WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ruby Life Inc. v. Domain Protection Services, Inc. / Omar Martin
Case No. D2019-2558
1. The Parties
The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Protection Services, Inc., United States of America (“United States”) / Omar Martin, United States.
2. The Domain Names and Registrars
The disputed domain names <ashley-madison.gallery> and <ashley-madison.photos> are registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 18, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 31, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 4, 2019.
The Center verified that the Complaint together with the amended 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 the Respondent of the Complaint, and the proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019.
The Center appointed Andrew F. Christie as the sole panelist in this matter on December 2, 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
The Complainant is a Canadian company, based in Toronto, Canada, and founded in 2002. It specializes in innovative dating services and operates online dating websites under the names “Ashley Madison”, “Cougar Life” and “Established Men”. These online platforms garner, respectively, around 9.42 million, 283,000 and 246,999 visits per month.
The Complainant’s flagship dating website is at “www.ashleymadison.com”. The site retains millions of members in over 50 countries, and in 2018 it averaged 14,500 new members joining daily. The Complainant’s domain name <ashleymadison.com> was registered on November 13, 2001, and is used by the Complainant to provide its services to online members.
The Complainant, its affiliates, subsidiaries and associated companies own, in numerous jurisdictions including Canada, the United States, the European Union and Australia, registrations for the word trademark ASHLEY MADISON, the earliest of which (Canadian registration no. TMA592582) was registered on October 20, 2003.
The Complainant sent a cease and desist letter to the Respondent on August 14, 2019, requesting the transfer of the disputed domain names no later than August 21, 2019. The Complainant did not receive a response to this letter.
The disputed domain names were registered on July 5, 2019. The Complainant has provided two screenshots of the login page of the “BL.INK” website, alleging that this is the website to which the disputed domain names resolve. The screenshots contain neither the date on which they were taken nor evidence that they resolved from the disputed domain names. The Panel has established that, at the date of this decision, both disputed domain names resolve to a login page for the “BL.INK” website at “https://app.bl.ink/login”.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar, if not identical, to the Complainant’s ASHLEY MADISON trademark because: (i) it is recognizable within the limits of the second level of the disputed domain names and includes a hyphen between the terms “ashley” and “madison”; and (ii) the generic Top-Level Domain (“gTLD”) identifiers “.gallery” and “.photos” should be disregarded because they are a standard registration requirement.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because: (i) to the best of the Complainant’s knowledge, the Respondent has not registered any trademarks for, and does not hold any unregistered rights to, the term “Ashley Madison”; (ii) the Respondent has not received any license from the Complainant to use a domain name which features the ASHLEY MADISON trademark, and all active registrations for the ASHLEY MADISON trademark are held by the Complainant; (iii) the Respondent has used the disputed domain names to redirect to the website at “www.app.bl.ink/login” which is the login page for URL shortening company BL.INK, which is not a genuine good faith use; (iv) the Respondent has taken unfair commercial advantage of the Complainant’s trademark by using domain names which are so closely similar to the Complainant’s trademark to redirect users intending for the services of the Complainant to services unconnected to the Complainant and its brand, which is not a bona fide offering of goods or services; (v) the Respondent is not known, and has never been known, as “ashley madison”; and (vi) the ASHLEY MADISON trademark is distinctive and not used in commerce other than by the Complainant, so there is no plausible reason for the registration of the disputed domain names other than to take advantage of the goodwill and valuable reputation attached to the “Ashley Madison” brand.
The Complainant contends that the disputed domain names were registered and are being used in bad faith because: (i) the Complainant’s earliest registration of the ASHLEY MADISON trademark predates the creation date of the disputed domain names by 15 years, and the Complainant has accrued substantial goodwill and recognition since its establishment in 2002; (ii) anyone with access to the Internet can find the Complainant’s trademark registrations on public trademark databases; (iii) the Respondent has chosen to ignore the cease and desist letter sent by the Complainant’s representative on August 14, 2019, putting the Respondent on notice of the Complainant’s trademarks and rights, and with a view to resolving the matter amicably; and (iv) the Respondent’s use of the disputed domain names to automatically redirect unsuspecting users to an unrelated website is a clear attempt to generate commercial gain, as there is evidence to show that purchases can be made on the website to which they redirect.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Each disputed domain name consists of the entirety of the Complainant’s registered word trademark ASHLEY MADISON, with the substitution of a hyphen for the space separating the words “ashley” and “madison”, and the gTLD identifier. The Complainant’s word trademark ASHLEY MADISON is clearly recognizable within each disputed domain name. Neither the substitution of the hyphen for the space between the words “ashley” and “madison” nor the respective gTLD identifier (“.gallery” or “.photos”) avoids the confusing similarity of the disputed domain names with the Complainant’s ASHLEY MADISON trademark. Accordingly, the Panel finds that both of the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ASHLEY MADISON trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain names, or that it has, for any other reason, rights or legitimate interests in the disputed domain names. The evidence shows that the disputed domain names were used to resolve to the login page of a website titled “BL.INK”, at which a range of paid services were offered. According to the present record, therefore, the disputed domain names are not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names were registered many years after the Complainant first registered its ASHLEY MADISON trademark. The evidence on the record provided by the Complainant with respect to the use of its ASHLEY MADISON trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain names, the Respondent knew of the Complainant’s trademark and knew that it had no rights or legitimate interests in the disputed domain names. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondent’s use of the disputed domain names indicates that the Respondent has used the disputed domain names to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain names have been registered and are 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 names <ashley-madison.gallery> and <ashley-madison.photos> be transferred to the Complainant.
Andrew F. Christie
Date: December 16, 2019