WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tumblr, Inc. v. duanxiangwang

Case No. D2013-0441

1. The Parties

Complainant is Tumblr, Inc. of New York, New York, United States of America, represented internally.

Respondent is duanxiangwang of Shenzhen, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <tymblr.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 March 1, 2013. On March 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 6, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of proceedings. On March 12, 2013, Complainant requested that English be the language of proceeding. Respondent did not comment on the language of proceedings by the specified due date.

The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on March 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 5, 2013.

The Center appointed Yijun Tian as the sole panelist in this matter on April 17, 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

Complainant, Tumblr, Inc., is a company incorporated in New York, New York, United States of America. It owns and operates a social sharing platform and media network that since February 2007. The Tumblr platform hosts over 91 million blogs with over 140 million unique visitors per month. (Annex 6 and Annex 9 to the Complaint). Complainant has exclusive rights in the TUMBLR Marks in relation to its products and service since 2007 (see Annexes 5-6 to the Complaint). Complainant is the exclusive owner of well-known registered trademarks TUMBLR in the United States (US) (since 2007, registered November 24, 2009; see Annex 5 to the Complaint).

Respondent is duanxiangwang of Shenzhen, Guangdong, China. The disputed domain name <tymblr.com> was registered on April 20, 2009, after the TUMBLR Marks became well-known.

5. Parties’ Contentions

A. Complainant

(a) The disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(i) Complainant owns trademark rights in its inherently distinctive TUMBLR Mark.

- Complainant owns and operates a social sharing platform and media network since February 2007. The platform allows individuals to create, post, and share digital content (such as text, photos, quotes, links, audio, and videos) online.

- <tumblr.com> ranks in the top 15 in terms of reach according to “www.quantcast.com”. The Tumblr platform currently hosts over 91 million blogs with over 140 million unique visitors per month. (Annex 6 and Annex 9 to the Complaint).

- Complainant is the owner of United States Trademark Registration for the TUMBLR Mark since November 24, 2009, with first use since 2007. (Annex 5 to the Compliant.)

- Complainant owns and operates a number of websites including its primary site <tumblr.com>, through which millions of individuals access the Tumblr platform. (Annex 6 to the Complaint.)

- The term “tumblr” is a coined word, having no meaning other than as a trademark denoting the goods and services of Tumblr.

- Complainant has continuously and extensively used, advertised, marketed, and promoted it’s TUMBLR Mark, both within the US and in foreign countries (Annex 6 to the Compliant). As a result, the TUMBLR Mark has come to identify and distinguish Tumblr’s goods and services.

(ii) The Domain Name <tymblr.com > is confusingly similar to Tumblr’s TUMBLR Mark.

- The disputed domain name, <tymblr.com>, consists of a misspelling of “Tumblr” that substitutes the letter “y” for the letter “u”. The element “tumblr” is identical to Tumblr’s federally registered TUMBLR Mark. <tymblr.com>, which differs from the TUMBLR mark only in that it substitutes the letter “y”, is confusingly similar to Tumblr’s TUMBLR Mark.

- Respondent, in registering the disputed Domain Name, is attempting to capitalize on a predictable typo of the word “tumblr.” Respondent hopes to acquire web traffic from people who accidentally misspell the <tumblr.com> domain name.

- This practice is widely known as “typosquatting” and has been held to be evidence of confusing similarity. Panels have generally held that typosquatted domains which substitute a single letter are confusingly similar to the marks for which the domains are typos.

- The use of the gTLD “.com” in a disputed domain name does not affect a finding of similarity.

(b) Respondent has no rights or legitimate interests in respect of the disputed domain name;

- Respondent is neither an agent nor a licensee of Tumblr, and has never been affiliated or authorized by Tumblr to use the TUMBLR Mark. (Annex 6 to the Complaint).

- Respondent cannot show that it: uses <tymblr.com> in connection with a bona fide offering of goods and services; is commonly known by <tymblr.com>; or is making a legitimate noncommercial or fair use of <tymblr.com>, without intent for commercial gain to misleadingly divert consumers or to tarnish the TUMBLR Mark.

- Respondent is not using <tymblr.com> in connection with a bona fide offering of goods or services, because the site resolved by that domain name exploits Tumblr’s trademark rights in its TUMBLR Mark.

- Once the disputed domain name is entered, it is redirected to a website advertising that an individual can obtain a free Apple product by filling in the individual’s personal information. (Annex 3 to the Complaint).

- Comparison of the screenshot from Respondent’s website with one of a typical Tumblr webpage further shows that Respondent purposefully mimicked Tumblr’s style and design in order to mislead people into believing that Respondent’s site is owned by, or operated with the consent of, Tumblr. (Annex 3 and Annex 7 to the Complaint).

- Respondent’s website seeks to obtain personal information of individuals under the guise of offering them free products. Such services, arbitration panels have held, are not bona fide offerings of goods or services.

- Respondent here, by typosquatting the TUMBLR Mark, aims to deceive Tumblr visitors into believing <tymblr.com> is affiliated with Tumblr thereby enticing those individuals to divulge their personal information. This type of phishing is not a bona fide offering of goods or services.

- Respondent cannot demonstrate that it is commonly known by “tymblr.” Neither a Google search nor the website found at <tymblr.com> provides any evidence that Respondent is commonly known as “tymblr” or <tymblr.com>. (Annexes 3 and 8 to the Compliant.)

- Respondent is not making a legitimate noncommercial or fair use of the domain name. Respondent is using <tymblr.com> to exploit the TUMBLR Mark, and to mislead Tumblr visitors and users to divulge personal information for Respondent’s financial gain. (Annexes 3 and 6 to the Complaint).

(c) The disputed domain name was registered and is being used in bad faith.

(i) Respondent registered the <tymblr.com> domain name in bad faith.

- Respondent’s typosquatting of the TUMBLR Mark, coupled with Respondent’s goal of deceiving individuals into divulging their personal information, demonstrate that Respondent registered and is using the <tymblr.com> domain in bad faith.

- Respondent’s registration of a domain name that omits one letter in the TUMBLR Mark constitutes typosquatting.

- Respondent registered the <tymblr.com > in April 2009, after the Tumblr mark was first used in commerce. (Annex 5 to the Compliant).

- When a Google search for the term “tymblr” is performed and limited to documents available up to April 2009, most of the results on the first page of the search are associated with or concern Tumblr. (Annex 10 to the Complaint). None of the results involve Respondent’s use of “tymblr” as an independent mark.

- It is difficult to believe that Respondent obtained the disputed domain name without being aware of the TUMBLR Mark.

(ii) Respondent is using the <tymblr.com > domain in bad faith.

- Under the Policy, bad faith use is proven when a respondent has intentionally created a likelihood of confusion with Complainant’s mark in an attempt to attract users to its site for commercial gain.

- Respondent is using the disputed domain name to deceive individuals into divulging personal information in hopes of winning a free Apple product. (Annex 3 to the Complaint.)

- As a result, Respondent is receiving commercial gain through these individuals. This practice violates the terms of the Policy, and indeed past UDRP panels, in evaluating virtually identical practices, have so ruled.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceedings should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceedings for the following reasons:

(a) The website located at the disputed domain name is displayed entirely in English (Annex 3 to the Complaint), which constitutes strong evidence that Respondent understands English.

(b) Complainant is a US-based company that conducts its daily operations in English. It would be “genuinely difficult” and create undue burden for Complainant to “translate all the submissions into and take part in the proceeding” in Chinese.

(c) Previous courts have found the language of words contained in the disputed domain name itself persuasive when determining the language of the proceedings.

(d) The disputed domain name is a predictable typo of “Tumblr,” which is a coined term that derives from the English word “tumblelog.” Neither “Tumblr” nor “tumblelog” resemble words in Chinese.

Respondent did not make any submissions with respect to the language of the proceedings and did not object to the use of English as the language of the proceedings.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceedings having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceedings. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name dispute. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceedings should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further states:

“in certain situations, where Respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement”. (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the US, and Complainant will be spared the burden of working in Chinese as the language of the proceedings. The Panel has also taken into consideration the facts that the websites at the disputed domain name includes Latin characters “tymblr” (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds adequate grounds in the present proceeding to accept Complainant’s request and to proceed in English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <tymblr.com > is registered in Latin characters, rather than Chinese script; (b) the Website at the disputed domain name is an English-based website (Annex 3 to the Complaint); (c) the Website appears to have been directed to users worldwide (particularly English speakers) rather than Chinese speakers; (d) the Center has notified Respondent of the proceedings in both Chinese and English, and Respondent has indicated no objection to Complainant’s request that English be the language of the proceedings; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the TUMBLR Marks acquired through registration. The TUMBLR Marks have been registered in the U.S. (since 2009). Complainant has a widespread reputation as a company that own and operate a social sharing platform and media network.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The WIPO Overview 2.0, paragraph 1.10, states: “Consensus view: 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.”

The disputed domain name consists of a misspelling (typosquatting) of “tumblr” that substitues the letter “y” for the letter “u”. In the other words, it comprises the most of characters of TUMBLR Mark, and it differs from the TUMBLR mark only in that it substitutes the letter “y” for the letter “u”. Thus, the Panel finds that the difference is not sufficient to negate the confusing similarity between the disputed domain name and the TUMBLR Marks. (see also Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775; and Fuji Photo Film U.S.A., Inc. v. LaPorte Holdings, WIPO Case No. D2004-0971).

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) the fact that Respondent has commonly been known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant is the exclusive owner of the well-known registered trademarks TUMBLR in the U.S., and operates a social sharing platform and media network under the trademark with first use of commerce since 2007, which precedes Respondent’s registration of the disputed domain name (in 2009). According to Complainant, the Tumblr platform currently hosts over 91 million blogs with over 140 million unique visitors per month. (Annex 6 and Annex 9 to the Complaint).

Moreover, Respondent is not an authorized dealer of TUMBLR branded products. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “tymblr” in its business operation and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the TUMBLR Mark or to apply for or use any domain name incorporating the TUMBLR Marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name <tymblr.com> was registered on April 20, 2009. The disputed domain name is identical or confusingly similar to Complainant’s TUMBLR Marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, it seems that Complainant attempts to attract users to its site for commercial gain. It is using the site to attract individuals into divulging personal information in hopes of winning a free Apple product. (Annex 3 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name in light of Complainant’s prima facie case. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent registered and has been using the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the TUMBLR Mark with regard to its services. Complainant has registered its TUMBLR Marks in the US (with first use in commerce since 2007 and registration in 2009). As introduced above, according to Complainant, the Tumblr platform currently hosts over 91 million blogs with over 140 million unique visitors per month. And according to Complainant, comparison of the screenshot from Respondent’s website with one of a typical Tumblr webpage further shows that Respondent seems to purposefully mimick Tumblr’s style and design. (Annexes 3 and 7 to the Complaint). Thus, it is not conceivable to the Panel that Respondent would not have had actual notice of Complainant’s trademark right at the time of the registration of the disputed domain name. The Panel therefore finds that the TUMBLR Mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Moreover, Respondent has chosen not to formally respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of Respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787). And many former panels held that “it is well settled under the Policy that the practice of typosquatting, in and of itself, constitutes bad faith registration” (see Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517; ESPN, Inc. v. XC2, WIPO Case No. D2005-0444). Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s TUMBLR branded products

b) Used in Bad Faith

Complainant has adduced evidence to prove that by using a confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”. Complainant claimed that, by using the disputed domain name, Respondent attempts to attract users to its site for commercial gain, and is using the site to attract individuals into divulging personal information in hopes of winning free products. (Annex 3 to the Complaint).

To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed. (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. and Wal-Mart China Co. Ltd v. Liangchenyong, ADNDRC Case No. HKcc-0800008).

Given the widespread reputation of the TUMBLR Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name is resolved. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the TUMBLR Marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainant is made on the homepage of the disputed domain name, potential Internet users are likely led to believe that the website at <tymblr.com > is either Complainant’s site or the site of official authorized agents of Complainant, while it is not. Moreover, Respondent has not responded formally to the Complaint. The Panel therefore concludes that the disputed domain name was used by Respondent in bad faith.

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to Complainant’s trademark, intended to ride on the goodwill of Complainant’s trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent on the Website to which the disputed domain name resolves are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <tymblr.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: May 18, 2013