WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avid Dating Life Inc. v. Erin Nemshick
Case No. D2014-1638
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 (“UK”).
The Respondent is Erin Nemshick of Philadelphia, Pennsylvania, United States of America (“US”), represented by Ryan A. Wertman, Esq., US.
2. The Domain Name and Registrar
The disputed domain name <smashleymadison.com> (“Disputed Domain Name”) 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 September 22, 2014. On September 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 23, 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 September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Response was filed with the Center on October 16, 2014.
The Center appointed Charné Le Roux as the sole panelist in this matter on October 29, 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.
4. Factual Background
The Complainant is a Canadian company, founded in 2001. It is involved in the social entertainment industry specializing in online dating services. The Complainant registered the domain name <ashleymadison.com> in November 2001 and launched its flagship brand under the name ASHLEY MADISON in early 2002. The trade mark is used in connection with a dating website for a specific target audience. The Complainant’s dating website has, since its launch, acquired over 20 million members. The website has portals in 26 countries which include, more recently, Japan and India. The Complainant’s ASHLEY MADISON brand was listed in the 29th position in Canada’s Profit 500 rankings with a 5 year revenue growth of 1.695% in 2014. Its revenues have multiplied 18 times in 6 years with revenues of USD 63,603,000 for the year 2012. The Complainant obtained trade mark registrations for the mark ASHLEY MADISON in Canada, USA, UK and Australia in the years 2002 and 2008 respectively. It also obtained a CTM registration for the mark in 2008.
The Disputed Domain Name was registered on June 28, 2014. The website attached to the Disputed Domain Name was originally used as a PPC site offering sponsored links in connection with various types of goods and services. It is currently pointed to a free parking page. The Complainant sent correspondence to the Respondent on July 25, 2014 and August 5, 2014, requesting it to transfer the Disputed Domain Name to the Complainant. The Respondent reacted to the correspondence through its legal representative, denying the Complainant’s claims. An attempt to settle the matter failed.
5. Parties’ Contentions
The Complainant submits that it has been prominent and well known within the online dating industry, particularly following the launch of its most recognized brand ASHLEY MADISON in 2002. As indicated above, the Complainant registered the domain name <ashleymadison.com> in November 2001 and subsequently, over the period 2002-2008, obtained registrations in the USA, Europe, Canada and Australia for this brand. The Complainant claims it has acquired substantial rights as a consequence of the success of its brand and that this followed its investment of a great deal of money, time and effort into advertising the online dating website, including on YouTube advertisements, billboards, radio, newspaper and television advertisements. The Complainant demonstrated its stated promotion of its ASHLEY MADISON trade mark with supporting evidence. The Complainant comments that its advertisements created during the airing of the Super Bowl have attracted major media publicity. It claims that its trade mark is famous.
The Complainant argues that the Disputed Domain Name is confusingly similar to its ASHLEY MADISON trade mark, the only difference being the addition of the combination of the letters “sm” as prefix to the Disputed Domain Name. It argues that these letters have little impact on the aural or visual nature of the name and do not distinguish the Disputed Domain Name from the trade mark ASHLEY MADISON. The Complainant suggests that the term “sm” may have been added as a reference to the term “sado masochism”, given the provocative nature of some of the Complainant’s advertisements.
The Complainant contends that the Respondent lacks rights or legitimate interests in the Disputed Domain Name in that:
(a) the Respondent is not commonly known by the Disputed Domain Name as an individual or otherwise. The Complainant indicates, in support of its claim of the absence of a reputation in the Disputed Domain Name by the Respondent, that a number of searches for the term “smashley madison” automatically return results for ASHLEY MADISON and, even with the letters “sm” added to the trade mark, that it is dominant enough to be recognized as ASHLEY MADISON.
(b) up to receiving notification of the Complainant’s claim in the trade mark ASHLEY MADISON, the Disputed Domain Name resolved to a PPC site with various sponsored links. Following the notification referred to, the Respondent changed the website to a free parking page. These actions, the Complainant claims, do not constitute legitimate noncommercial or fair use.
(c) there are no preparations being made by the Respondent to use the Disputed Domain Name in connection with the bona fide offering of goods or services. The Complainant submits that the refusal by the Respondent’s representatives to provide the Complainant with a business plan supports its above stated contention.
The Complainant submits that it has shown a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and consequently that the burden of proof transfers to the Respondent.
The Complainant contends that the Disputed Domain Name was registered and is being used in bad faith.
It submits that following its cease and desist letters to the Respondent, the Respondent’s representatives refused to provide the Complainant with information regarding the Respondent’s supposed plans for legitimate use of the Disputed Domain Name, but denied that there was any intention by the Respondent to infringe the Complainant’s rights. The Complainant points out that if the Respondent is so adamant that its registration and use of the Disputed Domain Name would not infringe the Complainant’s rights, it should not have been difficult to demonstrate its proposed legitimate plans or provide information to allay the Complainant’s concerns.
The Complainant relies on the settlement proposed by the Respondent’s representative, albeit apparently without the Respondent’s specific authority, on the basis of a payment of USD 1,200 in exchange for a transfer of the Disputed Domain Name to the Complainant, as an offer to sell the Disputed Domain Name for an amount in excess of the Respondent’s out of pocket costs. The Complainant advises that it reacted with a counter offer of USD 100 to cover the registration and maintenance costs incurred, which the Respondent rejected. The Complainant asserts that the Respondent’s true intention in initiating settlement discussions was to enter into bad faith negotiations in order to pressurize the Complainant.
The Complainant argues that the Respondent must have been aware of the Complainant’s rights when the Disputed Domain Name was registered, not only because of the general renown associated with the Complainant’s ASHLEY MADISON trade mark in the United States, but more notably due to specific promotion that the Complainant undertook in Philadelphia in the US, where the Respondent is resident, a few months before the registration of the Disputed Domain Name.
The Complainant asserts that the use of the Disputed Domain Name in connection with a PPC page to generate revenue from click through referrals constitutes bad faith. The Complainant also asserts that the Respondent’s later passive holding of the Disputed Domain Name does not avoid the ambit of the Policy.
The Complainant submits, lastly, that the Disputed Domain Name is so obviously connected to the Complainant that its use by someone with no connection to the Complainant suggests opportunistic bad faith.
The Complainant requests that the Disputed Domain Name be transferred to it.
The Respondent does not deny the evidence that the Complainant has submitted in connection with its rights in the trade mark ASHLEY MADISON or that the trade mark is famous. It takes issue with the Complainant’s assertion that the Disputed Domain Name is confusingly similar to its ASHLEY MADISON trade mark. The Respondent submits that, at best for the Complainant, the Disputed Domain Name rhymes with the Complainant’s trade mark and it refers to the case Caesars World, Inc. v. Starnet Communications and Atlantic West Gaming Entertainment, Ltd, WIPO Case No. D2002-0066. The Respondent argues that much like in the Caesar’s case, the word “smashley” in the Disputed Domain Name has established stand alone meaning (the panel in the Caesar’s decision found in connection with the domain names <teaserspalace.com> and <teaserspalace.net> that the word “teaser” had a distinct stand alone meaning). In connection with the word “smashley” stand alone meaning, the Respondent presents evidence showing that the word “smashley” means “someone named Ashley who can’t hold her alcohol, a combination of the words SMASHED and ASHLEY”. The Respondent argues that the Complainant cannot claim rights in instances where “Ashley” or “Madison” are combined with other words. The Respondent also refers to Google searches for “smashley madison”, stating that the only reference to ASHLEY MADISON as a consequence of the above stated search was in the paid search results and that the results demonstrate that “smashley” was a fairly common nickname and slang term.
The Respondent strongly denies that the addition of the term “sm” to the Disputed Domain Name refers to sado masochism.
The Respondent states in connection with its rights and legitimate interests in respect of the Disputed Domain Name that the initial PPC site was a standard GoDaddy template, that the Respondent has made no effort to send traffic to that site, nor has generated any income from it. The Respondent also states that it had no obligation to share its business plan with the Complainant, because it was faced with an unfounded claim.
The Respondent denies that there was any requirement for it to have begun a launch of the venture intended for the Disputed Domain Name, since the Disputed Domain Name was registered less than 5 months prior to the filing of this dispute. The Respondent states that it has nevertheless taken tangible efforts towards establishing the development of a business plan. It does not provide any further information in this regard, however.
The Respondent states in connection with the claim that the Disputed Domain Name was registered and used in bad faith, that the settlement proposal made by its representative was not discussed with the Respondent and was simply in order to avoid a costly and time consuming legal dispute.
The Respondent also denies that any visitor to a website associated with the Disputed Domain Name would be expecting a website related to the Complainant’s ASHLEY MADISON brand or that the Respondent is intentionally trying to redirect potential ASHLEY MADISON traffic to its own website. It states that there is simply no evidence that the Respondent has taken any action to attract or redirect the Complainant’s web traffic, or that it benefited from the Complainant’s brand or website, or that it implied in any way that the parties’ respective websites are affiliated, or that it has taken any action indicating bad faith.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Disputed Domain Name, the Complainant must prove on a balance of probabilities:
(i) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar to a mark in which the Complainant has rights
The Complainant has demonstrated that it has acquired rights in the trade mark ASHLEY MADISON by virtue of its portfolio of trade mark registrations for it and its considerable use of the mark for over a decade. The Complainant asserts that as a consequence of its substantial promotion of its trade mark, it has become famous. This was not denied by the Respondent. The Panel finds that the Complainant’s ASHLEY MADISON trade mark is well-known at least in the online dating and social networking sectors.
Ignoring for this purpose the generic domain suffix “.com” (as the Panel is entitled to do), the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s well-known trade mark ASHLEY MADISON. The Panel considered the visual and aural similarities and, in addition, also the conceptual similarities between the two names. It also took account of the evidence offered by the Respondent showing that the word “smashley” may refer to “someone named Ashley who can’t hold her alcohol”. The Panel there is a close connection between the words “smashley” and “ashley”. The Panel finds that the two terms are conceptually so closely connected that there is a likelihood of confusion. See WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.2 and also the decision in Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Javier Llorens, WIPO Case No. D2000-1319. Furthermore, the Panel notes that the Disputed Domain Name is not “smashley” on its own but it is used in combination with “madison". The Panel also notes that the Disputed Domain Name contains in its entirety the trademark ASHLEY MADISON.
B. Rights or Legitimate Interests
The Complainant asserts that its ASHLEY MADISON trade mark is famous, that the Respondent is not known by the Disputed Domain Name, that its only use of the Disputed Domain Name to date was to link it with a PPC site and/or parking page which do not constitute legitimate noncommercial or fair use of the Disputed Domain Name, and that no other demonstrable preparations have been made to use the Disputed Domain Name in connection with the bona fide offering of goods and services.
The Panel finds that the Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy and that there is a case for the Respondent to answer. The Respondent does not, however, do so. The Respondent makes many assertions regarding a business plan that the Respondent has prepared and also that there is an intention to use the Disputed Domain Name in connection with non-infringing use, but it has not offered any evidence or any information whatsoever about the nature of this intended use. The Panel finds on balance this baffling. Surely, for this Panel if there was an intention in connection with the use of the Disputed Domain Name other than the PPC or passive use, such an intention would have been present on the day that the Disputed Domain Name was registered. The Respondent’s lack of candour leaves the Panel with no choice but to find that the Respondent has made no demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods and services. The Panel also does not consider the use of the Disputed Domain Name in connection with a PPC site or parking page, particularly in view of the finding that the Complainant’s trade mark is well-known, to be legitimate, noncommercial or fair use in this case.
The Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel took into account the following factors in connection with the question of the Respondent’s registration and use of the Disputed Domain Name in bad faith, namely:
(a) that the Disputed Domain Name was registered many years after the Complainant had established rights in its trade mark ASHLEY MADISON;
(b) that the ASHLEY MADISON trade mark was well known within the United States and was specifically promoted in the Philadelphia area where the Respondent is resident;
(c) the close association between the Disputed Domain Name and the trade mark ASHLEY MADISON;
(d) that the Respondent’s first use in connection with the Disputed Domain Name was to point it to a PPC site (an action which the Panel ascribes directly to the Respondent despite its denial that no actual income has been derived or that traffic has not been actively directed away from the Complainant’s website);
(e) that the PPC site only changed to a parking page after notification of the Complainant’s claims; and lastly
(f) the Respondent’s failure to provide any explanation for its choice of the words “smashley madison” for a domain name, or its real intention with the Disputed Domain Name.
All these factors have persuaded the Panel that the Respondent has registered and is using the Disputed Domain Name in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In view of the finding above the Panel does not consider it necessary to make a specific finding in connection with the offer by the Respondent’s representative to sell the Disputed Domain Name to the Complainant, in particular whether such an offer was indeed made and whether it could be considered an act of bad faith as provided in paragraph 4(b)(i) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <smashleymadison.com> be transferred to the Complainant.
Charné Le Roux
Date: November 11, 2014