WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. 黄素芬 (Huang Sufen)
Case No. D2013-0146
1. The Parties
The Complainant is Tumblr, Inc. of New York, New York, United States of America, represented internally.
The Respondent is 黄素芬 (Huang Sufen) of Shenzhen, Guandong, China.
2. The Domain Name and Registrar
The disputed domain name <wwwtumblr.com> is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On January 25, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same day, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 25, 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 1, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 22, 2013.
The Center received email communications from the Respondent on February 26, 27, and 28, 2013 requesting for information about whether legal action in court would stop the proceedings. The Center acknowledged receipt of these emails and provided information with respect to this matter.
The Center appointed Douglas Clark as the sole panelist in this matter on March 5, 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.
Language of Proceedings
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
The Complainant requested the language of proceedings to be English on the grounds that the website at the disputed domain name resolves to is in English and the Complainant is not familiar with Chinese.
It is clear to this Panel that the Respondent has a good command of English and the Panel determines the language of proceedings to be English.
4. Factual Background
The Complainant, Tumblr Inc., was founded in February 2007 and operates a microblogging and social sharing platform. The Complainant is the registered proprietor of United States trademark no. 3,714,214 TUMBLR filed on October 27, 2008 claiming first use in commerce from February 19, 2007. The Complainant also owns and operates a number of websites including its primary site “www.tumblr.com”, through which millions of individuals access the Complainant’s platform.
The disputed domain name <wwwtumblr.com> was registered on July 7, 2007.
At the time of filing the Complaint, the website to which the disputed domain name resolves stated that the Internet user accessing the site had won a prize, and sought personal information from the user. At the time of the notification of Complaint, the website at the disputed domain name appeared to have been redirected to the website of “www1.socialsurvey.shottensteins.com/?framerequest=1&refurl=”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its registered trademark TUMBLR. It is composed of the Complainant’s trademark TUMBLR and the generic term “www”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name. The Complainant contends that the Respondent has no commercial relationship with the Complainant and the Respondent is not a licensee of the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith with the intention of diverting Internet users to the Respondent’s website so as to misappropriate their personal information.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated it has trademark rights in TUMBLR.
The disputed domain name <wwwtumblr.com> is composed of the Complainant’s registered trademark TUMBLR and the generic term “www”. The Panel finds the disputed domain name is confusingly similar to the Complainant’s registered trademark.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel notes that the disputed domain name was registered before the Complainant’s trademark was applied for. However, the ownership of a trademark is generally considered a threshold, or standing, issue. (See paragraph 1.1 of the WIPO Overview 2.0).
The first element of the UDRP is made out.
B. Rights or Legitimate Interests
The Respondent has not formally responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name <wwwtumblr.com> was registered in bad faith and is being used in bad faith.
The Panel has noted that the disputed domain name was registered before the Complainant applied for the registered trademark TUMBLR. However, TUMBLR is clearly an invented word and as noted the Complainant’s registered trademark TUMBLR claims first use in commerce from February 19, 2007. The Respondent must have been aware of the Complainant when applying for the disputed domain name. (See paragraph 3.1 of WIPO Overview 2.0). Similarly, the Panel notes the delay in bringing this case, but notes that this is not in itself a reason to reject a complaint. (See paragraph 4.1 of WIPO Overview 2.0).
For the above reasons the Panel concludes the disputed domain name was registered in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location”.
The third element of the UDRP is made out.
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 <wwwtumblr.com> be transferred to the Complainant.
Date: March 18, 2013