WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ruby Life Inc. v. Oneandone Private Registration / Joy Bertrand

Case No. D2019-2559

1. The Parties

The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.

The Respondent is Oneandone Private Registration, United States of America / Joy Bertrand, United States of America (“United States” or “U.S”). .

2. The Domain Names and Registrars

The disputed domain names <ashleymadisonbusted.com> and <ashleymadisonbusted.net> are registered with 1&1 IONOS Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2019. On October 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 21, 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 23, 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 October 25, 2020.

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 October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent submitted its Response on November 18, 2019.

On November 21, 2019, the Complainant’s representative requested a suspension of the proceeding in order for the parties to discuss a potential settlement. On December 19, 2019, the Complainant submitted a request for a further extension. Following that extension, the Complainant confirmed on January 20, 2020 that it wished for the proceeding to be re-instated.

The Center appointed Warwick Rothnie as the sole panelist in this matter on January 27, 2020. 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 (then known as Avid Life Media) registered the domain name <ashleymadison.com> in about 2001. Since 2002, it has been operating a dating website, prominently branded “Ashley Madison”, from that domain name “which caters for various types of discreet adult relationships.”

According to the Complaint, the Complainant’s service has members in over 50 countries and in 2018 averaged 14,500 new members joining daily. In addition to the website at “www.ashleymadison.com”, the Complainant maintains active Facebook, Twitter and YouTube accounts at uniform resource locators (“URLs”) ending in “ AshleyMadison”.

The Complainant is the owner of four registered trademarks for ASHLEY MADISON:

(a) Canadian Registered Trademark No. TMA592582, which was registered on October 20, 2003 for services in International Classes 41 and 45;

(b) United States Registered Trademark No. 2,812,950, which was registered on February 10, 2004 for services in International Classes 38 and 45;

(c) European Union Trademark No. 007047764, which was registered on October 13, 2009 for services in International Classes 38 and 45; and

(d) Australian Registered Trademark No. 1, 250,305, which was registered on July 8, 2008 for services in International Classes 38 and 45.

The Respondent registered both disputed domain names on August 20, 2015.

The nature of the webpage to which both disputed domain names resolves is disputed between the parties and is discussed below.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the 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.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of at least the registered trademarks for ASHLEY MADISON identified in section 4 of the Decision. There can also be little doubt that, at least by 2018, the trademark itself was very well-known in at least the United States.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademark. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), sections 1.7 and 1.11.

Disregarding the “.com” and “.net” gTLDs, the two disputed domain names differ from the Complainant’s trademark by the addition of the word “busted” as a “suffix” and the omission of the space between the words “Ashley” and “Madison”. Both disputed domain names therefore incorporate the entirety of the Complainant’s trademark. The word “busted” can be seen as a “negative” or critical factor. Nonetheless, such cases are considered confusingly similar under the Policy with the merits of the case to be determined under the second and third requirements of the Policy. See e.g. WIPO Overview 3.0, section 1.13.

Accordingly, the Panel finds that the Complainant has established that both disputed domain names are confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] 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) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.

There is no dispute between the parties that the Respondent is not in any way associated with, or licensed by the Complainant. There is also no dispute between the parties that the disputed domain names are not derived from the Respondent’s name or any trademark held or used by the Respondent.

The Complainant says that both disputed domain names resolve to a website which features pay-per-click (PPC) links to dating services which, in effect, compete with the Complainant’s own service. As the Complainant points out, that sort of use, where it takes advantage of a complainant’s trademark rights, does not qualify as a right or legitimate interest under the Policy. See WIPO Overview 3.0, section 2.9.

The Respondent denies the Complainant’s allegations. She says she registered the disputed domain names in 2015 for use in potential litigation against the Complainant following a widely publicised data breach around that time. The Respondent contends that the “busted” component of the disputed domain names underscores that the disputed domain names are not competing with the Complainant. The Respondent “flatly denies” that the websites are being used for PPC advertising and has submitted print outs of both domains which she says support that contention. The Respondent contends that the Respondent’s use is no different to the links to class action advertisements used by other plaintiffs’ law firms.

Insofar as one can tell from searches on the Internet, the Respondent does in fact appear to operate a law firm with a significant plaintiffs’ civil rights focus. The Panel does not question the right of American legal consumers to the attorneys of their choice. Nor does the Panel question the Respondent’s right to advertise her services. The Respondent describes this as an “absolute right”. If that is intended to mean the Respondent has some sort of immunity for her activities regardless of whether they infringe other people’s rights, including intellectual property rights such as trademarks, the Panel does not agree that the Policy accords such an immunity. As already noted, the matters set out in paragraph 4(c) of the Policy are not an exhaustive listing of the circumstances which may give rise to rights or legitimate interests. Nonetheless, they demonstrate that there are qualifications on registrants’ rights to register and use domain names. The very existence of the Policy confirms that.

To the extent that the Respondent is relying on the negative connotations of “busted” when used in connection with the Complainant’s trademark, the claim will support a right or legitimate interest under the Policy where, similarly to the cases on criticism sites, it is genuinely being used in connection with the claimed purpose. See e.g. WIPO Overview 3.0, section 2.6.

Similarly, a claim of demonstrable preparations for use in connection with a bona fide offering of goods or services must typically be supported by evidence showing either the use in good faith or demonstrating preparations to engage in such use.

The print outs which have been submitted are of pages almost identical to the printouts submitted by the Complainant and also to the pages to which the disputed domain names currently resolve. Under a heading “Related Links” they include links under topics such as “Married Women Dating”, “RSVP Dating”, “Ashley Dating”, “Discreet Affairs” and the like.

The materials submitted by the Respondent do not follow these links. The materials submitted by the Complainant include two print outs which appear to follow those links. The print outs include links such as:

- AFFAIR DATING SITE – SEARCH AFFAIR DATING SITE
“AD” izito.co.uk/Affair+Dating+Site/Quality Results
Discover Affair Dating Site. Find Quick Results from Multiple Sources
Visit Website

- OVER 40S DATING ONLINE UK – MEET MATURE SINGLES NEAR YOU – TRY FOR FREE
“AD” www.over40sdatingonline.com/
Dating Site For 40_ Singles – Over 40s Dating Online. Try Free. Find, Chat, Flirt & Date Other 40+ Singles Near You. Join Free Now
Visit Website

- MEET SINGL ARAB WOMEN – ARABMATCHMAKING.COM
“AD” www.arabmatchmaking.com/
Meet Arab Women looking for Dating and Serious Relationships. Join Free Now!
Visit Website

Allowing for the different locations of the Complainant’s representative and the Panel, the links to which the disputed domain names currently resolve are essentially of the same type.

Despite the Respondent’s denial, the links on the websites to which the disputed domain names resolve are plainly PPC links. They are very different to the links to other law firms’ websites provided by the Respondent. First, the URLs of the other law firms’ websites include their own domain names. Most importantly, the other law firms’ websites actually contain content related to the alleged tortious conduct. In contrast, the links on the Respondent’s websites compete with or seek to capitalise on the trademark significance of the Complainant’s trademark. They do not relate at all to the Complainant’s data breach or other allegedly wrongful conduct. They do not support a finding of rights or legitimate interests under the Policy. See WIPO Overview 3.0, section 2.9.

Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been registered and used in bad faith by the Respondent/ see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Paragraph 4(b) identifies situations which my demonstrate that registration or use of a disputed domain name was in bad faith under the Policy:

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:

(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [the Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or

(ii) [the Respondent has] 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 [the Respondent has] engaged in a pattern of such conduct; or

(iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.

The present circumstances reflect the circumstances set out in paragraph 4(b)(iv) above. Insofar as there may be a question about “intention”, the Panel notes that respondents cannot avoid liability under the Policy in the case of even if the PPC links are “automatically” generated without the Respondent’s involvement or profit. As summarized by WIPO Overview 3.0, section 3.5:

Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.

“While a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name, panels have found positive efforts by the respondent to avoid links which target the complainant’s mark (e.g., through “negative keywords”) to be a mitigating factor in assessing bad faith.”

The fact that the Respondent operates a law firm with a plaintiffs’ civil litigation focus provides some support for registration of the disputed domain names for purposes which are not objectional under the Policy. It is, however, equivocal. Despite the passage of more than four years, on the evidence in this proceeding there has been no attempt at all to use the disputed domain names in connection with the proposed litigation. On the other hand, the evidence in this proceeding shows that the disputed domain names have only ever been used to provide PPC links in competition with the Complainant’s trademark. That is conduct falling squarely within paragraph 4(b)(iv) of the Policy. The Respondent has not apparently made any attempt to prevent the use of the disputed domain names in this infringing manner, even after being put on notice of the Complainant’s objections.

In these circumstances, the Panel finds that the disputed domain names have been registered and used in bad faith.

6. 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 names <ashleymadisonbusted.com> and <ashleymadisonbusted.net>, be transferred to the Complainant.

Warwick A Rothnie
Sole Panelist
Date: February 10, 2020