The Complainant is Tumblr, Inc. of New York, New York, United States of America, represented internally.
The Respondent is Bai Ling of Chenzhou, Hunan, China, self-represented.
The disputed domain name <tublr.com> (the “Disputed Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2013. On January 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 1, 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 February 4, 2013, the Center transmitted an email to the Parties in both Chinese and English language regarding the language of the proceeding. On February 4, 2013, the Complainant requested 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, and the proceedings commenced on February 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2013. The Response in Chinese was filed with the Center on March 3, 2013.
The Center appointed Kar Liang Soh as the sole panelist in this matter on March 13, 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.
On April 16, 2013, the Panel issued Procedural Order No 1 inviting comments from the parties regarding the date of first use of the trademark TUMBLR suggested by a Google search results included in the Complaint and the early use of the trademark TUMBLR. The Complainant and Respondent submitted comments in response on April 18, 2013 and May 2, 2013 respectively. The Respondent’s comments did not relate to the first use or early use of the trademark TUMBLR and was not taken into consideration by the Panel in this decision.
The Complainant owns and operates a social sharing platform and media network which was released in February 2007. The platform allows individuals to create, post and share digital content online. The Complainant’s platform hosts over 91 million blogs with over 140 million unique visitors per month.
The Complainant claims it has been using the trademark TUMBLR since February 19, 2007 in relation to its social sharing platform and media network and its mobile applications (including on iOS and Android systems) and has promoted the trademark TUMBLR in the United States and elsewhere. The trademark TUMBLR has been registered as registration no 3,714,214 in the United States. The application was filed on October 27, 2008 and achieved registration on November 24, 2009. The Complainant registered the domain name <tumblr.com> on June 8, 2006 but only publicly launched its website under this domain name on February 19, 2007.
The Disputed Domain Name was registered on March 27, 2007. On or before the time of the Complaint, the Disputed Domain Name redirected visitors to a website at “http://surveycentral.mgomoney.com/home.html?” which provided an online survey which purported to offer a chance to win some prizes after completion of the survey. The website does not provide any information about the Respondent.
Other than the WhoIs information relating to the Disputed Domain Name, no further information about the Respondent has been tendered as evidence in the proceeding.
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trademark TUMBLR. The Disputed Domain Name consists of “tumblr” minus the single letter “m”. The Respondent is capitalizing on a predictable typo of “tumblr” to acquire web traffic from people who accidentally misspell <tumblr.com>;
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent is neither an agent nor licensee of the Complainant and has never been affiliated in any way with the Complainant, and has never been authorized by the Complainant to use the trademark TUMBLR. The Disputed Domain Name is not used in connection with a bona fide offering of goods and services. The Respondent is not commonly known by the Disputed Domain Name. The Respondent is not making legitimate noncommercial or fair use of the Disputed Domain Name. The Respondent is using the Disputed Domain Name to mislead the Complainant’s visitors and users to divulge their personal information for the Respondent’s financial gain; and
3) The Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent is typosquatting on the trademark TUMBLR with the goal of deceiving individuals into divulging their personal information. A Google search of “tublr” limited to documents available up to March 2007 produced mostly hits associated with the trademark TUMBLR. The Respondent’s knowledge of, or willful blindness to, the Complainant’s rights in the trademark TUMBLR demonstrates the Respondent’s bad faith.
The Respondent contends that:
1) The trademark TUMBLR was registered in November 2009 while the Disputed Domain Name was registered much earlier;
2) The Respondent did not use the Disputed Domain Name in bad faith. Use of the Disputed Domain Name neither infringed the trademark TUMBLR nor caused confusion to users. The webpages downloaded by the Complainant is not confusingly similar or conflict with the Complainant’s website; and
3) The Respondent has no prior record of having used a domain name in bad faith.
The Complainant has requested that English be adopted as the language of the proceeding. The default language of the proceeding is Chinese but the Panel is entitled to determine the language to be otherwise. The Panel has considered the circumstances and grants the Complainant’s request but without prejudice to the Respondent’s ability to submit the Response in Chinese. The following factors were taken into consideration in coming to this decision:
1) The Complainant is a United States-based company and conducts its daily operations in English. The Complainant has informed it will face genuine difficulty and suffer undue burden to translate the submissions into and take part in the proceeding in Chinese;
2) The website resolved from the Disputed Domain Name is entirely in English and indicates that the Respondent is conversant;
3) The Panel is conversant in both English and Chinese and can readily take into account documents submitted in the proceeding in English and/or Chinese;
4) The Complaint has already been submitted in English. It will unnecessarily delay the proceeding if the Complainant were required to submit a Chinese translation; and
5) The Respondent did not object to the Complainant’s request for English to be the language of the proceeding and has filed a Response in Chinese which also commented specifically on some of the evidence included in the Complainant.
To succeed in this proceeding, the Complainant must establish all three limbs of paragraph 4(a), namely:
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.
The Complainant has rights in the trademark TUMBLR by virtue of trademark registration no 3,714,214 in the United States. The Respondent’s contended that the Complainant’s trademark was registered much later after the registration of the Disputed Domain Name. It is the consensus of past UDRP panels that this does not prevent a finding of confusing similarity under the first limb of paragraph 4(a) of the Policy. The Policy does not limit the reference date on which complainant in a domain name dispute acquired trademark rights. However, such circumstances may have an impact on the determination of the third limb of paragraph 4(a) of the Policy on the issue of bad faith registration.
The Disputed Domain Name differs from the trademark TUMBLR by the omission of the letter “m”. In the Panel’s opinion, not every situation in which a domain name differs from a trademark by one or two characters necessarily results in confusingly similarity. Similarly, not every typographical error incorporated in a domain name necessarily amounts to typosquatting, which implies inter alia an intention to target trademark value. The learned panel in Wachovia Corporation v. American Consumers First, WIPO Case No. D2004-0150 provided useful guidance on this issue by identifying the following categories of domain names which may be consistent with a finding of typosquatting:
(a) omission of a period (e.g., <wwwamctv.com> which is confusingly similar to “www.amtv.com” and the mark AMC TV in CSC Holdings, Inc. v. Elbridge Gagne, WIPO Case No. D2003-0273);
(b) omission of a letter (e.g., <harypotter.com> and <scobydoo.com> which omitted a letter in “harry potter” and “scooby doo” in Time Warner Entertainment Company, L.P., and Hanna-Barbera Productions, Inc. v. John Zuccarini, Cupcake Patrol, and The Cupcake Patrol, WIPO Case No. D2001-0184);
(c) transposition of two letters (e.g., <wallstreetjounral.com> and <wallstreetjouranl.com> which transposed two letters in “wall street journal” in Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, d/b/a Cupcake Patrol, WIPO Case No. D2001-0302);
(d) grammatically correct variation (e.g., <joescartoon.com> which added an “s” between “Joe Cartoon” in Shields v. Zuccarini, 254 F.3d 476);
(e) mistyping of proximate keys on a standard “qwerty” keyboard (e.g., <wschovia.com> where the letter “s” is next to the letter “a” in Wachovia Corporation v. American Consumers First, supra);
(f) substitution of an incorrect vowel in an unfamiliar word (e.g., <wachovea.com> where “i" was substituted by an “e” in Wachovia Corporation v. American Consumers First, supra).
The above categories are useful but they remain a guide. Ultimately, whether there is confusing similarity in the context of the first limb of paragraph 4(a) is a factual question to be determined by the panel having regard to the evidence.
Turning to the present circumstances, it could be said that the Disputed Domain Name falls into the second category above in omitting the letter “m” in “tumblr”. However, the past cases in this category relate to domain names, which despite the omission of a letter, remain essentially recognizable as the original trademarks, e.g., <harypotter.com> for “Harry Potter”, or <wallsteetjournal.com> for “Wall Street Journal”. The trademarks in those cases tend to be somewhat longer than the trademark in this case. Therefore, an analysis of the present case must go beyond fitting the Disputed Domain Name under one of the categories above.
Based on a visual comparison of the Disputed Domain Name and the trademark TUMBLR, the similarity is readily visible. Phonetically, the Disputed Domain Name would be missing a distinctive “m” consonant sound at the end of the first syllable “tu”. In addition, the first syllable “tu” may potentially be pronounced as in the word “too”. The Panel would be hesitant to conclude that there is clear phonetic similarity. Conceptually, neither “tublr” nor “tumblr” strikes this Panel as a dictionary word. However, “tumblr” appears to be a misspelling of “tumbler” while “tublr” does not appear to the Panel to be a misspelling of any known English word. Therefore, there is arguably a conceptual difference between “tublr” and “tumblr”.
From the visual, phonetic and conceptual comparisons above, the Panel considers that on weighing the probabilities, the balance falls slightly towards the Disputed Domain Name being confusingly similar to the trademark TUMBLR. Accordingly, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
The Panel accepts that the Respondent is not authorized to use the trademark TUMBLR. There is also no evidence to suggest that the Respondent is commonly known by the Disputed Domain Name. The Complainant has asserted that the Disputed Domain Name is not used in connection with a bona fide offering of goods and services. The Respondent has not offered any comment on its use of the Disputed Domain Name other than a bare denial that it is not in bad faith. The Panel holds that the Complainant has established prima facie that the Respondent does not have any right or legitimate interests in the Disputed Domain Name. The Respondent has failed to rebut the prima facie finding. Therefore, the second limb of paragraph 4(a) of the Policy is established on the facts before the Panel.
The Complainant claims that because the Disputed Domain Name omits one letter from the trademark TUMBLR, the registration of the Disputed Domain Name constitutes typosquatting. As discussed above, while this may be a relevant consideration, on the particular facts of this case, the Panel does not agree that typosquatting has been established on the available evidence.
The Panel notes from the evidence that the website redirected from the Disputed Domain Name was designed to collect personal information while promising the chance to win a prize. However, it is not apparent to the Panel that the website incorporated any content which suggested any affiliation or connection to the Complainants or the trademark TUMBLR, or any other trustworthy entity. There is insufficient evidence in this case before the Panel to establish that the Respondent is using the Disputed Domain Name in a phishing scam.
The Respondent has made the point that the Disputed Domain Name was registered before the trademark TUMBLR was registered. The trademark application for TUMBLR was also filed over a year after the registration of the Disputed Domain Name. It is a consensus of previous panels that when a domain name is registered before a trademark right is established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right. Clearly, on the facts, the Complainant had not established any right by registration (or even application) of the trademark TUMBLR when the Disputed Domain Name was registered. The question is whether the Complainant could have established unregistered rights in the trademark TUMBLR at that time.
The first use of the trademark TUMBLR as claimed by the Complainant was dated February 19, 2007, barely one month before the Disputed Domain Name was registered. There is no evidence before the Panel relating to how the trademark TUMBLR may have been publicized between February 19, 2007 and March 27, 2007 and whether the Respondent could have known of the trademark TUMBLR when the Disputed Domain Name was registered.
The Panel also noted that the registration of the Complainant’s domain name <tumblr.com> on June 8, 2006 pre-dated the registration of the Disputed Domain Name by about nine months. However, the Panel is mindful that the registration of a domain name does not per se impart any trademark rights, or that the world at large becomes imputed with knowledge of such a domain name. It remains necessary for sufficient use and publicity of a trademark to exist before any unregistered trademark may arise. As use of the trademark TUMBLR took place only from February 19, 2007, and no evidence of use or publicity prior to this date is present before the Panel, the Panel is unable to make any finding that the Complainant had unregistered trademark rights as of February 19, 2007for the purpose of these proceedings under the Policy. There is also insufficient evidence before the Panel in this case that the Respondent must have been aware of the trademark TUMBLR, or even the existence of the domain name <tumblr.com> as of March 27, 2007.
The Complainant claimed that the Google search of “tublr” with a date limitation of “Before Mar 27, 2007” produced mostly hits associated with the trademark TUMBLR. Upon closer examination, the Panel noted that the search result contained the heading “Showing results for tumblr” followed by the link “Search instead for tublr”. Therefore, the search result was not that of “tublr” as claimed by the Complainant, but for “tumblr”. It is no wonder that the hits were all associated with the trademark TUMBLR.
Further, although the search had a date limitation of “Before Mar 27, 2007”, the hits relating to the trademark TUMBLR were associated with dates in 2006 and earlier. In response to Procedural Order No 1, the Complainant explained that these dates were mistakenly labeled by Google’s search engine. The Complainant further confirmed that the first use of the TUMBLR trademark was February 19, 2007 and all associated hits on the Google search result related to content published or updated after 2007. Accordingly, the Panel is unable to accept the Google search as supporting the Complainant’s contention that a search for “tublr” for documents before March 27, 2007 produced mostly hits associated with the trademark TUMBLR.
In the circumstances, this Panel finds insufficient evidence before it in these proceedings to establish that the Respondent registered and is using the Disputed Domain Name in bad faith.
For the foregoing reasons, the Complaint is denied.
Kar Liang Soh
Sole Panelist
Date: May 15, 2013