WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tumblr, Inc. v. Chris Dutton / The trustee for Bean Media Group Trust
Case No. DAU2013-0017
1. The Parties
The Complainant is Tumblr, Inc. of New York, United States of America, represented by Arian Shahdadi, United States of America.
The Respondent is Chris Dutton / The trustee for Bean Media Group Trust of New South Wales, Australia.
2. The Domain Name and Registrar
The disputed domain name <tumblr.com.au> (the “Disputed Domain Name”) is registered with NetRegistryPty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 7, 2013. On June 10,2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 13, 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 .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 June 14, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 4, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 5, 2013.
The Center appointed John Swinson as the sole panelist in this matter on July 16, 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 is Tumblr, Inc., a Delaware corporation that has owned and operated a social sharing platform and media network since February 2007. The Complainant owns and operates a number of websites, including its primary site at the domain name <tumblr.com> (which is the third-most visited website in Australia). As at the date the Complaint was filed the Tumblr platform hosts over 100 million blogs with over 200 million unique visitors per month, including 4.5 million unique visitors from Australia.
The Complainant is the owner of Australian Trade Mark Registration No. 1507377 for TUMBLR. logo mark (registered August 9, 2012) and United States Trade Mark Registration No. 3,714,214 (registered November 24, 2009) for TUMBLR. The Complainant also owns trade mark registrations for TUMBLR in other countries (together, the “Trade Mark”).
The Respondent is Chris Dutton / The trustee for Bean Media Group Trust of New South Wales, Australia. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent became the registrant of the Disputed Domain Name on January 30, 2012.
In the past, the Disputed Domain Name has redirected to an online gambling website at “www.spinpalace.com”. Currently, the Disputed Domain Name resolves to an index page with very little content.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is identical to the Trade Mark. The Disputed Domain Name consists of the Trade Mark plus the Australian ccTLD extension “.com.au”. As such, it contains the entire Trade Mark without modification or addition.
Rights or Legitimate Interests
The Respondent cannot show that it has rights or legitimate interests in the Disputed Domain Name. Specifically, it cannot show that it:
- uses or is preparing to use the Disputed Domain Name in connection with a bona fide offering of goods or services. The Disputed Domain Name currently resolves to a blank index page. In the past, it has been used to redirect Internet users to online gambling websites (through typosquatting). This is inconsistent with the Respondent’s business registration, which indicates that the Respondent’s primary business is to act as a discretionary trust in the online gambling sector;
- is commonly known by the Disputed Domain Name; or
- is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for financial gain to misleadingly divert consumers or tarnish the Trade Mark.
Registered or Subsequently Used in Bad Faith
The Respondent’s bad faith registration and use is demonstrated by the following:
- the Respondent is typosquatting (the Disputed Domain Name wholly incorporates the Trade Mark);
- the Respondent has used the Disputed Domain Name to redirect users to online gambling websites for commercial gain;
- the evidence strongly indicates that the Respondent was aware of the Trade Mark at the time of registration. The earliest record of the Disputed Domain Name is over two years after the Trade Mark was first used in commerce worldwide (February 2007); and
- the Respondent is currently passively holding the Disputed Domain Name.
The Respondent submits that the registration information for the Disputed Domain Name was updated with the Respondent’s details sometime between January and April 2012. Transfer to a new registrant constitutes “registration” for the purpose of determining bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or subsequently used in bad faith.
The onus of proving these elements is on the Complainant.
The Panel notes that although the Policy and the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) are distinct policies, both share substantial similarities. Therefore, the Panel finds it appropriate to refer to UDRP precedent in certain instances when deciding this case.
A. Procedural Matters
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see e.g. Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-141 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights.
The Panel has verified that the Complainant owns the Trade Mark.
The Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- there is no evidence that the Respondent is commonly known by the Disputed Domain Name;
- there is no evidence that the Respondent has any connection with the Trade Mark and the Complainant has not given the Respondent any permission to use the Trade Mark; and
- the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services and is not making a legitimate non-commercial or fair use of the Disputed Domain Name. In fact, currently the Respondent is not using the Disputed Domain Name at all (the website at the Disputed Domain Name is an index page with very little content). The Respondent is passively holding the Disputed Domain Name. Additionally, according to the information provided by the Complainant, the Respondent has previously used the Disputed Domain Name to attempt to attract users to its online gambling website for commercial gain.
The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered or Subsequently Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used in bad faith.
It appears that the Respondent became the registrant of the Disputed Domain Name on January 30, 2012. The Complainant and the Trade Mark were extremely well-known in 2012 in Australia (as well as in 2009 when it appears that the Disputed Domain Name was first registered by another person). The Complainant’s website at the domain name <tumblr.com> attracts millions of visitors every day. Additionally, the word “tumblr” has no dictionary meaning. It would be highly unlikely that the Respondent was unaware of the Complainant when it registered the Disputed Domain Name.
This is a classic case of typosquatting. The Wikipedia entry for “typosquatting” usefully summarizes this practice:
“Typosquatting, also called URL hijacking, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter
The typosquatter's URL will usually be one of four kinds, all similar to the victim site address:
(In the following, the intended website is “example.com”)
- A common misspelling, or foreign language spelling, of the intended site: exemple.com
- A misspelling based on typing errors: xample.com or examlpe.com
- A differently phrased domain name: examples.com
- A different top-level domain: example.org
Once in the typosquatter’s site, the user may also be tricked into thinking that they are in fact in the real site; through the use of copied or similar logos, website layouts or content.”
Here, the fourth kind of typosquatting has occurred. A different top-level domain (i.e. “.com.au”) is used in the Disputed Domain Name. This results in a likelihood of confusion with the Complainant’s domain name at <tumblr.com>, which inevitably results in the diversion of Internet traffic from the Complainant’s website to the Respondent’s website. The Panel finds that this constitutes bad faith registration and use.
Additionally, the Respondent’s current passive holding of the Disputed Domain Name may be a further indicator of bad faith use. However, given its findings above, the Panel does not need to address this issue.
The Respondent had the opportunity to make submissions to the contrary but failed to do so. The Panel infers from this failure to respond that the Respondent could not provide any evidence of good faith use of the Disputed Domain Name (see Encyclopaedia Britannica v. John Zuccarini, WIPO Case No. D2000-0330 and eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633).
In light of the above, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith as per paragraph 4(b) of the Policy.
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 <tumblr.com.au> be transferred to the Complainant.
Date: July 30, 2013