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 LinYu, Xiamen eName Technology Co., Ltd. of Xiamen, Fujian, China / NAME AVEN of Taiwan Province of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with eName Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 14, 2014. On March 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 18, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 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 March 25, 2014. On March 20, 2014, the Center transmitted an email to the parties in both Chinese and English language regarding the language of the proceeding. On March 25, 2014, 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 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 proceedings commenced on March 26, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 15, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 16, 2014.
The Center appointed Susanna H.S. Leong as the sole panelist in this matter on May 5, 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's TUMBLR mark is used in connection with a microblogging and social sharing platform initially launched in 2007. The Complainant's TUMBLR platform allows individuals to post content (such as text, photos, quotes, links, audio, and videos) to an Internet-accessible blog. Posts can be made from one's browser, phone, desktop, or email. 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 United States.
The term "Tumblr" is a coined word, having no meaning other than as a trademark denoting the goods and services of the Complainant. As a result of the Complainant's extensive investment and promotion, its services and the TUMBLR mark enjoy a substantial degree of public recognition. The Complainant is the owner of the service mark and trademark TUMBLR ("TUMBLR mark") and the Complainant's name and TUMBLR mark are protected as registered trademarks in countries around the world, including the United States, the European Union, Australia, Japan and New Zealand.
The Complainant is the owner of the domain name and it has been one of the fastest growing social networking websites. Two weeks after launching the "www." website in February 2007, the site had 75,000 registered users. By January 2013, "www." had over 29 million unique visitors per month in the United States alone and more than 93 million unique visitors per month worldwide. Since 2007, Tumblr has registered many domain names containing the TUMBLR mark including, but not limited to, , , , , , , and .
The disputed domain names and were registered on June 14, 2009 and July 7, 2012 respectively.
The Complainant first became aware of the Respondent's registrations and use of the disputed domain names in or about August 2013. On or about September 2, 2013, the Complainant's lawyers contacted the Respondent by email, at the email addresses listed in the WhoIs information for the disputed domain names, notifying the Respondent of the Complainant's rights and requesting that the Respondent transfer the disputed domain names to the Complainant. The Complainant's lawyers sent follow-up emails to the email addresses listed in the WhoIs information for the disputed domain names on September 17, 2013 and October 31, 2013. As of the date of this Complaint, the Respondent has not replied to any of the Complainant's lawyers' emails. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights on the following grounds:
1. Paragraph 4(a)(i) of the Policy does not require that the trademark be registered prior to the domain name. The Complainant has established rights in the TUMBLR mark by way of use and application of the mark in the United States since 2007.
2. Through the Complainant's use of the TUMBLR mark and based upon its trademark registrations, the Complainant has acquired trademark rights in and to the TUMBLR mark.
3. The Respondent's replacement of the "u" in TUMBLR with an "h" and the "b" in TUMBLR with a "g" in the disputed domain names and , respectively, is classic typosquatting and is likely to confuse consumers as to its connection with the Complainant. Prior UDRP panels have consistently ruled that domain names which misspell a well-known mark are deemed confusingly similar to that mark.
4. The addition of the generic Top-Level Domain ("gTLD") ".com" to the TUMBLR mark or marks confusingly similar to the TUMBLR mark does not differentiate the disputed domain names from the Complainant's mark.
5. Policy paragraph 4(a)(i) does not require that the mark be registered in the country in which the Respondent operates. Although Respondent appears to reside in China, since Complainant's TUMBLR mark is registered in the United States and other international jurisdictions, the Complainant has rights in the TUMBLR mark under Policy paragraph 4(a)(i).
6. Based on the Complainant's clear rights to the TUMBLR mark and the public's strong association of the Complainant's mark with the Complainant, the Respondent's registration and use of the disputed domain names is likely to cause consumer confusion and initial interest confusion. As such, the disputed domain names are confusingly similar to Complainant's mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names on the following grounds:
1. The Respondent's use of the disputed domain names to direct traffic to unrelated commercial websites does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. The Respondent's websites redirect Internet traffic intended for the Complainant to various unrelated commercial third-party websites. In doing so, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names pursuant to paragraph 4(c)(iii) of the Policy. Rather, the Respondent is using the disputed domain names for commercial gain (through affiliate and/or referral fees) to misleadingly divert consumers. UDRP decisions have consistently held that registrants that monetize domain names using redirecting services have not made a bona fide offering of goods or services giving rise to rights or legitimate interests in a disputed domain name. As such, pursuant to paragraph 4(c) of the Policy, all of these facts support the conclusion that the Respondent has no rights or legitimate interests in the disputed domain names.
2. The Respondent's use of the disputed domain names, either including the Complainant's TUMBLR mark entirely or confusingly similar forms of the Complainant's mark, proves the Respondent's intent to divert consumers. Moreover, it is clear that the Respondent registered the disputed domain names with the Complainant's mark in mind and with the intention of diverting to its past, current and/or future websites Internet traffic intended for the Complainant. This use is neither legitimate nor fair.
3. The Respondent is not commonly known by the disputed domain names. Nothing in the Respondent's WhoIs information or the records for the disputed domain names demonstrates that the Respondent is commonly known by the disputed domain names, and the Complainant has not authorized the Respondent to use its TUMBLR mark.
The Complainant contends that the disputed domain names were registered and are being used in bad faith on the following grounds:
1. The Respondent has registered and used multiple domain names, all of which include a misspelling of the Complainant's TUMBLR mark, to redirect unsuspecting Internet users to third-party commercial websites for commercial gain. This behavior is a classic example of typosquatting and previous UDRP panels have also been prepared in these circumstances to infer bad faith registration.
2. The Respondent's registration and use of the disputed domain names to redirect unsuspecting Internet users to third-party commercial websites for commercial gain is a classic example of typosquatting. It is well established that typosquatting is tantamount to evidence of bad faith.
3. The Respondent's registration of the confusingly similar disputed domain names is intended to divert Internet users from the Complainant's website for the purpose of financial gain by exploiting the goodwill and recognition the Complainant gained in its TUMBLR mark, and thus constitutes bad faith registration.
4. The Respondent undoubtedly registered the disputed domain names in bad faith with actual knowledge of the Complainant's rights in its TUMBLR mark because the Complainant's mark is internationally recognized – and likely famous – and is registered in the United States, Europe and elsewhere throughout the world. The Complainant first made use of the TUMBLR mark in 2007, and the mark has been recognized and relied upon by online consumers throughout the world to identify and distinguish the Complainant's website and services from the goods and services of others for years. The Respondent registered the disputed domain name in June of 2009 and did not register the disputed domain name until July 2012. The Respondent's registration of the disputed domain names years after the Complainant had first used its mark is sufficient to satisfy the bad faith requirement.
5. The conceptual and commercial strength of the TUMBLR mark further supports the argument that the Respondent registered the disputed domain names with the intent to cause confusion and to capitalize on the Complainant's rights. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
According to the information received by the Center from the Registrar, the language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. From the evidence presented in the case file, no agreement appears to have been entered into between the Complainant and the Respondent to the effect that the proceeding should be in English. Complying with the instructions from the Center, the Complainant has submitted a request that the proceeding should be in English, to which the Respondent has not objected.
After considering the circumstances of the present case and the submission of the Complainant's request, the Panel is of the opinion that the language of the present proceeding shall be English and the decision will be rendered in English. The Panel based its decision on the following reasons:
(i) The Panel's discretion under the Policy
Paragraph 11(a) of the Rules provides:
"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."
Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.
(ii) The circumstances of this proceeding
One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.
In particular, the Panel notes that the material facts of this proceeding are generated in the English language. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest in the interests of fairness, the language of the proceeding ought to be English. In particular, the Panel notes that (a) the disputed domain name is made up of letters in Ascii-Script and could be pronounced phonetically in English; and (b) the website to which the disputed domain names pointed was in English which suggests that the Respondent understands English; (c) the Center has notified the Respondent of the proceeding in both Chinese and English. The Respondent had a choice to respond to the Complaint in either Chinese or English as the Panel who has been appointed by the Center is conversant in both languages. The Panel is of the view that if the Respondent had experienced difficulty with the English language, it could have communicated this to the Center and the Panel would have ruled accordingly. However, the Respondent has chosen not to respond to the Complainant's allegations. Considering these circumstances, the choice of English as the language of the present proceeding is fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.
In considering the circumstances of the present case, the Panel decides that the language of the proceeding shall be English and the decision will be rendered in English. 6.2. Substantive Elements of the Policy
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:
1. the disputed domain name 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.
Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.
Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Complainant has adduced evidence to demonstrate that it has registered trademark rights and continues to have such rights in the TUMBLR mark in connection with a microblogging and social sharing platform initially launched in 2007 in many countries in the world. The Panel finds that the Complainant's TUMBLR mark is a widely-known mark for the microblogging and social sharing services on the Internet.
In assessing the degree of similarity between the Complainant's trademark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant's trademark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned in this case, and the average consumer is the Internet user seeking to purchase or download information about the Complainant's products.
Comparing the disputed domain names and and the Complainant's TUMBLR mark, the Panel concludes that the disputed domain names are comprised of (a) misspellings of the word TUMBLR and (b) the gTLD ".com". The conclusion of misspellings is buttressed by the proximity in the letters "u" and "h" on the computer keyboard in respect of the misspelling of TUMBLR in "thmblr" and the letters "b" and "g" in "tumglr". The misspelling of an invented and highly distinctive mark like TUMBLR does not serve to distinguish the disputed domain names from the Complainant's mark and will render the disputed domain names confusingly similar to the Complainant's mark. It is also clear that the addition of the gTLD such as ".com" is typically insufficient as a distinguishing factor.
Bearing in mind the following factors, in particular (a) the widespread reputation and high degree of recognition of the Complainant's TUMBLR mark as a result of its fame and notoriety and (b) the invented and distinctive character of the Complainant's TUMBLR mark, the Panel therefore finds that the disputed domain names are identical or confusingly similar to the TUMBLR mark in which the Complainant has rights.
The Panel finds for the Complainant on the first part of the test. B. Rights or Legitimate Interests
Based on the following reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:
(1) there is no evidence of a legitimate use by the Respondent of the disputed domain names or reasons to justify the choice of the terms "thmblr" or "tumglr" in its business operations;
(2) there is no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the TUMBLR mark;
(3) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the disputed domain names in connection with a bona fide offering of goods or services;
(4) the Complainant and its TUMBLR mark enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety in connection with microblogging and social sharing on the Internet and is a registered trademark in many countries all over the world. Consequently, in the Panel's view, in the absence of contrary evidence from the Respondent, the TUMBLR mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.
The Panel notes the overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant's contentions. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1. Based on the above reasons, the Panel finds that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names and thereby shifted the burden to the Respondent to produce evidence to rebut this presumption.
According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or evidence of any other circumstances giving rise to a right to or legitimate interest in the disputed domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against it. In particular, the Respondent has failed to make submissions to demonstrate that it has rights or legitimate interests in the disputed domain names.
In accordance with the Rules, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the Respondent appears to be unable to adduce evidence of any rights to or legitimate interests in the disputed domain names.
The Panel finds for the Complainant on the second part of the test. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service of the respondent's website or location.
The above circumstances are indicative of registration and use of a domain name in bad faith but they are by no means exhaustive. Evidence of other circumstances adduced before the panel can also constitute registration and use of a domain name in bad faith by a respondent in appropriate cases.
One important consideration in the Panel's assessment of whether the Respondent has registered and is using the disputed domain names in bad faith is prior knowledge on the part of the Respondent of the Complainant's rights in the trademark concerned. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Taking into account the worldwide reputation of the Complainant and its TUMBLR mark, as well as the market presence of the Complainant in numerous countries, the Panel finds that it is highly unlikely that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Furthermore, it has been established that the Complainant has an extensive presence on the Internet via its offering of microblogging and social network services. A simple search on the Internet would reveal the presence of the Complainant's trademark and domain names. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant's trademark rights at the time of the registration of the disputed domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of association with the Complainant and its products.
Where the Respondent has chosen to register disputed domain names that are identical or confusingly similar to the Complainant's trademark and where the trademark in question has through substantial use acquired worldwide fame, reputation and notoriety, a reasonable conclusion is that the trademark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant. Thus, the burden on the Respondent to show that the choice of the disputed domain names was made legitimately and in good faith for the genuine offering of goods or services on the Internet is a very heavy one. There is no evidence that the Respondent has used or intends to use the disputed domain names for purposes of bona fide offering of goods or services over the Internet. On the contrary, there is evidence which shows that the Respondent is using the disputed domain names to direct traffic to various unrelated and apparently commercial websites with the view of obtaining commercial gain through affiliate and/or referral fees. In this regard, the Panel finds that the Respondent has not provided any plausible explanation of its use of the disputed domain names.
The Panel finds that the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the disputed domain names which ultimately point to various unrelated commercial websites under paragraph 4(b)(iv) of the Policy. The Panel finds that given the widespread fame of the Complainant's TUMBLR mark and a lack of plausible explanation for the choice of incorporating the Complainant's famous trademark in the disputed domain names, the use of the disputed domain names to direct traffic to various unrelated commercial websites with the view of obtaining commercial gain through affiliate and/or referral fees is certainly a relevant factor indicating bad faith registration and use.
Thus, the Panel finds for the Complainant on the third part of the test. 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 and be transferred to the Complainant.
Susanna H.S. Leong
Sole Panelist
Date: May 19, 2014
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