WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ruby Life Inc. v. Cui Long
Case No. D2019-0358
1. The Parties
Complainant is Ruby Life Inc. of Toronto, Ontario, Canada, represented by SafeNames Ltd., United Kingdom.
Respondent is Cui Long of Huzhou, Zhejiang, China.
2. The Domain Name and Registrar
The disputed domain name <ashleymadison.asia> 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 February 15, 2019. On February 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 15, 2019, 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 February 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 18, 2019.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 22, 2019. 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 the operator of online dating websites, including a web site maintained at the domain name <ashleymadison.com>. Complainant registered the domain name which links to the web site on November 13, 2001. Complaint, Annex 6. The web site now receives thirteen million visits per month. Complaint, Annex 4. Complainant’s web site and the dating services it offers has been the featured subject of much media attention. Complaint, Annex 10. The web site has millions of customers in over 50 countries, and in 2017, averaged more than 150,000 new accounts per month in the United States of America (“United States”) alone. As a result, Complainant’s web site has become well-known and famous.
Complainant is the owner of numerous trademark and service mark registrations for its ASHLEY MADISON mark, including in Canada (registration number TMA592582, registered on October 20, 2003), the United States (registration number 2812950, registered on February 20, 2004), and the European Union (registration number 007047764, registered on October 13, 2009).
Respondent registered the disputed domain name on July 12, 2018. Complainant uses the disputed domain name to resolve to a web site that currently hosts a pay-per-click advertising page which contains links to web sites which offer similar services to those offered by Complainant. Complaint, Annex 12. Some of the links redirect users to web sites maintained by direct competitors of Complainant. Complaint, Annex 13.
Respondent sent Complainant an email dated November 27, 2018, in which Respondent offered to sell the disputed domain name to Complainant for USD 2,000. Complaint, Annex 14. The web site to which the disputed domain name resolves currently offers the disputed domain name for sale for the same amount, redirecting the user to a web site which offers for sale domain names registered by others. Complaint, Annex 18.
Respondent has in the past engaged in the registration of domain names which correspond to the trademarks of others, including such famous marks as JIMMY CHOO (<jimmychoo.tw>), ORACLE (<oracle.mk>), LEVI STRAUSS (<levistrauss.kr>), and SWAROVSKI (<swarovski.mk>). Complaint, Annex 20.
Complainant has sent Respondent a cease-and-desist letter dated December 3, 2018, and a follow-up thereto dated December 13, 2018 (Complaint, Annex 17) to neither of which Respondent replied.
5. Parties’ Contentions
Complainant asserts that the disputed domain name is identical to Complainant’s ASHLEY MADISON trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, in that Complainant has never authorized Respondent to use its trademark in any way, and Complainant knows of no trademarks in respect of the disputed domain name which are owned by Respondent, and that Respondent has registered and is using the disputed domain name in bad faith.
Respondent did not reply to the 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.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.”
A. Identical or Confusingly Similar
The disputed domain name consists of Complainant’s widely-known trademark and service mark ASHLEY MADISON, absent only the space between the two elements, appended to the generic Top-Level Domain (“gTLD”) “.asia”. Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s famous trademark.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain names and Respondent has failed to assert any such rights. Accordingly, on the record before it the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
Respondent has used the disputed domain name to resolve to a web site which contains links to competitors of Complainant who are offering services in direct competition with those offered by Complainant. Moreover, Respondent has by unsolicited email offered to sell the disputed domain name to Complainant and has offered the disputed domain name for sale to the public on the web site to which the disputed domain name resolves. Respondent has failed to respond to a cease-and-desist letter and a follow up letter sent to Respondent by Complainant, demanding that Respondent cease and desist in Respondent’s use of the disputed domain name. Finally, Respondent has used domain names consisting of the trademarks of others as domain names in the past, and has been previously found to be acting in bad faith in so doing, such conduct occurring repeatedly such that it demonstrates a pattern of bad faith.
Therefore, the Panel finds that the disputed domain name was registered and being used 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.asia> be transferred to Complainant.
M. Scott Donahey
Date: March 27, 2019