WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. liangshitao
Case No. D2014-1575
1. The Parties
The Complainant is Tumblr, Inc. of New York, New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is liangshitao of China.
2. The Domain Name and Registrar
The disputed domain name <tumblrgames.com> is registered with Hangzhou AiMing Network Co., LTD (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 12, 2014. On September 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 16, 2014, 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 September 16, 2014, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding 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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on September 23, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 14, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on October 17, 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, 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, and registered on November 24, 2009. The Complainant also has numerous registrations outside the United States.
The Complainant 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 <tumblrgames.com> was registered on February 8, 2011.
The disputed domain name does not resolve to an active web page.
In response to a cease and desist letter from the Complainant, the Respondent offered to sell the disputed domain for USD 2,800. This was subsequently reduced to USD 1,800.
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 "games".
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 to sell it to the Complainant or the intention of diverting Internet users to the Respondent's website when the website is activated. The Complainant also alleges the Respondent registered the domain name <tumblrpay.com> (which subsequently expired) showing evidence of a pattern of bad faith use and registration.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Language of the Proceeding
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 the proceeding to be English mainly on the grounds that the Respondent communicated with the Complainant in English and the Complainant is not familiar with Chinese.
The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. The Respondent did respond to the Complainant in English. However, these responses were very short and did not necessarily show an ability to communicate at a high level in English. They did, however, show an ability to understand the nature of the Complaint made by the Complainant.
This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
The Respondent clearly understands the nature of this proceeding, but did not respond to the language request. Further, as set out below, this Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
A. Identical or Confusingly Similar
The Complainant has demonstrated it has trademark rights in TUMBLR.
The disputed domain name <tumblrgames.com> is composed of the Complainant's registered trademark TUMBLR and the generic term "games". 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 first element of the Policy is made out.
B. Rights or Legitimate Interests
The Respondent has not 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 Policy is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name <tumblrgames.com> was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(i) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where there are:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name."
The offer to sell the disputed domain name for USD 2,800, reduced to USD 1,800, falls within paragraph 4(b)(i) of the Policy. Both figures are much more than the out-of-pocket expenses for registering a domain name.
The third element of the Policy 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 <tumblrgames.com> be transferred to the Complainant.
Date: October 24, 2014