WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avid Dating Life Inc. v. Domain Admin, WhoisPrivacy Corp.
Case No. D2015-0448
1. The Parties
Complainant is Avid Dating Life Inc. of Toronto, Ontario, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
Respondent is Domain Admin, WhoisPrivacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <ashleymarison.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2015. On March 13, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 19, 2015, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 March 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 12, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 13, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on April 24, 2015. 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 the owner of registrations for the word trademark ASHLEY MADISON on the trademark registers of several countries/regions, including: (1) registration on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2,812,950, registration dated February 10, 2004, in international classes (ICs) 38 (covering provision of online chat room services concerning erotic and adult fantasy), and 45 (covering “computer services, namely, online dating and matchmaking and social introduction services”); (2) a Community Trade Mark (CTM) registered at the Office for Harmonization in the Internal Market (OHIM), registration number 007047764, registration dated October 13, 2009, in ICs 38 and 45, and; (3) registration on the register of IPAustralia, registration number 1250305, registration dated July 8, 2008, in ICs 38 and 45.
Complainant operates a commercial Internet website, principally at “www.ashleymadison.com”, providing a matching and dating service directed towards individuals seeking extra-marital relations. Since the launch of the online service in 2002, the user base of the service has expanded rapidly, such that there are currently over 20 million members and portals in 26 countries. In 2012, Complainant earned revenues of over USD 63 million. Complainant has expended substantial sums in advertising and promotion, including on the Internet.
Complainant has provided evidence of public recognition of its commercial service operated under the ASHLEY MADISON service mark, including stories in various major magazines and newspapers, on television, and on various websites.
According to the Registrar’s verification report, Respondent is registrant of the disputed domain name. According to that report, Respondent has been registrant of the disputed domain name since November 7, 2014. WhoIs data provided by Complainant shows the date of creation of the record of registration for the disputed domain name as November 7, 2014
Complainant has submitted evidence in the form of screenshots indicating that the disputed domain name has been used, inter alia, to redirect Internet users to websites displaying explicit pornographic content that are directed to “sex dating”. Subsequent to transmission of cease and desist demands from Complainant, including by email letter dated December 10, 2014, Respondent has redirected the disputed domain name to a nondescript Facebook page.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant contends that it has rights in the trademark ASHLEY MADISON, and that the disputed domain name is confusingly similar to that trademark, in the nature of typosquatting.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent has no connection with Complainant and has not been authorized by Complainant to use its trademark; (2) Respondent has not established trademark rights in the term used in the disputed domain name; and (3) neither redirecting the disputed domain name to a pornographic website, nor subsequently redirecting to a Facebook page following receipt of a cease–and-desist demand, establishes rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant has used its trademark in a domain name for 13 years and has established a prominent reputation; (2) Paragraph 2 of the Policy required Respondent to warranty that it would not infringe on the rights of a third party; (3) use of the disputed domain name to direct Internet users to an explicit pornographic website promoting casual sexual relationships was intended to disrupt Complainant’s business, and evidences knowledge of Complainant and its services; (4) Internet users looking for Complainant’s services who are not familiar with its website may be deceived into entering Respondent’s website believing it is related to or will lead to Complainant’s services, thus attempting to trade on the goodwill of Complainant’s trademark; (5) typo-squatting for commercial gain is evidence of bad faith; (6) while use of a privacy service does not in itself indicate bad faith, in this instance Respondent appears to be using a privacy service to evade capture for wrongdoing.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent by email and express courier. According to the records of the express courier, the notification was successfully delivered and signed for at the address provided in the record of registration of the disputed domain name (notwithstanding reference only to a street and building in Nassau, Bahamas). The Center followed the procedures for notification established by the Rules. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has provided evidence of ownership of rights in the trademark ASHLEY MADISON, including through registration in the United States of America (United States), the European Union, and Australia, and of use of the trademark in commerce. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark ASHLEY MADISON, at least in the United States, European Union, and Australia.
The disputed domain name, <ashleymarison.com>, is a one letter variation of Complainant’s trademark. There is a close visual similarity between Complainant’s trademark and the disputed domain name. Respondent’s use of the disputed domain name to direct Internet users to a website that appears to provide similar services to those provided by Complainant strongly suggests that Respondent adopted the typographical variation of Complainant’s trademark to take advantage of Internet user misspellings or visual proximity with Complainant’s trademark. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant has established that it holds rights in the ASHLEY MADISON trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, and has not presented evidence that might rebut the prima facie showing by Complainant.
The evidence before the Panel does not otherwise suggest rights or legitimate interests on the part of Respondent.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
Respondent has used the disputed domain name which is confusingly similar to Complainant’s trademark, to direct Internet users to Respondent’s website, which appears to offer similar services. Complainant has suggested that diverted Internet traffic combined with links to other websites is sufficient to indicate that Respondent’s website was operated for commercial gain. Although the precise method by which Respondent generated revenues by providing access to a website with explicit pornographic images and sex dating services is not expressly indicated in the evidence before the Panel, the Panel infers from the screenshots provided by Complainant that Respondent’s website was operated for a commercial purpose.
The Panel determines that Respondent registered and used the disputed domain name, for commercial gain, to create a likelihood of confusion with Complainant’s trademark as to Complainant serving as the source, sponsor, affiliate or endorser of Respondent’s website. This constitutes bad faith within the meaning of Paragraph 4(b)(iv) of the Policy.
Respondent has apparently attempted to avoid a finding of use in bad faith by redirecting the disputed domain name to a nondescript Facebook page. In the overall circumstances of this case, notably the prior use of the disputed domain name, such redirection does not alter the Panel’s finding of bad faith registration and use.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant.
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 name <ashleymarison.com> be transferred to the Complainant.
Frederick M. Abbott
Date: May 7, 2015