In a decision certain to drive the Trademark Holder groups crazy, Tumblr.com just lost a UDRP on the domain name Tublr.com although the domain name was going to one of those “sweepstakes/survey” sites cited by so many UDRP panels which have ordered domains transferred.
Here are the relevant facts and findings by the one member panel:
Tumblr launched in 2007 and 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.
“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, 2007 for 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.”