The Complainant is Tumblr, Inc. of New York, New York, United States of America (“United States” or “US”), represented by Arian Shahdadi, United States.
The Respondent is Kenny Kim of Daejeon, Republic of Korea. 2. The Domain Name and Registrar
The disputed domain name is registered with Megazone Corp., dba HOSTING.KR (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 the Respondent is listed as the registrant and providing the contact details.
On March 5, 2013 the Center set an email communication to the Parties both in Korean and English regarding the language of proceedings. On March 12, 2013, the Complainant confirmed its request in the Complaint that the language of the proceedings be English. The Respondent did not make any submission in relation to the language of the proceedings.
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 March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2013.
The Center appointed Ho-Hyun Nahm as the sole panelist in this matter on April 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 a Delaware corporation that owns and operates a social sharing platform and media network that was released in February 2007. The platform allows individuals to create, post and share digital content online. The Complainant owns a service mark registration number 3,714,214 for the mark TUMBLR (hereinafter referred to as the “Complainant’s mark”) in respect of the services “electronic publication services” in Class 41 and “Internet based social networking services” in Class 45 registered on November 24, 2009 in the United States. The date of first use of the Complainant’s mark is February 19, 2007.
The disputed domain name was registered on August 8, 2010. 5. Parties’ Contentions A. Complainant
The Complainant contends in the Complaint that:
- The disputed domain name is confusingly similar to service mark TUMBLR in which the Complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the disputed domain name;
- The disputed domain name was registered and is being used in bad faith; and
- The disputed domain name should be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of Proceedings
The Complaint was filed in the English language. It is noted that the language of the Registration Agreement for the disputed domain name is Korean. According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel decides otherwise. The spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
The Complainant has submitted a request that English be the language of proceeding on the grounds that i) the Complainant is a US-based company that conducts its daily operations in English, and thus it would be genuinely difficult and create undue burden for the Complainant to “translate all the submissions into and take part in the proceeding” in Korean by citing a previous UDRP case, i.e., Wordpress Foundation v. duanxiangwang,WIPO Case No. D2011-0836 (“The Complainant is a United States headquartered company. It would therefore be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint in Chinese”); ii) and the disputed domain name is a predictable typo of “Tumblr,” which is a coined term that derives from the English word “tumblelog” by further citing a few more UDRP cases where panels have found the language of words contained in the domain name itself persuasive when determining the language of the proceedings (Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432; Credit Suisse Group v. Credit Suisse Group,WIPO Case No. D2005-0213; Zurich Insurance Company v. Shi Wang,WIPO Case No. D2005-0712).
The Respondent did not submit any objection to the Complainant’s request that English be the language of proceeding. It is also noteworthy that the Center in initially deciding to proceed with acceptance of the Complaint in English indicated that it would accept a Response in either English or Korean and also indicated it would (and has) appointed a panelist familiar with both English and Korean.
In any event, the Respondent failed to submit an objection to the Complainant’s request that English be the language of proceeding and did not submit a Response to Complaint either in either language and declined to participate in the proceeding. On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant were to submit all documents in Korean, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation.
Therefore, in consideration of all of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of proceeding in this case. See Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679. B. The Respondent’s default
The Center gave the Respondent the opportunity to file the Response even in Korean by notifying it of the Center’s preliminary decision to accept a Response in either Korean or English and appoint a panelist familiar with both languages. However, the Respondent did not submit any Response by the due date. C. Requirements under paragraph 4(a) of the Policy
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith D. Identical or Confusingly Similar
The Complainant has provided sufficient evidence showing that it is the owner of the TUMBLR mark, the use and registration of which predate the Respondent’s registration of the disputed domain name. The disputed domain name is confusingly similar to the Complainant’s mark TUMBLR in that it incorporates the Complainant’s mark in its entirety. See Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne,WIPO Case No. D2010-0240 finding “the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark.”
The Panel finds that the additional word “com” is a descriptive word commonly used as a generic Top-Level D (gTLD), and thus it does not constitute a prominent portion in the disputed domain name in determining confusing similarity between the disputed domain name and the Complainant’s mark. Therefore, the addition of the word “com” does not have any impact on the avoidance of confusion. See Research in Motion Limited v. Input Inc, Domain Manager, WIPO Case No. D2011-2197 finding “the use of the added descriptive word does not change the overall impression of the domain name”.
The addition of the gTLD “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name either and is therefore irrelevant to determine the confusing similarity between the Complainant’s service mark and the disputed domain name as well.
As such, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s mark. E. Rights or Legitimate Interests
As it is virtually impossible for a complainant to prove the negative fact that a respondent has no rights or legitimate interests in the disputed domain name, it is well accepted that a complainant can only show a prima facie case that there are no rights or legitimate interests on the part of the respondent. The burden of proof production will then shift to the respondent. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Respondent is not affiliated with the Complainant in any way. The Complainant has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using TUMBLRCOM mark in any other way that would give them any rights or legitimate interests in the name. Consequently the Respondent may not claim any rights established by common usage. It is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the Complainant’s service mark TUMBLR. The Respondent is not an authorized dealer of the Complainant’s services and has never had a business relationship with the Complainant.
Under the circumstance that the Respondent did not reply, the Panel finds that the Complainant has proven a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. See De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005; See also Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
The Panel concludes that the Respondent does not have rights or legitimate interests in the disputed domain name. F. Registered and Used in Bad Faith
The Panel recognizes that as of the date of the filing of the Complaint, the Complainant’s Tumblr platform hosts over 91 million blogs with over 140 million unique visitors per month. The term “tumblr” is a coined word, having no meaning other than as a mark denoting the goods and services of the Complainant. It is also recognized that the Complainant has continuously and extensively used, advertised, marketed and promoted the Complainant’s mark both within the United States and in foreign countries. In light of the fact above, the Panel recognizes that the Complainant’s mark has obtained goodwill enough to identify and distinguish its goods and services.
Given the circumstances above and in light of the fact that the Complainant’s mark is a coined mark, coupled with the fact that both the date of first use and the registration date of the Complainant’s mark are earlier than the registration date of the disputed domain name, the Panel finds it is unlikely that the Respondent would have registered the disputed domain name unless it was aware of the existence of the TUMBLR mark or that the disputed domain name might be of some type of economic advantage (See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113; Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517). As such, the Panel recognizes that the Respondent knew or should have known the existence of the Complainant’s mark at the time of registration of the disputed domain name. Also in consideration of the fact that the Respondent does not have any right or legitimate interests in the disputed domain name, the Panel concludes that the Respondent registered the disputed domain name in bad faith.
The Panel further finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, because the site accessible redirects to the dangerous malware site , according to the annexes to the Complaint. Such sites are not recognized as being bona fide offering of goods or services. It is of the Panel’s view that the Respondent, by typosquatting the Complainant’s mark misleads Internet users into believing the disputed domain name is affiliated with the Complainant thereby causing those individuals to be exposed to malicious software.
Furthermore, the fact that the website connected to the disputed domain name has been subsequently deactivated does not preclude the Panel’s such finding.
Therefore, the Panel infers that the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites, making them believe that the websites behind those links are associated or recommended by the Complainant. The Respondent is therefore illegitimately capitalizing on the goodwill of the Complainant’s mark.
As such, the Panel concludes that the Respondent registered and uses the disputed domain name in bad faith. 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 name be transferred to the Complainant.
Ho-Hyun Nahm
Sole Panelist
Date: April 28, 2013
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