingly similar (paragraph 4(a)(i) of the Policy). The Respondent, in registering the disputed domain name, is attempting to capitalize on a predictable typographical error of the word “tumblr” and hopes to acquire web traffic from people who accidentally mis-spell the Complainant’s <tumblr.com> domain name. Because the switching of two adjacent letters in the TUMBLR mark does not serve to adequately distinguish the disputed domain name, and the generic Top Level Domain (“gTLD”) suffix “.com” therein is of no significance, the disputed domain name is therefore confusingly similar to the Complainant’s TUMBLR trade mark.
The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy). In this regard, the Complainant submits that it has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name: 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. Neither has it been authorized by the Complainant to use the TUMBLR mark. Moreover, the Respondent cannot show that it has rights or legitimate interests through the circumstances enumerated in the Policy, viz. that it is
(i) using the disputed domain name in connection with a bona fide offering of goods and services;
(ii) commonly known by disputed domain name; or
(iii) 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.
The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as the website to which the disputed domain name resolves redirects to <click.livesearchnow.com>, a common browser hijacking virus. This redirects the user to a variety of advertisements and sign-up sites and such use does not constitute a bona fide offering of goods or services under the Policy. The Respondent, by typosquatting, aims to deceive visitors looking for the Tumblr platform into believing that the Respondent’s webpage is affiliated with the Complainant whereas those individuals would be exposed to potentially malicious software. Further, the Respondent cannot demonstrate nor is there evidence to show that it is commonly known by the name “tubmlr”.
Finally, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). This is demonstrated by these circumstances:
(i) the Respondent’s typosquatting of the TUMBLR mark, coupled with the aim of deceiving individuals into divulging their personal information (many panels have held that typosquatting is itself evidence of bad faith registration);
(ii) the Respondent registered the disputed domain name in December 2011, after the TUMBLR mark was first used in commerce. When a search for the term “tubmlr” is performed using the Google search engine and limited to documents available up to the date December 2011, most of the results on the first page of the search are associated with or concern the Complainant and its TUMBLR mark; none of the results involve the Respondent’s use of TUBMLR as an independent mark. It is thus 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 knowledge of, or willful blindness to, the Complainant’s rights in the TUMBLR mark demonstrates bad faith in registration of the disputed domain name; and
(iii) the Respondent has intentionally created a likelihood of confusion with the Complainant’s TUMBLR mark in an attempt to attract Internet users to its site for commercial gain.
As noted above, the Respondent did not file a formal Response but sent several informal email communications to the Center in which it claimed, inter alia, that it had paid USD 13,000 for the disputed domain name which had been sold by way of an auction on Snapnames. It therefore insisted that it should receive compensation for its expenses and loss. It also called into question the Complainant’s right to the disputed domain name in view of the fact that the Complainant did not register its trade mark in China. It contended therefore that the Complaint should be withdrawn or deemed invalid.
6. Discussion and Findings
Paragraph 10 of the Rules prescribes that “the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “the Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
The Panel has accordingly taken into consideration the contents of the Respondent’s email communications and the assertions made therein, albeit they fall short of being a formal Response under the Policy.
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
Consideration of the first condition under paragraph 4(a) requires one to address the submission made by the Respondent, namely that the Complainant has not registered its mark in China and therefore has no claim to the disputed domain name.
The Complainant has submitted evidence which shows that it possesses common law as well as registered rights in the TUMBLR mark. For the purposes of the Policy and these proceedings, this is sufficient and there is no additional requirement for the Complainant to also possess registered (or unregistered) trademark rights in the country where the Respondent is based. Paragraph 4(a)(i) merely prescribes a minimum requirement for complainants to show that they have rights in the trade mark. Paragraph 1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that the consensus view is that:
“if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The location of the trademark, its date of registration (or first use) [...] and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP.”
The Panel therefore disagrees with the Respondent’s contention that the Complaint should be withdrawn for the simple reason that the TUMBLR mark is not registered in China.
The Panel agrees that the disputed domain name, when directly compared, is confusingly similar to the Complainant’s TUMBLR trade mark and that this is a case of typosquatting, a well-known type of cybersquatting in which a respondent registers a domain name which is closely similar to a complainant's trade mark in order to capitalize on foreseeable typographical errors made by Internet users seeking the complainant’s website.
The Panel therefore finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
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 failed to present any evidence which would allow the Panel to make a finding other than that it 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 in circumstances where the registrant is seeking to profit from and exploit the trade mark of another. 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 or 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;
(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;
(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 and the fact that the Respondent claims to have paid USD13,000 for the disputed domain name, the Panel finds it difficult to believe that the Respondent was unaware of the TUMBLR mark and of the Complainant prior to registering the disputed domain name. The combination of letters in the disputed domain name, TUBMLR, does not form a pronounceable word. The Panel draws the inference that the disputed domain name must have had its value to the Respondent because of its confusing similarity to the Complainant’s TUMBLR mark and <tumblr.com> domain name.
The Respondent’s registration and use of a domain name incorporating a mis-spelling of the Complainant’s TUMBLR mark to link to other websites also indicates a deliberate attempt to mislead Internet users so that they would be mistaken into thinking that those sites are in some way associated with, endorsed by or connected to the Complainant (paragraph 4(b)(iv) of the Policy). Such use with the additional effect of causing Internet users to be exposed to potentially malicious software is undoubtedly bad faith use. 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 <tubmlr.com> be transferred to the Complainant.
Date: March 15, 2013