WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. WHOIS Agent, Domain WhoIs Protection Service / jiangchunyuan
Case No. D2014-1132
1. The Parties
The Complainant is Tumblr, Inc. of New York, New York, United States of America ("USA"), represented by Kilpatrick Townsend & Stockton LLP, USA.
The Respondent is WHOIS Agent, Domain WhoIs Protection Service of Beijing, China; jiangchunyuan of Nanchang, Jiangxi, China.
2. The Domain Name and Registrar
The disputed domain name <gtumblr.com> is registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 30, 2014. On July 1, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 3, 2014, 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 July 7, 2014 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 July 9, 2014.
On July 7, 2014, the Center transmitted an email to the parties in both English and Chinese regarding the language of the proceeding. On July 9, 2014, the Complainant confirmed its request that English be the language of the proceeding. On July 7, 2014 and July 12, 2014, the Respondent sent email communications to the Center requesting that Chinese be the language of the proceeding.
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 in both English and Chinese, and the proceeding commenced on July 11, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 31, 2014. The Respondent did not submit any Response. On August 1, 2014, the Center notified the parties that it would proceed with the panel appointment.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on August 12, 2014. 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 company incorporated in the USA offering a social platform.
The Complainant is the owner of several registrations in the USA, a Community Trade Mark registration, and registrations in Australia, Japan and New Zealand, for the trade mark TUMBLR (the "Trade Mark").
The Respondent is an individual apparently with an address in China.
C. The Disputed Domain Name
The disputed domain name was registered on February 15, 2014.
5. Parties' Contentions
The Complainant made the following submissions in the Complaint.
The Trade Mark is a coined word, having no meaning other than as a trade mark denoting the goods and services of the Complainant.
The Complainant owns and operates the Tumblr microblogging and social sharing platform, launched in February 2007. The Complainant's platform allows individuals to post content (such as text, photos, quotes, links, audio, and videos) to an Internet-accessible blog. The Complainant ranks 35th worldwide and 29th in the USA in terms of reach according to "comScore.com". To date, the Tumblr platform hosts over 159 million blogs containing more than 70.3 billion posts, with 175 million unique visitors per month worldwide and 50 million unique visitors per month in the USA. By January 2013, "www.tumblr.com" had over 29 million unique visitors per month in the USA alone and more than 93 million unique visitors per month worldwide.
Since launching the initial version of the platform in 2007, the Complainant has used the Trade Mark in relation to its publishing of online media and its Internet based social networking services, as well as other products and services.
The disputed domain name is confusingly similar to the Trade Mark. It consists of the Trade Mark preceded by the letter "g", which is located near the letter "t" on a "QWERTY" keyboard. In registering the disputed domain name, the Respondent is attempting to capitalise on a predictable typo of the Trade Mark, and is hoping to acquire web traffic from people who accidentally misspell the Complainant's website "www.tumblr.com".
The Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Respondent is not commonly known by the disputed domain name and is not making a bona fide commercial use of the disputed domain name.
The disputed domain name has been registered and is being used in bad faith. It has been used by the Respondent in respect of a website which redirects Internet traffic clearly intended for "www.tumblr.com" to a parked website displaying sponsored click-through links to third party products and services.
The Respondent did not reply to the 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 unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the language of the proceeding should be English.
Paragraph 11(a) allows the Panel to determine the language of the proceeding 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 proceeding. 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 disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) The Complainant is a USA based company that conducts its daily operations in English. Thus, it would be cumbersome and to the Complainant's disadvantage to be forced to conduct this proceeding in Chinese;
(2) The disputed domain name incorporates the Trade Mark in its entirety, which is derived from the English word "tumblelog", as recognized by prior UDRP panels;
(3) All the content displayed by the Respondent on the website at the disputed domain name is in English;
(4) The Respondent was also the named respondent in a prior UDRP proceeding in which the panel noted that the Respondent sent informal email communications to the Center in both English and Chinese; See Tumblr, Inc. v. Privacy Protect.org / jiangchunyuan, WIPO Case No. D2013-0243.
(5) Since the Respondent is capable of corresponding in English, and because the Complainant's counsel cannot correspond in Chinese without enduring cumbersome and costly efforts, in the spirit of fairness under paragraph 11 of the Rules, the language of the proceeding should be English.
The Respondent did not file a Response. The Respondent has however requested that Chinese be the language of the proceeding as the language of the registration agreement for the disputed domain name is Chinese and the Respondent does not understand English. The Respondent has also asked that all of the documents in the proceeding, including the Complaint and its annexures be translated into Chinese.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties' ability to understand and use the proposed language, time and costs.
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest, contrary to the bare assertions of the Respondent, the likely possibility that the Respondent is conversant and proficient in the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. The Panel notes also this is a default case, even if the Respondent submitted email communications in which he indicated his request for Chinese to be the language of the proceeding.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name by several years.
This is a clear cut case of typosquatting.
The Panel therefore finds that the disputed domain name is confusingly similar to the Trade Mark and holds that the Complaint fulfills 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 non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i)before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii)the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii)the Respondent is 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 trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent's registration of the disputed domain name by several years. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the website, which provides sponsored links to third party websites in order to generate pay-per-click revenue for the Respondent. In all the circumstances of this case, the Panel concludes such use does not amount to a bona fide offering of goods or services under the Policy.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent more likely than not was aware of the Complainant and had the Trade Mark in mind when registering the disputed domain name. The evidence demonstrates that the disputed domain name has been registered and used in order to attract Internet users to the website at the disputed domain name for commercial gain, by creating a likelihood of confusion with the Trade Mark, in order to generate pay-per-click revenue for the Respondent. This falls squarely within the example of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <gtumblr.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: August 26, 2014