WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. WhoisGuard Protected / Alex O. Balansag
Case No. D2013-0244
1. The Parties
The Complainant is Tumblr, Inc. of New York, New York, United States of America (“US”), represented internally.
The Respondent is WhoisGuard Protected of Los Angeles, California, US/ Alex O. Balansag of Antipolo, Rizal, Philippines.
2. The Domain Name and Registrar
The disputed domain name <tumlr.com> is registered with eNom (the “Registrar”).
3. 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 7, 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 14, 2013.
The Center verified that 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 8, 2013.
The Center appointed David H. Tatham as the sole panelist in this matter on March 14, 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 is a US corporation, active since February 2007 and the owner of US trademark registration No. 3,714,214 for the word TUMBLR.
The disputed domain name is <tumlr.com> which was registered on April 14, 2007.
5. Parties’ Contentions
The Complainant operates a social sharing platform and media network under the name “tumblr” that was first released to the public in February 2007. The Complainant filed an Affidavit from its General Counsel and Assistant Secretary. In this, he asserts that, at the Complainant’s above mentioned platform, millions of individuals are able to create, post, and share digital content such as text, photographs, quotes, links, audio or video clips online as well as many other products and services and that, at the time the Complaint was filed, there were over 91 million blogs on its website which attracts over 140 million unique visitors per month.
The Complainant also contends that the word “tumblr” has no meaning other than as the name of its services, or as its trademark. This mark was registered in the US on November 24, 2009 under No. 3,714,214 in respect of “Electronic publishing services, namely publishing of online works of others featuring electronic media, multimedia contents, videos, movies, pictures, images text, photos, user-generated content, and related information via the Internet and other communications networks; electronic publishing of blogs of others” in Class 41 and “Internet based social networking services allowing users to communicate and share, store, transmit, view and download text, images, audio and video content, and other multimedia materials” in Class 45. The registration claimed February 19, 2007 as its date of first use. The Complainant contends that this mark has been continually and extensively used, advertised, marketed and promoted both within the US and elsewhere.
The Complainant also noted that in 2012 it had succeeded in an action under the Policy against the domain name <tumblrlinks.com>. See Tumblr, Inc. v. Thomas Kimber, WIPO Case No. D2012-0609.
Pursuant to the Policy, paragraph 4(a), the Complainant contends that the disputed domain name is confusingly similar to its trademark, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Paragraph 5(b)(i) of the Rules specifies that a respondent may “respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name[.]”
In this case, the Center forwarded the Complaint to the Respondent, in compliance with paragraph 2(a) of the Rules, and the Respondent has thereby been given an opportunity to present its case, but it has failed to do so.
Paragraph 14(b) of the Rules specifies that, in the event of a default, “…the Panel shall draw such inferences therefrom as it considers appropriate.” For example, the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443, stated that “[s]ince the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant. […] In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In these proceedings, since the Respondent has chosen not to submit a response, its default entitles the Panel to conclude that it has no arguments or evidence to rebut the Complainant’s assertions, and the Panel will therefore make its decision on the basis of the statements and documents before it, in accordance with the Policy, the Rules, and any rules and principles of law that are deemed applicable.
B. Identical or Confusingly Similar
The Complainant has a US registration of the trademark TUMBLR and it supplied a copy of this. Full details are recited above in section 5A.
It is by now well established that, when comparing a domain name with a trademark, then a gTLD such as – in this case – “.com” may be disregarded. See, for example, Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 in which the panel found 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 to the Complainant’s trademark.
The question of confusing similarity lies at the very heart of trademark conflicts, where the test may typically be whether the names are phonetically, visually, or conceptually similar. The same thinking is carried over into decisions under the Policy because the words “identical or confusingly similar” appear in paragraph 4(a)(i) thereof.
The comparison in the present case is between the trademark TUMBLR and the word ‘tumlr’. In the latter we have exactly the same letters as in the trademark TUMBLR, and in exactly the same sequence, but with the omission of the single letter “b”. In the opinion of the Panel there is virtually no difference between the two words and that this is a clear case of “typosquatting”. It was said, for example, in Edmunds.com Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, “the disputed domain name is a slight misspelling of a registered trademark to divert Internet traffic[…] The practice of typosquatting has been consistently regarded in previous UDRP decisions as creating domain names confusingly similar to the relevant mark”. Also, in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") paragraph 1.10, it is stated that the consensus view is that “a domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”
There can be little doubt in the Panel’s mind that in this case the disputed domain name and the mark are confusingly similar and so the requirement of paragraph 4(a)(i) of the Policy is therefore met.
C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has established a prima facie case under paragraph 4(a)(ii), namely that the Respondent has no rights or legitimate interests in the disputed domain name and it is well established that once a complainant has made out a prima facie case that a respondent has no rights or legitimate interests in a domain name, then the burden of production shifts to the respondent to prove otherwise. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 741828, in which it was held that a complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in a domain name under paragraph 4(a)(ii) of the Policy before the burden shifts to the respondent to show that it does have rights or legitimate interests in the domain name.
In the present case, the Respondent has chosen not to file anything in his defence despite the burden of production and the consequences under the Rules for doing so (see above). If the Respondent had any justification for registering or using the disputed domain name, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in paragraph 4(c) of the Policy, or indeed in any other circumstance, are in its favour. The Panel finds that none of the circumstances illustrated by paragraph 4(c) of the Policy apply.
The only information available about the Respondent is the WhoIs information provided by the Registrar. This contains no evidence of any rights or legitimate interests of the Respondent in the disputed domain name, which, as found above, is confusingly similar to the Complainant’s name and trademark TUMBLR.
The Respondent makes no claims for having rights or legitimate interests in respect of the disputed domain name, and provides no explanation whatsoever for its registration and use.
The above circumstances merely serve to confirm the Complainant’s prima facie case, and the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, so that the requirements of paragraph 4(a)(ii) of the Policy are also satisfied.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which are evidence that a respondent has registered and is using a domain name in bad faith. In this case, the Panel believes that the Respondent is in contravention of two of the provisions under that paragraph.
For instance, the registration of the disputed domain name does appear to have been made “primarily for the purpose of disrupting” the Complainant’s business and it is, in this Panel’s opinion, an intentional attempt “to attract, for commercial gain, Internet users to” the Respondent’s website. These fall squarely within paragraphs 4(b)(iii) and (iv) of the Policy.
The Respondent must have been aware of the Complainant’s name and trademark TUMBLR at the time of registration of the disputed domain name. TUMBLR has been in active use for more than 6 years and its trademark registration indicates a date of first use in commerce to the registration of the disputed domain name. The Complainant’s website at <tumblr.com> attracts millions of visitors every day. It is therefore well known to a large number of people. A visual and phonetic comparison between the trademark TUMBLR and the disputed domain name <tumlr.com> shows such a clear similarity that it is almost inconceivable that the latter could not have been chosen in ignorance of the former at the time of the registration of the registration of the disputed domain name.
Additionally, the Panel finds Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services because Respondent’s website operates as a domain name parking site that incorporates sponsored links within the meaning of paragraph 4(b)(iv) of the Policy.
Once again it is worth pointing out that the Respondent has filed no response so it has not attempted to rebut the Complainant’s arguments on this point and the Panel concludes that paragraph 4(a)(iii) has also 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 <tumlr.com> be transferred to the Complainant.
David H. Tatham
Date: April 5, 2013