WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ruby Life Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2019-1456
1. The Parties
Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
Respondent is Domain Admin, Whois Privacy Corp., Bahamas.
2. The Domain Name and Registrar
The disputed domain name <ashlaymadison.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2019. On June 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 27, 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 June 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 19, 2019.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on July 25, 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, Ruby Life Inc., a Canadian operator of online dating websites based in Toronto, Canada, was founded in 2002. It owns various trademark registrations around the word for the ASHLEY MADISON Mark (or the “Mark”) including Canadian Trademark Registration No. TMA592582 (registered October 20, 2003) and United States of America (“United States”) Trademark Registration No. 2812950 (registered February 10, 2004). Complainant uses the Mark for the dating website “www.ashleymadison.com” that caters to various types of discreet adult relationships. The site retains millions of members in over 50 countries, and is in the top 4,000 most visited websites in the world. In 2017, it averaged 152,035 new accounts per month in the United States.
The Domain Name was registered on November 27, 2005. It is used to automatically redirect online users to an ever-changing series of third-party websites.
5. Parties’ Contentions
Complainant uses the Mark as part of their company logo to distinguish their services from their competitors’ services and it has acquired a significant amount of goodwill and recognition globally. Further, since its inception, Complainant has been featured in various media outlets including articles, news reports and a Netflix documentary. Also, Complainant has an established social media presence using the Mark (e.g., Facebook, Twitter, YouTube).
In addition to the registrations for the Mark, the compound term is a distinctive identifier associated with Complainant’s services. The Domain Name is a misspelling of Complainant’s ASHLEY MADISON trademark, with the letter ‘a’ replacing the letter ‘e’. Such misspellings do not negate confusingly similarity, particularly where the differences are so small. With respect to the generic Top-Level Domain (“gTLD”) “.com” in the Domain Name, this should be disregarded as it is a standard registration requirement.
To the best of Complainant’s knowledge, Respondent does not have any rights to the term “Ashley Madison”. Complainant has not licensed Respondent to use domain names featuring the ASHLEY MADISON Mark. All active trademarks for the term “Ashley Madison” are held by Complainant, thus there is no plausible reason for the registration and use of the Domain Name, other than with the ulterior motive of using it to gain revenue through redirections and through selling the Domain Name. Instead of using the Domain Name in connection with a bona fide offering of services, Respondent has deliberately used a misspelling of the Mark to confuse online users in order to earn revenue. The Domain Name is being used to automatically redirect online users to an ever-changing series of third-party websites. Such third-party websites include a fake news article passing-off as a well-known online newspaper publication to promote a fraudulent get rich quick service.
The Mark is distinctive and not used in commerce other than by Complainant. To the best of Complainant’s knowledge, Respondent is not commonly known by the term “Ashley Madison” or “Ashlaymadison”, nor is Respondent offering any goods or service by the term “Ashley Madison” or “Ashlaymadison”.
The evidence shows that Respondent is not making a legitimate noncommercial use of the Domain Name. Respondent is generating monetary revenue through automatically redirecting online users to third-party websites, using the Domain Name which is confusingly similar to Complainant’s trademark. This use is not a legitimate noncommercial or fair use of the Domain Name, as it uses the goodwill of the famous ASHLEY MADISON mark to generate revenue and direct online users to potentially fraudulent websites.
Complainant’s earliest trademark registration predates the creation date of the Domain Name by two years. In addition, substantial goodwill has accrued since Complainant’s establishment in 2002, because the ASHLEY MADISON Mark has become world-renowned in the sector of online dating, having customers and users around the globe. Searching “Ashley Madison” on popular Internet search engines such as Google, lists Complainant’s brand and services as the first result. Moreover, any average Internet user has access to ASHLEY MADISON trademark registrations, as they can be found on public trademark databases. Also, Respondent ignored a cease and desist letter Complainant’s Representatives sent on May 17, 2019.
Respondent is offering the Domain Name for sale through the popular domain name aftermarket site Sedo. Offering to sell a confusingly similar domain name can evidence bad faith under the Policy. Furthermore, Respondent’s intent in registering the Domain Name was to profit from exploiting Complainant’s trademark, including the fact that Respondent is clearly aware of Complainant’s trademark (given the confusing similarity between the Domain Name and the distinctive ASHLEY MADISON Mark), and that the Domain Name is used for redirecting the user to other websites.
Respondent’s use of the Domain Name, which is to automatically redirect online users to third-party websites, is an indication of bad faith use. This is particularly so where Respondent presumably attracts commercial gain through redirecting traffic to these third-party websites. The online user is, most often, redirected to either a fraudulent website, or websites which instruct the user to do something, such as downloading an image or clicking “Allow” on a pop-up box. Such websites demonstrate characteristics conducive of fraudulent websites, whether through phishing (inputting personal data or depositing money to a website) or through downloading malware (by downloading a file or permitting the website to carry out a function). Additionally, there is evidence that Respondent has used the Domain Name to host a pay-per-click (PPC) page. The use of PPC links by Respondent on the site associated with the Domain Name constitutes a clear attempt to generate a commercial gain, particularly by misleading online users with the Domain Name, and subsequently redirecting these online users to third-party websites. This is particularly so given that the Domain Name is an example of “typosquatting”, as it is confusingly similar to Complainant’s Mark, which increases the likelihood of confusion.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has submitted evidence of trademark registrations for the ASHLEY MADISON Mark on the Principal Register of the United States Patent and Trademark Office and elsewhere around the world. The Panel thus finds that Complainant has rights in the Mark.
The Panel further finds that the Domain Name <ashlaymadison.com> is confusingly similar to the ASHLEY MADISON Mark. The Domain Name incorporates the entirety of the Mark with only one minor distinction — substituting an “a” for the “e” in “ashley” and the addition of the gTLD “.com”.
When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, adding the gTLD “.com” is of no legal significance from the standpoint of comparing the Domain Name to the Mark because the use of a gTLD is required of domain name registrants. See SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602. Similarly, UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant's trademark does not create a new or different mark in which Respondent has legitimate rights”. See Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc., WIPO Case No. D2003-0317. Such an insignificant modification to a trademark is commonly referred to as “typosquatting” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser's location bar. See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
It is uncontested that Complainant has not licensed or otherwise authorized Respondent to use the Mark, e.g., in a domain name. Nor is there any evidence that Respondent has rights in the Mark. Insofar as Complainant has made a prima facie showing, this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainant’s favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007.
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel concludes, on the evidence submitted by Complainant, that Respondent has registered and used the Domain Name in bad faith. As an initial matter, Respondent’s mere act of typosquatting presents ample evidence of bad faith in the circumstances here. Briefing.com Inc. v. Cost New Domain Manager, WIPO Case No. D2001-0970 (finding that “Respondent has demonstrated bad faith by engaging in ‘typo-piracy' to confuse Internet users and draw them away from Complainant's website”).
Notwithstanding that, Respondent’s bad faith in registering the Domain Name is supported by the following undisputed facts: (1) Respondent registered a domain name that incorporates the entirety of Complainant’s Mark, which has been used since 2002, changing one letter; (2) there is no relationship between Respondent and Complainant and Complainant has not given Respondent permission to use the Mark for any purpose, including in a domain name or for use on Respondent’s website; and (3) Complainant’s website has been in use since 2001.
Furthermore, Respondent is using the Domain Name to redirect online users to third-party websites. Online users are, most often, redirected to either a fraudulent website, or websites which instruct the user to do something, such as downloading an image or clicking “Allow” on a pop-up box. Such websites demonstrate characteristics conducive of fraudulent websites, whether through phishing (inputting personal data or depositing money to a website) or through downloading malware (by downloading a file or permitting the website to carry out a function). It is established as bad faith use where a respondent uses the domain name to redirect users to what appears to be a fraudulent website.
Additionally, there is evidence that Respondent has used the Domain Name to host a PPC page. Such use of the Domain Name is an attempt to benefit commercially particularly by misleading online users with a domain name that is confusingly similar to the Mark and subsequently redirecting them to third-party websites that are in Complainant’s business sector. See Revlon Consumer Products Corporation v. Moniker Privacy Services / Janice Liburd, WIPO Case No. D2011-0315.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <ashlaymadison.com> be transferred to Complainant.
Harrie R. Samaras
Date: July 28, 2019