WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ruby Life Inc. v. Tom Fu

Case No. D2017-0445

1. The Parties

Complainant is Ruby Life Inc. of Toronto, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.

Respondent is Tom Fu of Chengdu, China.

2. The Domain Name and Registrar

The Disputed Domain Name <established-men.com> (the “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 March 3, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 6, 2017, 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 29, 2017. At request of Complainant, the proceedings were suspended on March 30, 2017 and reinstituted on May 11, 2017. Respondent sent an email communication to the Center on April 28, 2017, which stated: “Yes, terminat[e] these proceedings. We can reconcile.” This communication did not contest any of Complainant’s allegations in the Complaint.

The Center appointed Richard W. Page as the sole panelist in this matter on May 12, 2017. 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 a market leader in the online dating industry and operates many open-minded and unique dating brands, including ASHLEY MADISON, ESTABLISHED MEN and COUGAR LIFE, all of which have had exposure in the press for their controversial nature. Complainant was initially founded in 2007 and was headquartered in Toronto, Canada. Recently, Complainant has been rebranded as “Ruby Life Inc.” with a new CEO and a new President, who have continued to promote the above-mentioned brands.

The ESTABLISHED MEN brand was founded in 2008 by an individual, who from personal experiences, found that there was a niche market in dating for women who were attracted to wealthy men or “sugar daddies”. The brand has grown to be an established dating service, achieving both national and international recognition within the dating market.

As part of Complainant’s efforts to protect its intellectual property, Complainant, its affiliates, subsidiaries and associated companies own trademarks within numerous jurisdictions including but not limited to the following which are publically available on trademark websites such as “www.tmdn.org/tmview”. Complainant’s registrations include: European Union Registration No. 008461816, registered January 31, 2010; Canadian Registration No. TMA774494, registered August 13, 2010; and United States of America Registration No. 77645756, registered August 13, 2010 (the “ESTABLISHED MEN Mark”).

Complainant uses a graphic version of its ESTABLISHED MEN Mark as part of the company logo, which features the ESTABLISHED MEN word, with a crown on the top of the capital “E”. This logo has been used by Complainant for several years to distinguish its services from others in the dating market.

The Disputed Domain Name was registered on November 5, 2015. The Disputed Domain Name resolves to a website which predominantly features reviews and links to Respondent’s own Disputed Domain Name and other related domain names, which offer dating services.

5. Parties’ Contentions

A. Complainant

Complainant contends that it holds rights in and to the ESTABLISHED MEN Mark, which are evident in its trademark registrations. Complainant submits that it has spent a substantial amount of time, money, and effort in promoting, marketing, and using the ESTABLISHED MEN trademark to identify and distinguish its services. Consequently, the ESTABLISHED MEN Mark has become recognized in many countries and is considered an extremely valuable asset by Complainant.

In addition to trademark registrations, Complainant has also registered two ESTABLISHED MEN domain names: <establishedmen.com> which was registered on December 31, 2007 and <establishedmen.net> which was registered on July 21, 2008. The former domain name is the official gateway for Complainant’s ESTABLISHED MEN services and enable users to sign up for the services from a wide geographic reach. Due to the reputation of this domain, it is the first hit on many popular search engines, such as Google, when you enter “ESTABLISHED MAN”.

In addition to statutory rights, Complainant also contends that it enjoys common law rights, supported by the popularity of its own <establishedmen.com> domain name on popular search engines like Google and the exposure of the ESTABLISHED MEN Mark in the media.

Complainant further contends that the Disputed Domain Name is identical or at the very least confusingly similar to the ESTABLISHED MEN Mark. The Disputed Domain Name incorporates Complainant’s trademark entirely, with the exception of a hyphen between the words ESTABLISHED and MEN, which does not materially affect the overall impression of the Disputed Domain Name in the eyes of an Internet user.

Complainant submits that Respondent lacks rights and legitimate interest in the Disputed Domain Name. Complainant further submits that the Disputed Domain Name is currently being used as a “review” website with the option of linking a user to various dating websites, many of which are owned by Respondent, including but not limited to <uksugardaddy.co.uk> and <seekwealthymen.com>. In addition to these links, Respondent also features Complainant’s ESTABLISHED MEN Mark and a description of the services offered. However, Respondent does not link users to the official ESTABLISHED MEN website and instead links users to another page entitled “Established-Men”, which is operated by Respondent.

Complainant alleges that Respondent has not engaged in any bona fide use or preparations to use the Disputed Domain Name because a logical inference is that Respondent is trying to get Internet users to sign up for Respondent’s own dating services. Complainant continues to allege that Respondent is not commonly known by the name “Established-Men” and has never been given permission by Complainant to use its ESTABLISHED MEN Mark. Complainant continues to allege that Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name. The website to which the Disputed Domain Name resolves predominantly features reviews and links to Respondent’s own Disputed Domain Name and other related domain names, which offer similar dating services to those of Complainant. As such these activities are clearly an attempt by Respondent to use the ESTABLISHED MEN Mark in order to redirect users to Respondent’s own services, where Respondent can make a financial gain.

Complainant avers that Respondent has both registered and used the Disputed Domain Name in bad faith. Complainant further avers that Respondent had actual knowledge of the ESTABLISHED MEN Mark because the use of Complainant’s logo and description of Complainant’s services are clearly featured in the Disputed Domain Name and on the website to which the Disputed Domain Name resolves.

Complainant continues to aver that Respondent has intentionally chosen the Disputed Domain Name in order to direct Internet users to Respondent’s own competing dating services. Respondent should be regarded as a “competitor” for the purposes of this dispute, as Respondent offers similar niche services – specifically that of matching older, wealthy men with younger women.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Respondent is not obliged to participate in this domain name dispute proceeding, but when it fails to do so, asserted facts that are not unreasonable may be taken as true and Respondent is subject to the inferences that flow naturally from the information provided by Complainant. See Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) that 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

Complainant alleges that it owns numerous registrations of the ESTABLISHED MEN Mark, including but not limited to European Union Registration No. 008461816; Canadian Registration No. TMA774494; and United States of America Registration No. 77645756.

Prior UDRP decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047.

Complainant has offered evidence of the registrations for the ESTABLISHED MEN Mark. Respondent has not contested this evidence.

Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable rights in the ESTABLISHED MEN Mark.

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the ESTABLISHED MEN Mark, pursuant to the Policy, paragraph 4(a)(i).

Numerous UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. Complainant argues that the entirety of the ESTABLISHED MEN Mark is incorporated into the Disputed Domain Name. Complainant further argues that when a Disputed Domain Name incorporates an entire trademark with only the addition of a common symbol in the form of a hyphen, it is still confusingly similar to the trademark because the hyphen is non-distinctive. See, Hoffmann-LaRoche AG v. P Martin, WIPO Case No. D2009-0323; Dixons Group Plc. v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; V&S Vin & Sprit AB v. Ooar Supplies, WIPO Case No. D2004-0962; Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206; SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the ESTABLISHED MEN Mark.

The Panel finds that based on this evidence Complainant has shown the necessary elements of confusing similarity under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.

Paragraph 2.1 of the WIPO Overview 2.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Policy, paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant submits that the Disputed Domain Name is currently being used as a “review” website with the option of linking a user to various dating websites, many of which are owned by Respondent, including but not limited to <uksugardaddy.co.uk> and <seekwealthymen.com>. In addition to these links, Respondent also features Complainant’s ESTABLISHED MEN Mark and a description of the services offered. However, Respondent does not link users to the official ESTABLISHED MEN website and instead links users to another page entitled “Established-Men”, which is operated by Respondent.

Complainant alleges that Respondent has not engaged in any bona fide use or preparations to use the Disputed Domain Name because a logical inference is that Respondent is trying to get Internet users to sign up for Respondent’s own dating services. Complainant continues to allege that Respondent is not commonly known by the name ESTABLISHED MEN and has never been given permission by Complainant to use its ESTABLISHED MEN Mark. Complainant continues to allege that Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name. The website to which the Disputed Domain Name resolves predominantly features reviews and links to Respondent’s own Disputed Domain Name and other related domain names, which offer similar dating services to those of Complainant. As such these activities are an attempt by Respondent to use the ESTABLISHED MEN Mark in order to redirect users to Respondent’s own services, where Respondent can make a financial gain.

The Complainant has sustained its burden of making a prima facie case that the Respondent lacks rights to or legitimate interests in the Disputed Domain Name.

Respondent has not contested these allegations by Complainant.

Therefore, the Panel finds that Complainant has sufficiently met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with Complainant’s ESTABLISHED MEN Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

Complainant avers that Respondent had actual knowledge of the ESTABLISHED MEN Mark because the use of Complainant’s logo and description of Complainant’s services are clearly featured in the Disputed Domain Name and on the website to which the Disputed Domain Name resolves.

Complainant further avers that Respondent has intentionally chosen the Disputed Domain Name in order to direct Internet users to Respondent’s own competing dating services. Respondent should be regarded as a “competitor” for the purposes of this dispute, as Respondent offers similar niche services – specifically that of matching older, wealthy men with younger women.

Respondent has not contested these averments.

From the evidence before it, the Panel finds that Complainant has demonstrated the requirements of paragraph 4(b)(iv) of the Policy and hence proven paragraph 4(a)(iii).

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 Disputed Domain Name, <established-men.com>, be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: May 26, 2017