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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Tumblr, Inc. v. Jingsheng Feng

Case No. D2013-0454

1. The Parties

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

The Respondent is Jingsheng Feng of Zhuhai, Guangdong, China.

2. The Domain Names and Registrar

The disputed domain names <gumblr.com>, <tjmblr.com>, <tujblr.com>, <tukblr.com> and <tumbpr.com> are registered with Network Solutions, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 5, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 2, 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.

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 the Respondent of the Complaint, and the proceedings commenced on April 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2013.

The Center appointed Alistair Payne as the sole panelist in this matter on May 1, 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 operates a social sharing and media platform at “www.tumblr.com” on which people create post and share digital content. The platform has operated since 2007 and since that time the Complainant has used the TUMBLR mark in relation to this business and owns United States trade mark registration No. 3,714,214 for the word mark TUMBLR dating from 2007. The Complainant’s Tumblr website has been advertised and marketed in many countries worldwide and hosts over 91 million blogs with 140 million unique visitors per month.

The disputed domain names were first created in May 2011. According to the Registrar, the Respondent registered each disputed domain name, namely <gumblr.com>, <tumbpr.com>, <tukblr.com>, <tujblr.com>, and <tjmblr.com> on May 8, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights in its TUMBLR mark as noted above which has gained considerable repute as a consequence of the very substantial use of its platform to date and of the advertising and marketing that it has done worldwide. It submits that the disputed domain names each differ from its TUMBLR mark by only one letter and that they are each therefore confusingly similar to the Complainant’s mark. The Complainant submits that each of these misspellings relates to a letter on a QWERTY key board that is proximate to the letter that is before or after the inserted character and therefore this amount in each case to an example of typosquatting. It notes that panelists in various prior UDRP cases have found that cases of typosquatting of this sort amount to evidence of confusing similarity, for example, Playboy Enterprises International, Inc. v. Sand Web-Names- For Sale, WIPO Case No. D2001- 0094.

Concerning the second limb of the Policy the Complainant says that the Respondent is neither one of its licensees or agents, has not been authorised to use the Complainant’s TUMBLR mark and has no affiliation with the Complainant. In addition it says that the Respondent is not using any of the disputed domain names in connection with a bona fide offering of goods or services and is not commonly known by any of those disputed domain names and is not making a legitimate fair use or noncommercial use of any of the disputed domain names.

The Complainant asserts that in registering each of the disputed domain names in circumstances that amount to typosquatting, for the purpose of using each of the disputed domain names to re-direct users to a variety of unsolicited advertisements, the Respondent has both registered and used each of the disputed domain names in bad faith. Further, the Complainant submits that the fact that the Respondent registered each of the disputed domain names on the same day more than 5 years after the Complainant first used the TUMBLR mark suggests that the Respondent was well aware of the Complainant’s TUMBLR mark and business and that in registering a series of disputed domain names that differ by only one letter each from this mark the Respondent did so in bad faith. Finally the Complainant submits that such conduct in relation to each of the disputed domain names amounts to intentionally creating a likelihood of confusion with the Complainant’s mark in an attempt to attract users to its site for commercial gain in terms of paragraph 4(b) (iv) of the Policy which is evidence of both registration and use of each of the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel finds that the Complaint is properly brought under paragraph 3(c) of the Rules as a single complaint in relation to each of the five disputed domain names listed in the Complaint. Each of the disputed domain names is owned by the Respondent.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns trade mark rights for the purposes of the Policy in the form of United States trade mark registration No. 3,714,214 for the word mark TUMBLR dating from 2007. It appears to the Panel that this is a coined term which is not part of the English language and is quite distinctive for the Internet based service provided by the Complainant. Based on the very substantial numbers of users and visitors to the Complainant’s website at “www.tumblr.com” it is also reasonable to assume that it enjoys a wide degree of repute.

Each of the disputed domain names, as submitted by the Complainant, differs from this mark by only one letter and each of these substituted letters is proximate in a QWERTY keyboard to the corresponding letter that it replaces in the term “tumblr”. In light of the distinctiveness of the TUMBLR mark and of its renown this apparent misspelling in each of the disputed domain names of a single letter that could easily be mis-typed appears to the Panel to be more than just a co-incidence and amounts to a classic example of typo-squatting. For the purposes of the first limb of the Policy this amounts to evidence of confusing similarity, see for example, Playboy Enterprises International, Inc. v. Sand Web-Names- For Sale, supra.

As a result the Panel finds that the Complainant has successfully made out its case under the first limb of the Policy in relation to each of the disputed domain names.

B. Rights or Legitimate Interests

The Panel considers that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in and of the disputed domain names. There is no evidence before the Panel to suggest that the Respondent has any legitimate interest in any of the disputed domain names, or that it has used any of them for a bona fide purpose. Nor is there any evidence that it has any affiliation with the Complainant or has been authorized to use the Complainant’s TUMBLR mark. None of the disputed domain names are being used for noncommercial purposes and in the circumstances of the Respondent’s registration and use of each of the disputed domain names as set out below, the Panel finds that the Respondent’s lack of bona fide is inconsistent with a legitimate right or interest.

Accordingly the Complaint succeeds in relation to the second element of the Policy.

C. Registered and Used in Bad Faith

Each of the disputed domain names was registered by the Respondent on the same day in 2012, some five years after the Complainant commenced its business activities under the TUMBLR mark. Considering the high degree of distinctiveness of the TUMBLR mark and the significant use made of it and hence repute attaching to it by that date, the Panel infers that it was not mere coincidence that drove the Respondent to choose to register, on the same day, the five disputed domain names which differed from the Complainant’s mark by only one letter and in circumstances that each of those letters is proximate to the original letter that it replaces.

It appears to the Panel that the Respondent registered each of the disputed domain names purposefully and in order to confuse and divert Internet users. Each of the disputed domain names resolves to a web page featuring unsolicited advertisements which are not authorized by the Complainant and most likely result in some commercial gain to the Respondent. This is a classic example of typosquatting and previous UDRP panels have also been prepared in these circumstances to infer bad faith registration, for example, see Amazon.com, Inc. v. Steve Newman, WIPO Case No. D2006-0517.

The Panel finds that use of the disputed domain names in this manner amounts to intentionally creating a likelihood of confusion with the Complainant’s mark in an attempt to attract users who were otherwise seeking the Complainant’s website at “www.tumblr.com” to its site for commercial gain in terms of paragraph 4(b)(iv) of the Policy. This is evidence of both registration and use of each of the disputed domain names in bad faith.

Accordingly the Complaint succeeds under the third element of the Policy.

7. Decision

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 names <gumblr.com>, <tjmblr.com>, <tujblr.com>, <tukblr.com> and <tumbpr.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: May 10, 2013

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