WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avid Dating Life Inc. v. WhoIs privacy service / Chen sizhu c/o Dynadot Privacy

Case No. D2012-1265

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 WhoIs privacy service, Chen sizhu c/o Dynadot Privacy of San Mateo, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names

<asahleymadison.com>
<asgleymadison.com>
<ashaleymadison.com>
<ashieymadison.com>
<ashlejmadison.com>
<ashlelmadison.com>
<ashleumadison.com>
<ashleylmadison.com>
<ashleymadason.com>
<ashleymaddson.com>
<ashleymadeison.com>
<ashleymadiseon.com>
<ashleymadisoln.com>
<ashleymadisonc.com>
<ashleymadisoncom.com>
<ashleymadisond.com>
<ashleymadisonh.com>
<ashleymadisonj.com>
<ashleymadiso9n.com>
<ashleymadiswon.com>
<ashleymadisxon.com>
<ashleymadiszon.com>
<ashleymadyson.com>
<ashleymanison.com>
<ashleymaqdison.com>
<ashleymawdison.com>
<ashleymodison.com>
<ashleysmadison.com>
<azhleymadison.com>
<sashleymadison.com> and
<wshleymadison.com>

are registered with Dynadot, LLC (the “Registrar”).

The abovementioned disputed domain names are referred to hereinafter as the “Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2012. On June 21, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 22, 2012, 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 for the Domain Names.

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 July 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 23, 2012. The Respondent sent informal communications to the Center on July 3, July 5, July 9 and July 26, 2012. The Center notified the parties that it would be proceeding to Panel Appointment on July 25, 2012.

The Center appointed Willem J. H. Leppink as the sole panelist in this matter on July 31, 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

The Domain Names were registered on the following dates:

1 <asahleymadison.com> 2008-12-21

2 <sashleymadison.com> 2008-12-21

3 <ashleymadisonh.com> 2010-09-29

4 <ashleymadisonj.com> 2010-09-29

5 <ashleysmadison.com> 2010-09-29

6 <ashaleymadison.com> 2010-11-05

7 <ashleymadiso9n.com> 2010-11-05

8 <ashleymadisoln.com> 2010-11-05

9 <ashleymadisond.com> 2010-11-05

10 <ashleymaqdison.com> 2010-11-05

11 <ashleymadeison.com> 2010-12-01

12 <ashleymadiseon.com> 2010-12-01

13 <ashleymadiswon.com> 2010-12-01

14 <ashleymadiszon.com> 2010-12-01

15 <ashleymadisonc.com> 2010-12-02

16 <ashleylmadison.com> 2010-12-08

17 <ashleymadisxon.com> 2010-12-08

18 <ashleymawdison.com> 2010-12-08

19 <ashleymadisoncom.com> 2011-09-08

20 <ashleumadison.com> 2009-01-08

21 <ashieymadison.com> 2010-09-29

22 <ashleymaddson.com> 2010-11-05

23 <ashleymodison.com> 2010-11-05

24 <azhleymadison.com> 2010-11-05

25 <wshleymadison.com> 2010-11-05

26 <ashleymanison.com> 2010-12-08

27 <ashleymadyson.com> 2010-12-15

28 <ashlelmadison.com> 2011-02-09

29 <asgleymadison.com> 2011-03-09

30 <ashlejmadison.com> 2011-05-03

31 <ashleymadason.com> 2011-05-26

5. Parties’ Contentions

A. Complainant

Complainant has invoked four trade mark registrations of its ASHLEY MADISON mark (hereinafter referred to as the “Trade Mark”) with validity by virtue of registration with the respective trade mark offices in the United States of America, Canada, the European Union and Austria.

Complainant has (summarized) stated the following.

The Domain Names are confusingly similar to the Trade Mark as they are all typo-variants of the Trade Mark. With the exception of a single domain name, the remaining 30 disputed domain names differ from the Trade Mark only by a single character making them confusingly similar in appearance.

With reference to other decisions under the Policy and the Rules, given the typo-variant nature of the Domain Names, Complainant respectfully submits that the Panel find the Domain Names to be confusingly similar to the Trade Mark as the typosquatting practice has long been recognized as a strong ground for a finding of identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy.

Secondly, Respondent has no rights or legitimate interests in respect of the Domain Names, due to the typo-variant nature of the Domain Names. There is no evidence on record that would bring Respondent’s registration and use of the Domain Names within any of the safe harbors of paragraph 4(c) of the Policy and as such, Respondent should be considered as having no rights or legitimate interests in respect of the Domain Names.

Thirdly, the Domain Names were registered and are being used in bad faith by Respondent. In making such assertion, Complainant relies on a general notion of bad faith as the examples listed under Paragraph 4(b) of the Policy are not exhausted.

Respondent is an individual known as Kevin Nelson who is based in the United States. Respondent is a cybersquatter with a pattern of conduct of registering typo-variations of well-known brands who has made use of various aliases in order to elude liability. Moreover, at the time of registering each of the individual Domain Names, Respondent had ample knowledge of the Trade Mark.

Complainant supports such assertion with the fact that Respondent has provided misleading and false WhoIs details on several occasions. Respondent began registering typo-variants of the Trade Mark toward the end of 2008 under the alias of “li shuang yu” with an address in China. In fact, Respondent was publically linked to his alias identity “li shuang yu” in an article published by the Washington Business Journal in relation to cybersquatting.

Respondent’s conduct equates to a textbook example of typosquatting and since typosquatting is as close as it is possible to come to per se cybersquatting, given that typosquatting is parasitic in nature, proof of bad faith is unitary as the Domain Names themselves are evidence of bad faith.

In addition, Respondent’s conduct epitomises deviousness and chicanery. After registering Domain Names numbers 1, 2, and 20, Respondent subsequently signed up as an affiliate to Complainant’s Ashley Madison affiliate program using his real name, Kevin Nelson. However, Complainant masked the traffic and misled Complainant to believe that the traffic was coming from the website “Gameue.com”, in breach of the Ashley Madison Affiliate Agreement. From March 2009 up until August 2012, Respondent earned commission for each successful referral that was made through to Complainant’s Ashley Madison website. During this timeframe, with the exception of domain name No. 19, Respondent registered the rest of the Domain Names. This leads to a strong inference of bad faith registration and use given that the Domain Names are likely to have been used by Respondent in relation to the Ashley Madison affiliate program.

Although the redirections can be seen to accrue some benefit to Complainant, Complainant asserts that this in itself cannot absolve or lessen the inherent bad faith of Respondent’s parasitic conduct. As a result of Respondent’s conduct, Complainant became bound to pay commission fees for the benefit of traffic which, given new browser technology, could reasonably have been expected to reach Complainant’s site directly, were it not for Respondent’s registration and use of confusingly similar domain names.

Finally, Respondent appears to have used a selection of the Domain Names to redirect traffic to a competitor of Complainant. As such, Respondent’s continued ownership and control of the Domain Names is detrimental to Complainant given that Respondent’s sole objective is to benefit from the goodwill associated with the Trade Marks in an opportunistic underhanded manner.

Complainant requests that the Domain Names be transferred to Complainant.

B. Respondent

Respondent did not formally reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain a decision that the Domain Names be either cancelled or transferred:

(i) The Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the Domain Names; and

(iii) The Domain Names have been registered and are being used in bad faith.

Cancellation or transfer of the Domain Names are the sole remedies provided to Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of UDRP panels have concluded that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

A. Identical or Confusingly Similar

The Panel finds that all the Domain Names are confusingly similar to the Trade Mark for the purposes of the first requirement of paragraph 4(a) of the Policy. All the Domain Names consist of typographical misspellings of the Trade Mark (e.g., <ashleymanison.com>, <ashleymadason.com>). Respondent is thus clearly engaging in “typosquatting”, a practice that has been condemned and been found to be confusingly similar to the marks which they mimic (See, e.g., Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587).

The first requirement of paragraph 4(a) of the Policy has therefore been met.

B. Rights or Legitimate Interests

Complainant has prima facie shown that Respondent has no rights or legitimate interests in the Domain Names. As a consequence, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Domain Names. As Respondent has failed to come forward with such appropriate allegations or evidence, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Therefore, the second element of paragraph 4(a) of the Policy has been met.

C. Registered and Used in Bad Faith

Complainant has undisputedly stated that Respondent has registered and has been using the Domain Names to profit from Complainant’s affiliate program by redirecting Internet users to Complainant’s website via the Domain Names. Therefore, the Respondent been using the Domain Names to attract, for commercial gain, Internet users to an online location, by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the website, as described in article 4(b)(iv) of the Policy.

Consequently, also the third element of the Policy has been satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names

be transferred to Complainant.

Willem J. H. Leppink
Sole Panelist
Dated: August 8, 2012