WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avid Dating Life Inc. v. IT Admin.
Case No. D2013-0891
1. The Parties
The Complainant is Avid Dating Life Inc. of Toronto, Ontario, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is IT Admin. of Tortola, Virgin Islands (British), Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Ashley Nadison, Virgin Islands (British), Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ashleynadison.com> 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 May 22, 2013. On May 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2013, 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 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2013. The Response was filed with the Center on June 5, 2013.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 20, 2013. 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.
On June 21, 2013 the Panel issued an Administrative Procedural Order No. 1 requesting the Respondent to provide evidence that the Respondent’s name is indeed Ashley Nadison; and/or evidence that the Respondent is known by that name; and/or evidence that the Respondent has adopted it in the Respondent’s commercial activities.
No reply was received from the Respondent as to the Administrative Procedural Order No. 1, as per the Center’s confirmation of July 2, 2013.
4. Factual Background
The undisputed facts of the case are that the Complainant was founded in 2007 as a social entertainment company, owning and operating online communities. One of these communities is ASHLEY MADISON, based on the website “www.ashleymadison.com” originally launched in 2001, where likeminded individuals may meet and interact to create relationships.
Due to a series of controversial commercials the website has generated a lot of publicity as well as attracted considerable media attention (Annexes 5 and 5.2 to the Complaint).
The Complainant owns trademark registrations for ASHLEY MADISON in Australia (Reg. No. 1250305 of July 8, 2008), Canada (Reg No. TMA 592582 of October 20, 2003), Europe (CTM Reg. No. 007047764 of October 13, 2009) and the United States of America (Reg. No. 2812950 of February 10, 2004) (Annex 6 to the Complaint].
The disputed domain name <ashleynadison.com> was registered on March 9, 2011.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to its well known ASHLEY MADISON mark and 56 different domain names that incorporate this expression, thus creating a likelihood of confusion between the disputed domain name and the Complainant’s trademark and domain names.
The Complainant further asserts that its mark was created by using the two most common American female names at the time and that it has not been registered or used by the Complainant as the name of any identifiable living individual.
In the Complainant’s view it enjoys full and unlimited rights in its trademark due to its trademark registrations as well as due to its common law rights in the term arising from over 10 years of use. The Complainant claims to be exclusively associated with the term ASHLEY MADISON.
The Complainant also states that the Respondent has not been licensed or authorized by it in any way to use the ASHLEY MADSION mark. Moreover, the Respondent is not affiliated with it in anyway whatsoever and could not make any legitimate use of the disputed domain name given the fame, reputation and goodwill associated with the Complainant’s mark.
Furthermore, the Complainant asserts that the Respondent used the disputed domain name in a way that attracted Internet users looking for its site to a website offering services not authorized by the Complainant and competitive to those of the Complainant (Annex 8 to the Complaint).
Also, under the Complainant’s view there is no evidence which would suggest that the Respondent is commonly known by the disputed domain name, rather on the contrary the disputed domain name was selected and registered with the intent to attract for commercial gain Internet users to the Respondent’s website by trading on the fame of the Complainant’s mark and creating a likelihood of confusion therewith.
Under the Complainant’s view the Respondent’s bad faith in registering and using the disputed domain name is also evident given that the content of the site associated with the disputed domain name clearly indicates that the Respondent was aware of the Complainant’s mark at the time of the registration of the disputed domain name and specifically selected it in an attempt to create a likelihood of confusion, also likely disrupting the Complainant’s business given that the Complainant’s prospective customers and potential clients were redirected to the Complainant’s competitors.
Lastly, the Complainant asserts that the Respondent was given a fair chance to justify the registration in view of a warning letter which was sent on November 28, 2012 (Annex 10 to the Complaint).
This letter was replied to by an individual referring to himself only as “Joe” and led to an exchange of emails between the Complainant’s counsel and “Joe” who lastly wrote “I believe you can winn (sic) this time again. But why not offer a 1000 USD compensation for my client and get the domain in 3 days? You need to pay 1500 USD and get the domain name in more than 30 days”.
This characterizes, in the Complainant’s view, the evident purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark depicted in the disputed domain name for valuable consideration in excess of out-of-pocket costs related to the disputed domain name.
In a ten-line submission the Respondent claims to have registered the disputed domain name because it is his personal name and he planned to build a personal blog about his daily life as an IT engineer.
However, after having written more than 20 blogs the Respondent says that he gave up since he received many spam ad messages in the comments area of the site which lead him to set the disputed domain name as a one page holding site since January 2012.
He further states that he never offered to sell the disputed domain name to anyone and he did not agree to sell the disputed domain name when a prospective buyer approached him.
The Respondent asserts that there is no evidence that he was aware of the ASHLEY MADISON trademark when he registered and used the disputed domain name.
Lastly, the Respondent points out that a Google search of ASHLEY NADISON shows his website on the first place of the first page and that Google searches of the names ASHLEY and NADISON show that both ASHLEY and NADISON are very popular names.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the ASHLEY MADISON trademark according to the registrations owned by it in Australia (Reg. No. 1250305 of July 08, 2008), Canada (Reg No. TMA 592582 of October 20, 2003), Europe (CTM Reg. No. 007047764 of October 13, 2009) and the United States of America (Reg. No. 2812950 of February 10, 2004) (Annex 6 to the Complaint].
In this Panel’s view, the letter “M” in MADISON being replaced by the letter “N”, is not sufficient enough to distinguish the disputed domain name from the Complainant’s mark or the goodwill associated with it, especially in view of the fact that the letters “N” and “M” on a QWERTY keyboard are next to each other and could easily be mistyped.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the Respondent is 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.
The Respondent has sought in a very simple way to defend his domain name registration by merely stating that his name is Ashley Nadison. By failing to produce a single piece of evidence (especially when expressly requested to do so – in view of Administrative Procedural Order No. 1) he has failed to demonstrate a right or legitimate interest in the disputed domain name.
Moreover the only attachments submitted with the reply were a print-out of the current webpage relating to the disputed domain name (in which it is simply stated “MY BLOG I am Ashley Nadison. This is my blog.”) and the first page of a Google.com.hk search for “ASHLEY NADISON” which shows as first result the page relating to the disputed domain name (and curiously enough as second result the webpage relating to the Complainant).
To sum up, the Respondent has not submitted a single document or evidence that could show his connection with the name Ashley Nadison, nor has he submitted any of the posts on his blog – which currently only has 10 words being displayed (“MY BLOG I am Ashley Nadison. This is my blog.”)
Furthermore, in spite of the specific Administrative Procedural Order No. 1 requesting the Respondent to provide evidence that his name is indeed Ashley Nadison; and/or evidence that the he is known by that name; and/or evidence that he has adopted it in his commercial activities, no reply was received from the Respondent.
The Complainant, on the other side, has made a prima facie case against the Respondent, and has asserted that there is no evidence which indicates demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is no evidence to suggest that the disputed domain name was indeed used as a blog, but there is evidence that it has been used divert users to the Complainant’s competitors as evident from Annexes 8 and 9 to the Complaint.
Furthermore, the Complainant has further shown that in correpondence with the Respondent, the Respondent has indicated that the amount of USD 1,000.00 could be accepted in exchange of the disptued domain name (Annexes 11 and 12 to the Complaint). Such amount, in this Panel’s view characterizes more than the simple out-of-pocket expenses that the Respondent incurred in registering the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website 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 website or location or of a product or service on the website or location.
In this case, which clearly can be considered in this Panel’s view as a typosquatting one, the use of the disputed domain name to divert users to Complainant’s competitors (Annexes 8 and 9 to the Complaint) characterizes the Respondent’s intent of commercial gain by misleadingly diverting the Complainant’s consumers or merely earning revenues from an undue association with the Complainant’s trademark due to a variation of the original mark depicted in the disputed domain name.
As to the Respondent’s statement that there is no evidence that he was aware of the ASHLEY MADISON trademark when he registered and used the domain name, the use of the disputed domain name as shown in Annexes 8 and 9 indicate the contrary.
Lastly, had the Respondent really been named or known as ASHLEY NADISON, evidence of such could easily have been produced to support it – and in that sense the Google search results the Respondent himself produced show quite the contrary: the only reference to Ashley Nadison is the disputed domain name. The second result is the Complainant’s website. Should there really be a person known or named Ashley Nadison the results would very likely be different.
For the same reasons as those stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
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 <ashleynadison.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: July 4, 2013