WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avid Life Media Inc. v. Mao Jian Ting
Case No. D2012-0333
1. The Parties
Complainant is Avid Life Media Inc. of Toronto, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Mao Jian Ting of Wenzhou, China, appearing pro se.
2. The Domain Name and Registrar
The disputed domain name <ashleymadison.mobi> is registered with Beijing Innovative Linkage Technology Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2012. On February 17, 2012, the Center transmitted by email to Beijing Innovative Linkage Technology Ltd. a request for registrar verification in connection with the disputed domain name. On February 20, 2012, Beijing Innovative Linkage Technology Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On February 20, 2012, the Center transmitted an email to the parties in both Chinese and English languages regarding the language of proceedings. On the same day, Complainant confirmed its request that English be the language of proceeding. On February 21, 2012, Respondent requested that Chinese be the language of 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 Respondent of the Complaint, and the proceedings commenced on February 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2012. The Response was filed with the Center on March 1, 2012.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 20, 2012. 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
Complainant is a social entertainment company which was founded in 2007. Complainant hosts online communities which provide individuals with facilities to interact socially. One of Complainant’s online communities is advertised using Complainant’s ASHLEY MADISON service mark. Complainant has provided samples of promotional materials which have featured its ASHLEY MADISON service mark including promotion by third parties such as news providers and brand evaluators. Complainant owns service mark registrations for ASHLEY MADISON and has provided evidence of registered rights in ASHLEY MADISON which are recognized by the United States of America, Australia, Canada, and the European Community. These registrations cover social networking services, specifically those related to online dating and online communication and matchmaking. Complainant has registered multiple domain names composed of “ashleymadison” including domain names in the “.com”, “.net”, “.org”, “.biz”, and “.info” gTLD extensions.
Respondent is a Chinese individual who registered the disputed domain name in 2009.
5. Parties’ Contentions
Complainant maintains that the disputed domain name <ashleymadison.mobi> is identical to its ASHLEY MADISON service mark and as such would lead Internet users to believe that its content is associated with Complainant. Complainant claims that its ASHLEY MADISON service mark is exclusively associated with its services by the public due to Complainant’s extensive and exclusive use of the mark for over eleven (11) years to promote its social networking services. Complainant acknowledges that its mark is composed of two female names and maintains that these names are not used in reference to a living individual but rather were chosen because they were the two most popular American female first names when the service mark was developed.
Complainant maintains that it has not provided Respondent with any authorization to use its service mark and argues that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services. Complainant cites Respondent’s use of the disputed domain name to display links to websites of third party competitors of Complainant as evidence of Respondent’s bad faith, and alleges that this use is an attempt by Respondent to further associate the disputed domain name with Complainant’s ASHLEY MADISON service mark. Complainant notes that there is no evidence that Respondent has ever been known by the name “Ashley Madison” and alleges that Respondent is profiting off of its use of Complainant’s ASHLEY MADISON service mark by using the disputed domain name as a landing page to display pay-per-click links to third party websites.
Complainant alleges that Respondent has attempted to sell the disputed domain name for fees which exceed out-of-pocket costs associated with registration, namely for GBP 10,000 and GBP 100,000. Complainant has provided materials illustrating that these offers were made publicly and to Complainant directly. Regarding bad faith, Complainant alleges that Respondent’s registration of the disputed domain name was made in attempt to disrupt Complainant’s business and cites Respondent’s use of the disputed domain name to display links to third party competitors of Complainant as an attempt to profit economically at the expense of Complainant. Respondent’s efforts to trade off of the ASHLEY MADISON service mark are cited by Complainant as evidence that Internet users are likely to be confused as to source, sponsorship, affiliation, or endorsement of the content.
Respondent maintains that the disputed domain name was registered on behalf of a group of students in China who participate in foreign language classes and that the disputed domain name <ashleymadison.mobi> was selected for use on behalf of a one time instructor of theirs who was named “Ashley Madison”. Respondent states that he/she initially intended to use the disputed domain name as a personal website for the group’s instructor but that this use was not realized because the instructor returned to her home country. Respondent states that he/she has since developed plans to use the disputed domain name for a language learning website and that this use has not been initiated due to limited resources.
Respondent argues that the Complaint should be dismissed because there is no bad faith. Specifically, Respondent maintains that the disputed domain name was selected on behalf of his/her foreign language teacher named “Ashley Madison” and that the only intentions for use of the disputed domain name have been for a personal website for this teacher and for a language learning website to be shared between Internet users in China. Respondent notes that Complainant does not have any prior trademark rights in ASHLEY MADISON in China and maintains that he/she was not aware of Complainant when registering and using the disputed domain name.
Respondent maintains that he/she has not offered the disputed domain name for sale and that he/she has invested labor and financial resources towards developing the disputed domain name. Respondent alleges that Complainant’s attempt to obtain the disputed domain name through this proceeding is an attempt at Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Language of the Proceedings
As confirmed by the Registrar, the language of the Registration Agreement for the disputed domain name is Chinese. The Complaint was submitted in English. The Center has communicated notice of the Complaint in both the English and Chinese languages and has invited Respondent to answer the Complaint in either language. Respondent has replied to the Complaint in Chinese.
Taking Respondent’s comprehension of the Complaint’s content and the fact that the record shows that the disputed domain name has featured commercial English language content, the Panel concludes that it is acceptable to proceed in the English language. Translation of the Complaint and other materials would cause unnecessary expense and delay.
B. Identical or Confusingly Similar
The record shows that Complainant owns rights in ASHLEY MADISON which are recognized in the European Community, the United States, Canada, and Australia. The disputed domain name <ashleymadison.mobi> is identical to the ASHLEY MADISON service mark in which Complainant has rights.
It is not a requirement of the Policy that a complainant’s trademark rights be recognized in a respondent’s county of residence. See, e.g., Advanced Magazine Publishers Inc. v. Computer Dazhong, WIPO Case No. D2003-0668 (“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of the Respondent’s residence”). A majority of the results of an Internet search query for “Ashley Madison” are related to Complainant’s services; it is therefore difficult to imagine a scenario where consumers would not be confused between the ASHLEY MADISON service mark and the disputed domain name <ashleymadison.mobi>.
The Panel finds that the disputed domain name is identical to the ASHLEY MADISON service mark in which Complainant has rights. The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
C. Rights or Legitimate Interests
Complainant has established rights in its ASHLEY MADISON service mark which precede registration of the disputed domain name. There is no evidence in the record to indicate that Respondent has been licensed by or otherwise authorized by Complainant to use Complainant’s ASHLEY MADISON service mark.
Respondent maintains that the disputed domain name was selected on behalf of a living individual and that the disputed domain name was selected for use as a language learning forum. The record indicates otherwise. Specifically, the record shows that the disputed domain name has been used to display links to third party websites and to offer the disputed domain name for sale to interested third parties. There is no evidence in the record which establishes that Respondent has a legitimate interest in using the disputed domain name for a bona fide offering of goods or services which would not be confused with the services provided by Complainant. Moreover, there is no evidence in the record establishing that Respondent has any rights in the names “Ashley” or “Madison” or legitimizing Respondent’s claim that the disputed domain name was chosen or has been used to promote a living individual. Finally, no evidence has been provided by Respondent which establishes that demonstrable preparations have been made to use the disputed domain name in good faith; on the contrary, the record only shows that the disputed domain name has been used by Respondent to advertise services of third parties which compete with Complainant and attempt to sell the disputed domain name to third parties for their use.
The Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
D. Registered and Used in Bad Faith
There is evidence in the record showing that Respondent has used the disputed domain name to trade off the goodwill of Complainant’s ASHLEY MADISON service mark. Specifically, the record shows that Respondent’s website has featured links to third party social networking websites which feature content and services competitive with the content featured on Complainant’s websites and provided under Complainant’s ASHLEY MADISON service mark. The incorporation of third party links regarding services competitive to those provided under another party’s trademark supports a finding that a domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728. Registration and use of a domain name incorporating a complainant’s trademark and providing links which expressly refer to services provided under that complainant’s trademark has been held to be indicative of a respondent’s knowledge of the services provided under the trademark. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517. By registering the disputed domain name composed of Complainant’s ASHLEY MADISON service mark and posting links to third party websites offering competitive services on the webpage featured at the disputed domain name, Respondent is diverting traffic from Complainant’s websites. Respondent’s conduct therefore falls within the scope of paragraph 4(b)(iv) of the Policy.
There is additional evidence of bad faith in the record. Specifically, the record shows that Respondent has advertised the disputed domain name for sale to the general public for a fee of GBP 100,000. There is also evidence suggesting that Respondent offered to sell the disputed domain name to Complainant for GBP 10,000. It appears clear to the Panel that these asking prices exceed any out-of-pocket costs associated with registration of the disputed domain name. Such behavior is cited as bad faith use under the Policy and has been held by prior UDRP panels to be evidence of bad faith. See, e.g., CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 and Clairol Incorporated v. Jean-Pierre Fux, WIPO Case No. DTV2001-0006. The Panel notes that an exception may be a situation where a respondent can show rights to or legitimate interests in a domain name, but this is clearly not the case here.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
E. Reverse Domain Name Hijacking
Respondent has alleged that this Complaint is an attempt of Reverse Domain Name Hijacking. The Panel has found that each of the three elements of the Policy has been satisfied by the Complaint and the record. Accordingly, the Panel finds that this Complaint has not been brought in bad faith and does not constitute an abuse of the administrative proceedings.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ashleymadison.mobi> be transferred to Complainant.
Kimberley Chen Nobles
Dated: May 9, 2012