WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avid Life Media Inc. v. Kobe Xu

Case No. DCC2011-0002

1. The Parties

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

The Respondent is Kobe Xu of Brisbane, Queensland, Australia.

2. The Domain Name and Registrar

The disputed domain name <ashleymadison.cc> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2011. On February 9, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 9, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2011. A response from the Respondent, by way of a communication by email, was sent to the Center on February 23, 2011.

The Center appointed Francine Tan as the sole panelist in this matter on March 16, 2011. 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 based in Toronto, Canada, and was founded in 2007. It is a social entertainment company which has registered over 800 domain names in connection with their various brands and online communities. In these online communities, people build profiles where they can meet people who have similar life choice interests as they do. One of the trade marks that the Complainant owns is ASHLEY MADISON.

The website at “www.ashleymadison.com” was launched in 2001. It is asserted in the Complaint that the online social networking community under the ASHLEY MADISON trade mark has proven to be very fast growing, boasting a community consisting of over 8 million members worldwide within the first year of its launch. Ashley Madison has been prominently featured in television commercials on the radio, chat shows and even the news. As such, a lot of publicity has been generated internationally for the Complainant’s ASHLEY MADISON trade mark. The Complainant asserts that the ASHLEY MADISON trade mark is recognized globally and is identified in the minds of consumers as exclusively being related to the services which it provides.

The Complainant is the registered proprietor of the ASHLEY MADISON trade mark in, inter alia, the United States of America, Australia, the European Community and Canada. The trade mark is registered in relation to online chatroom, and matchmaking and dating services.

In terms of domain name registrations, the Complainant, its affiliates, subsidiaries and associated companies own domain names incorporating the ASHLEY MADISON trade mark in over 56 different top level domain codes. Some of these domains, e.g. <ashleymadison.com>, ashley-madison.com>, <ashleymadison.net> and <ashleymadison.org>, were registered in November 2001, 9 years before the registration date (November 28, 2008) of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant contends, firstly, that the disputed domain name is identical to a trade mark in which the Complainant has rights:

(i) The ASHLEY MADISON trade mark has been incorporated in its entirety in the disputed domain name. As has been established in previous UDRP panel decisions, the absence of a space in the disputed domain name between the words “Ashley” and “Madison” is of no significance and does not alter the fact that the disputed domain name is identical to the Complainant’s mark.

(ii) Further, the ccTLD “.cc” can be ignored when addressing the issue of whether a domain name is identical or confusingly similar to a trade mark of a complainant (Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; The Forward Association Inc. v. Enterprises Unlimited, NAF Claim No. 95491; Turkcell Iletisim Hizmetleri A.S. v. kara tara, WIPO Case No. D2010-1184).

Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in disputed domain name:

(i) There is no evidence that the Respondent can demonstrate that any of the circumstances that are set out in paragraph 4(c) of the Policy are available as a defence to his case. The Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent’s website to which the disputed domain name resolves, as at the time of filing the Complaint, directs, advertises and provides links to the websites of the Complainant’s competitors. The Respondent has also replicated the Complainant’s logo and trade mark on his webpage. The Respondent has therefore registered the disputed domain name with the intention to misleadingly divert consumers to his webpage. Even where some Internet users may subsequently realize there is no affiliation between the Complainant and the Respondent’s webpage, the Respondent may have gained commercially by attracting them to the website. The Respondent’s use of the disputed domain name, namely by trading on the fame of another, does not constitute a bona fide offering of goods and services.

(ii) Further, the Respondent has not been commonly known by the disputed domain name. Searches of the Canadian, European, Australian and United States trademark databases reveal there are no registrations that associate the trade mark, ASHLEY MADISON, to the Respondent; on the contrary, they refer only to the Complainant.

(iii) The Respondent has not been given permission, nor licensed or authorized by the Complainant to use the ASHLEY MADISON trade mark in or as part of a domain name.

(iv) The Respondent has used the trade mark ASHLEY MADISON in the disputed domain name to create an impression of association with the Complainant.

(v) The Respondent is not making a legitimate noncommercial fair use of the disputed domain name and has an intention for commercial gain to misleadingly divert consumers to tarnish the Complainant’s ASHLEY MADISON trade mark. The Respondent’s website is being used to redirect Internet users to the sites of the Complainant’s competitors. This use does not give rights or legitimate interests in the disputed domain name.

Thirdly, the Complainant contends that the disputed domain name was registered and is being used in bad faith:

(i) The Respondent’s primary intention for registering the disputed domain name was to disrupt the business of a competitor, namely, the Complainant, and this is supported by the manner of use of the Respondent’s website as mentioned above. A disruption can be inferred by the fact that the Respondent has used his website to redirect or contain links which resolve to the websites of the Complainant’s competitors, directly or indirectly. The Respondent’s webpage contained text and images from the Complainant’s website.

(ii) By entering the disputed domain name in the URL, Internet users would be led to the Respondent’s webpage where the Complainant’s logo is visible. As a result of this initial confusion, the Complainant may be harmed as customers may go on to use the services of their competitors as they may be misled into believing that the Respondent’s website is associated with the Complainant.

(iii) The Respondent’s intention of registering the disputed domain name for commercial gain is demonstrated by the fact that his website is used for click-through advertisements. Paragraph 4(b)(iv) of the Policy provides that this constitutes evidence of bad faith registration and use.

(iv) The Respondent had actual or constructive knowledge of the Complainant’s rights in the disputed domain name, and this supports a finding of bad faith (eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137). The ASHLEY MADISON trade mark has a strong reputation and is widely known. Hence, there is no conceivable way the Respondent was not aware of the Complainant’s said trade mark. Previous UDRP decisions have established the principle that the incorporation of a well-known trade mark into a domain name by a respondent who has no plausible explanation for doing so may be, in and of itself, be an indication of bad faith (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112).

(v) The Respondent intentionally registered the disputed domain name to make a commercial gain from the reputation of the Complainant. Internet users would be led to believe that the Complainant endorses or is associated with the Respondent’s website.

B. Respondent

No formal Response in accordance with the Policy was filed by the Respondent. However, the Respondent sent an email to the Center on February 23, 2011. The Center acknowledged receipt of the communication on the same day noting that the due date for Response was March 3, 2011 and that if no further communication was received by the Respondent, the email communication of February 23, 2011 would be regarded as the Response for the purposes of these proceedings. Since no further communication was received from the Respondent, on March 4, 2011 the Center communicated the parties that it would consider the February 23, 2011 communication as the Respondent’s response and proceed to appoint the Panel.

In its communication the Respondent asserted, inter alia, that he registered the disputed domain name, for the initial purpose of building a fan site for the actress, Ashley Madison. Later on, the website was changed to become a review site of ”www.ashleymadison.com”. The Respondent claimed he had tried to direct Internet traffic to the Complainant’s website but that after a while, “they refused to accept my traffic anymore. After that, I just start to send traffic to other dating website, and forget to change the website style and content (sic.)”. He claimed not to have minded changing the website style and “take their stuff out of the site”, but did not believe he had done anything wrong to merit losing the disputed domain name. He further added that “they can not seize my domain, just because I have done well about traffic. Its not Fair” (sic).

6. Discussion and Findings

The Complainant is required under the Policy to prove:

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

(ii) that the 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

The Complainant has proven that it has registered as well as unregistered rights in the trade mark ASHLEY MADISON. The trade mark in this case has been incorporated in its entirety in the disputed domain name. It is indeed well-established by previous UDRP panel decisions that the absence of spaces or hyphens in a domain name as well as the specific top level domain name is to be disregarded when evaluating the identity or confusing similarity between a complainant’s trade mark and the domain name in dispute.

The Panel therefore finds that the disputed domain name is identical to the Complainant’s trade mark ASHLEY MADISON, and consequently, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy indicates how a respondent can demonstrate his rights or legitimate interests to the disputed domain name, namely by establishing any of the following circumstances (which list is not exhaustive):

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Although a complainant is obliged under the Policy to establish all three elements of paragraph 4(a), panels have long recognized the inherent difficulties of proving a negative, namely the absence of rights or legitimate interests on the respondent’s part, as this requires information that is primarily in the hands of the respondent. Hence, the general consensus view is that complainants are required, in relation to paragraph 4(a)(ii) of the Policy, only to establish a prima facie case in support. Thereafter, the burden shifts to the respondent to proffer evidence to show he has rights or legitimate interests to the domain name in dispute.

The Panel is of the view that the Complainant has satisfied its burden of establishing a prima facie case. The Respondent did not, by his email response of February 23, 2011, show that the disputed domain name had been used in connection with a bona fide offering of goods of services. His claim that his initial intention of registering the disputed domain name for the purpose of building a fan site for the actress, Ashley Madison, is unsupported. On the other hand, what has been submitted in evidence by the Complainant is an extract of how the Respondent’s website appears, that is, as a copy of the Complainant’s. The Respondent also did not submit any evidence which would show that he has been commonly known by the disputed domain name, nor to prove that his use of the disputed domain name has been fair use or for a legitimate noncommercial use, without intent for commercial gain to misleadingly divert consumers or to tarnish the said trade mark. In fact, the Respondent’s email is reflective of and, in the Panel’s view, amounts to an admission that:

(a) he knew of the Complainant, its trade mark and of its website at “www.ashleymadison.com”;

(b) he deliberately used the disputed domain name to direct traffic to other dating websites;

(d) what he has done has been for a commercial purpose.

The Panel agrees with the Complainant’s submission that the use of the disputed domain name to ride on the fame of the Complainant and/or of its trade mark, ASHLEY MADISON, does not constitute a bona fide offering of services. In the light of these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied the second requirement under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Complainant has asserted that the circumstances of this case fall within the examples given in paragraph 4(b)(iii) and (iv) of the Policy, i.e. that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor (in this case, the Complainant’s) and/or that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.

With the Respondent’s lack of rights or legitimate interests in the disputed domain name, the Panel also finds that the Respondent has exhibited bad faith registration and use. As noted above, the Respondent clearly knew of the Complainant, its trade mark and its other domain name, <ashleymadison.com>. The Panel agrees with the Complainant’s submission, based on previous UDRP panel decisions, that the incorporation of a well-known trade mark into a domain name by a respondent who has no plausible explanation for doing so may, in and of itself, be an indication of bad faith. It can be surmised that the Respondent’s intention when registering the disputed domain name was to target the Complainant’s trade mark and to profit from its reputation in the online community and to obtain a higher level of potential Internet traffic through its association with the Complainant’s trade mark.

Following from the above and the way in which the Respondent’s website has been used (i.e. with copied text and images from the Complainant’s website, using it for click-through advertisements, and by the Respondent’s own admission, for the purpose of directing traffic to other dating websites), the Panel agrees that the result is, without doubt, disruptive to the Complainant’s business. The circumstances as reflected in the Complaint and Response are also strongly indicative of the fact that the Respondent was purposeful in his aim of attracting Internet users to his website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of his website.

In the premises, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore satisfied the third requirement under paragraph 4(a) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ashleymadison.cc>, be transferred to the Complainant.

Francine Tan
Sole Panelist
Dated: March 21, 2011