The Complainant is Tumblr, Inc. of New York, New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America ("United States").
The Respondent is Kenny Kim of Daejeon, Republic of Korea.
The disputed domain names <tiumblr.com> and <ytumblr.com> are registered with Megazone Corp., dba HOSTING.KR.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 15, 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 confirming that the Respondent is listed as the registrant and providing the contact details.
On March 18, 2014, the Center transmitted an email to the Parties in both the Korean and English languages regarding the language of the proceedings. On March 20, 2014, the Complainant confirmed its request in the Complaint that English be the language of the proceedings. The Respondent did not comment on the language of the proceeding.
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 Korean and English, 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 Moonchul Chang as the sole panelist in this matter on April 22, 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.
The Complainant is the owner of the trademark TUMBLR in the United States and other countries including International Registrations. Since 2007 the Complainant has used the TUMBLR mark in connection with a microblogging and social sharing platform. The Complainant has also registered many domain names containing the TUMBLR mark such as <tumblr.com>, <tumblr.ae>, <tumblr.co>, <tumblr.de>, <tumblr.fr> and <tumblr.org>.
The disputed domain names <ytumblr.com> and <tiumblr.com> were registered on August 8 and August 9, 2010 respectively according to the publicly available WhoIs information. The disputed domain names used to redirect a website which is no longer active.
The Complainant contends that:
(1) The disputed domain names <tiumblr.com> and <ytumblr.com> are confusingly similar to the Complainant's mark. They incorporate the Complainant's TUMBLR mark in entirety with the addition of letter "i" or "y" which does not sufficiently distinguish the disputed domain names from the trademark.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services because he has used the disputed domain names to redirect Internet users to the dangerous malware site "www.gaja79.com". No evident indicates that the Respondent is commonly known by the dispute domain names.
(3) The disputed domain names have been registered and is being used by the Respondent in bad faith. Firstly, the Respondent has demonstrated a pattern of bad faith registration and use. Secondly, the Respondent's registration and use of the disputed domain names to redirect Internet users to a malware website is evidence of bad faith under the Policy. Thirdly, the Respondent registered the dispute domain names with actual knowledge of the Complainant's rights in the TUMBLR mark.
The Respondent did not reply to the Complainant's contentions.
According to paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the panel determines otherwise.
In this present case the Registrar confirmed that the language of the Registration Agreement for the disputed domain names is Korean. However the Complaint was originally filed in English. The Complainant requests that the language of proceeding be English for the following reasons: (i) The Complainant of United States-based company has disadvantage to be forced to conduct this proceeding in Korean; (ii) the disputed domain names incorporate the Complainant's entire TUMBLR mark which derived from the English word "tumblelog"; (iii) all the content displayed by the Respondent on the resolving website is in English; and (iv) the Complainant had a previous UDRP case with the Respondent where the panel determined that the proceedings should be conducted in English. Tumblr, Inc. v. Kenny Kim, WIPO Case D2013-0440. On the other hand the Respondent failed to respond in any language.
The spirit of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties' level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.
In consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under paragraph 11 of the Rules, that English shall be the language of the administrative proceeding in this case (see Tumblr, Inc. v. Kenny Kim, WIPO Case No. D2013-0440)
The disputed domain names <tiumblr.com> and <ytumblr.com> entirely incorporate the Complainant's trademark TUMBLR. Numerous UDRP panels held that where a domain name substantially incorporates a complainant's trademark, this is sufficient to make the domain name "confusingly similar" within the meaning of the Policy. (See Amazon.com, Inc. v. MCL International Limited, WIPO Case No. D2000-1678). The addition of letter "i" or "y" is not sufficient to avoid the confusing similarity (see Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227). Further, the generic Top-Level (gTLD) suffix ".com" can be disregarded under the confusing similarity test (see DHL Operations B.V. v. zhangyl, WIPO Case No. D2007-1653).
Accordingly, the Panel finds the first element under paragraph 4(a) of the Policy has been met by the Complainant.
Under paragraph 4(a)(ii) of the Policy, the overall burden of proof is on the Complainant. However, once the Complainant presents a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, the burden of production is transferred to the Respondent. (See Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Firstly, the Complainant contends that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services because he has used the disputed domain names to redirect Internet users to the dangerous malware site "www.gaja79.com".
Secondly, the Respondent failed to come forward with any appropriate allegations or evidence that might demonstrate his rights or legitimate interests in the disputed domain names to rebut the Complainant's prima facie case.
Thirdly, there is no evidence presented to the Panel that the Respondent has used the disputed domain names in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain names. In addition there is no evidence to suggest that the Respondent has been commonly known by the disputed domain names.
Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.
Paragraph 4(a)(iii) of the Policy requires that the disputed domain name "has been registered and is being used in bad faith." As this requirement is conjunctive, the Complainant must establish both bad faith registration and bad faith use. In addition the circumstances listed in paragraph 4(b) of the Policy are not exclusive, and other circumstances may likewise lead to a finding of bad faith registration and use.
Firstly, since the Complainant's trademark TUMBLR is a uniquely coined term and the disputed domain names entirely incorporate the TUMBLR mark, in this Panel's view it is highly unlikely that the Respondent failed to notice the presence of the trademark in the disputed domain names at the time of the registration.
Secondly, the Respondent previously registered the domain name <tumblrcom.com> which the WIPO panel ordered to be transferred to the Complainant in Tumblr, Inc v. Kenny Kim, WIPO Case No. D2013-0440. In that case the panel found that the "the Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them so as to attract them to other websites[…]". Having considered the Respondent's registration of multiple confusingly similar domain names to the Complainant's mark, the Panel finds that these registrations constitute a pattern of bad faith registration and use under paragraph 4(b)(ii) of the Policy.
Thirdly, the Respondent's use of the disputed domain names to resolve to possible malware website indicates the Respondent's bad faith under paragraph 4(a)(iii) of the Policy. In addition the Respondent, by using the disputed domain names, is intentionally confusing the consumers so as to benefit from its confusing similarity with the trademark TUMBLR. Such finding indicates the Respondent's bad faith in the registration and use of the disputed domain names. (See Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556; The Nasdaq Stock Market, Inc. v. Act One Internet Solutions, WIPO Case No. D2003-0103).
Based on the foregoing, the Panel is satisfied that bad faith registration and use have been sufficiently established with respect to the disputed domain names in accordance with paragraph 4(b) of the Policy.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy in the present case.
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 <ytumblr.com> and <tiumblr.com> be transferred to the Complainant.
Moonchul Chang
Sole Panelist
Date: May 13, 2014