Tumblr.com (“Tumblr”) has been in the news a lot lately. It was purchased by Yahoo! for $1.1 billion barely a week ago. It also prevailed in a recent domain name arbitration dispute that it brought against the Respondent, Mr. Jingsheng Feng of China. The action concerned five (5) domain names that were similar to “tumblr” but for one letter in each registration. The domain names were: <gumblr.com>, <tumbpr.com>, <tukblr.com>, <tujblr.com>, and <tjmblr.com>.
If your not familiar with Tumblr, it is a blogging website (www.tumblr.com) where people can create and share digital content in the form of text, photos and videos. Tumblr began using the TUMBLR trademark in 2007 and it is advertised and marketed globally. It hosts over 91 million blogs, and attracts 140 million unique visitors per month.
To prevail in its UDRP action Tumblr had to prove three (3) things: (i) The disputed domains were identical or confusingly similar to the TUMBLR trademarks; (ii) Respondent had no rights or legitimate interests in the domains; and (iii) Respondent registered and used the domains in bad faith.
On the first element, the Panel found Mr. Feng’s domain names to be confusingly similar to the TUMBLR mark because it deemed the mark “highly distinctive” and well known to the public. It also noted that Mr. Feng’s domain names were simply misspellings of “tumblr” and easily mistyped on a QWERTY keyboard – i.e., it was more than just mere coincidence that Mr. Feng chose these domains. See Playboy Enterprises International, Inc. v. Sand Web-Names- For Sale.
On the second element, the Panel had no evidence to suggest that Mr. Feng had any rights or legitimate interests in the disputed domain names – he did not respond to the complaint. Further, there did not appear to be a bona fide purpose for the sites or a legitimate affiliation with Tumblr.
Finally, the Panel found bad faith because Mr. Feng registered the domains five (5) years after Tumblr was created and appeared to be using them (and their proximity to the TUMBLR mark) to generate revenue from click-through or ad fees. See Amazon.com, Inc. v. Steve Newman.
For Tumblr, it is going to find itself a much more attractive target for infringers/squatters now that it has garnered so much public attention and will be part of the Yahoo corporate family – which will bring it millions more users. Although this case was pretty straightforward it will be interesting to see how Tumblr decides which domains to protect in the future and how it implements its UDRP strategy. Going after similar five letter domains is a good place to start, and should probably also include infringers that are combining “Tumblr” and “Yahoo” – like www.yahootumblr.net...