WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avid Dating Life Inc. v. Zhu Xumei
Case No. DCO2014-0006
1. The Parties
The Complainant is Avid Dating Life Inc. of Toronto, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Zhu Xumei of Huzou, China.
2. The Domain Name and Registrar
The disputed domain name <ashleymadison.com.co> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2014. On April 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 25, 2014, 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.
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 May 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 28, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2014.
The Center appointed Marilena Comanescu as the sole panelist in this matter on June 5, 2014. 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.
The language of the proceeding is English.
4. Factual Background
The Complainant, Avid Dating Life Inc. is a Canadian company founded in 2001. The Complainant is a subsidiary of parent company Avid Life Media Inc., a social entertainment company who operate five main online dating brands.
The Complainant’s most recognized brand is ASHLEY MADISON which was launched in 2002 and used in connection with a dating website, “www.ashleymadison.com”. According to the Complainant, the website is currently the fastest growing dating website for its target audience, with over 20 million members and portals in 26 countries covering several continents, including Asia. In 2014 the Complainant’s brand was listed 29th in Canada’s Profit 500 rankings with a five-year revenue growth of 1,695%. Its revenue has multiplied 18 times in six years with revenue of USD 63,603,000 for 2012. Given those figures, the Complainant’s ASHLEY MADISON mark has gained worldwide reputation in its field.
Further, the Complainant holds trademark registrations for ASHLEY MADISON, such as:
- the United States of America trademark registration No. 2812950 for the word ASHLEY MADISON registered on February 10, 2004 for services in International Classes 38, 45; and
- the Community trademark registration No. 007047764 for the word ASHLEY MADISON registered on October 13, 2009 for services in International Classes 38, 45.
The disputed domain name <ashleymadison.com.co> was created on November 15, 2013. At the time of filing the Complaint, it was used in relation to a pay-per-click webpage redirecting Internet users to third-party websites, including some related to the Complainant’s services. The corresponding webpage also displayed an announcement stating that the disputed domain name was for sale. In fact, at the Complainant’s request to transfer the disputed domain name to it, sent prior to commencing this procedure, the Respondent requested the amount of USD 1,999 to complete such transfer.
Several complaints under the UDRP have been filed against the same apparent Respondent, all decided in favor of the complainants. See QVC, Inc. v. Zhu Xumei, WIPO Case No. DMX2013-0014 for the domain names <qvc.com.mx> and <qvc.mx>; Legrand France v. Zhu Xumei, ADNDRC Case No. CN-1300720 for the domain name <legrand.tel>; and ACCOR v. Zhu Xumei, NOMINET Case No. D00013171 for the domain name <mgallery.co.uk>.
Further, according to the Complaint, the same apparent Respondent is the holder of another at least 300 domain names, some of these incorporating famous third party marks, e.g.<chevrolet.com.tw>, <geotrust.org> and <sisleyparis.net>.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical to its trademark ASHLEY MADISON, the Respondent has no rights or legitimate interests in the disputed domain name and the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In view of the default and the absence of any reply to the Complaint by the Respondent, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 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
The Complainant holds worldwide trademark registrations for the ASHLEY MADISON mark in connection with website dating services. The disputed domain name <ashleymadison.com.co> incorporates the Complainant’s trademark in its entirety without any other word or letter.
It is well-established in decisions under the UDRP that the presence or absence of spaces, punctuation marks between words or indicators for country code Top Level Domains (e.g. “.com.co”, “.ro”, “.us”) are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name <ashleymadison.com.co> is identical to the Complainant’s trademark ASHLEY MADISON.
B. Rights or Legitimate Interests
The Complainant asserts that it has given the Respondent no license or other right to use its trademarks, that the Respondent is not commonly known by the disputed domain name and that it has not conducted legitimate business under the name “ashleymadison”. In line with the previous UDRP decisions, the Panel accepts that the Complainant has provided a prima facie case of the Respondent’s lack of rights or legitimate interests in relation to the disputed domain name, and as such the burden of production shifts to the Respondent.
The Respondent chose not to challenge the Complainant’s allegations. There is no evidence before the Panel to support any position contrary to these allegations, and therefore the Panel accepts these arguments as facts.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name <ashleymadison.com.co>.
C. Registered and Used in Bad Faith
The disputed domain name was created in 2013 and incorporates the Complainant’s mark launched in 2002 and widely used in connection with online dating services.
The disputed domain name resolves to a webpage containing advertising links, from which the Respondent likely benefits through the Registrar’s “Cash Parking” monetization program. This fact supports the inference that the purpose of the Respondent’s diversion of traffic from the Complainant to itself is for the Respondent’s own commercial gain. Such facts constitute bad faith under paragraph 4(b)(iv) of the Policy.
The Complainant provided, annexed to the Complaint, an email communication in which the Respondent offered the transfer of the disputed domain name to it for the amount of USD 1,999, an amount which is considerably in excess of the reasonable out-of-pocket costs related to the registration of this domain name. Paragraph 4(b)(i) of the Policy identifies as evidence of bad faith a situation in which the respondent has registered the domain name primarily for the purpose of selling the domain name to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name. Particularly due to the Respondent’s history of registering domain names incorporating third party marks, the Respondent’s reaction to Complainant’s approach to transfer the disputed domain name to it and the Complainant’s extensive use of its ASHLEY MADISON trademark and website, it seems very likely that this situation listed by paragraph 4(b)(i) of the Policy is applicable in the present case.
Furthermore, the Complainant listed several UDRP cases filed against the Respondent, all resolved in favor of the complainants. This also constitutes evidence of bad faith under paragraph 4(b)(ii) of the Policy, which provides that it is evidence of bad faith when the Respondent has registered the disputed domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct. Paragraph 3.3 of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) explains that a pattern of conduct involves multiple UDRP cases with similar fact situations. Here, the Respondent has been involved in several other similar UDRP cases: domain names containing third-party trademarks used in connection to link farms, as detailed in the Complaint and Section 4 above.
For the above, the Panel finds that the Respondent registered and is using the disputed domain name <ashleymadison.com.co> in bad faith.
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 <ashleymadison.com.co> be transferred to the Complainant.
Date: June 17, 2014