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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ruby Life Inc. v. Wu Yu

Case No. DPW2019-0006

1. The Parties

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

The Respondent is Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <ashleymadison.pw> is registered with Gandi SAS (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2019. On October 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 18, 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 in English on October 24, 2019.

On October 18, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on October 21, 2019. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese, and the proceedings commenced on October 30, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2019.

The Center appointed Francine Tan as the sole panelist in this matter on November 27, 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 operator of online dating websites. It was founded in 2002 and specializes in innovative dating services. Trade marks it owns in relation to such services include ASHLEY MADISON, COUGAR LIFE and ESTABLISHED MEN. The Complainant’s website at “www.ashleymadison.com” attracts around 9.42 million visits per month. The website caters for various type of discreet adult relationships, with a membership count in the millions across 50 countries. The domain name <ashleymadison.com> was registered on November 13, 2001 and is claimed by the Complainant to be one of the most famous dating websites on the Internet.

The Complainant’s ASHLEY MADISON trade mark has been used for 17 years and is a registered trade mark in Canada, the United States of America, Australia and the European Union. The earliest registration (Canadian Trademark Registration No. TMA592582) dates from October 20, 2003.

The disputed domain name was registered on January 26, 2019. It resolves to a parking page where Pay-Per-Click advertising links appear. Some of the links redirect to competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s ASHLEY MADISON trade mark. The trade mark is incorporated entirely into the disputed domain name without alteration.

The “.pw” country-code Top-Level Domain is a standard registration requirement and is not relevant to whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trademark rights in the term “Ashley Madison”. Neither has it received any licence from the Complainant to use domain names featuring the ASHLEY MADISON trade mark. There is no plausible reason for the registration of the disputed domain name other than for the motive of gaining revenue through advertising links hosted on the Respondent’s website. There is no bona fide offering of goods or services by the Respondent. The ASHLEY MADISON is not used in commerce by anyone other than the Complainant. The Respondent is not known by the name “Ashley Madison”.

The disputed domain name was registered and is being used in bad faith. The Complainant’s trademark registrations predate the registration date of the disputed domain name by many years. The Complainant has a strong reputation around the world and significant goodwill. The Respondent chose to ignore a cease and desist letter sent by the Complainant’s representatives on July 9, 2019. The Respondent has also displayed a pattern of bad faith behavior in its portfolio of domain name registrations which include third-party trademark names, e.g. <minecraft-mods.pw> and <qualcomm.pw>. The use of the disputed domain name in relation to Pay-Per-Click links constitute a clear attempt to generate a commercial gain. Further, the disputed domain name is listed for sale on the domain aftermarket site, Sedo.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Preliminary Issue: Language of the Proceeding

The language of the Registration Agreement is Chinese. The Complainant, however, requested that English apply as the language of the proceeding. The Complainant stated that it is not familiar with the Chinese language whereas there is evidence that the Respondent has an understanding of English, considering its portfolio of domain names, many of which contain English words. Examples include <automation.ml>, <blacknote.tk>, <freecoupon.com.tw>, and <internetspeed.kr>. Reference was also made by the Complainant to paragraphs 10(b) and (c) of the Rules as being relevant policy considerations, which lend support to its request.

The Respondent did not respond to the issue of the language of the proceeding.

Paragraph 10(c) of the Rules states that “[t]he Panel shall ensure that the administrative proceeding takes place with due expedition”.

Paragraph 11(a) of the Rules provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

In this instance, the Panel is satisfied that it would be appropriate for English to be the applicable language for the proceeding. The Respondent appears to be familiar with the English language: the disputed domain name comprises a combination of an English first name and surname, and the Respondent’s portfolio of domain name registrations include those which are made up of English words. The Complainant’s assertions have not been disputed by the Respondent. The Panel believes that a delay in the proceeding which would be caused by requiring the Complainant to have Chinese translations of the Complaint and evidence prepared is not warranted in this case.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The Complainant has established it has rights in the ASHLEY MADISON trade mark. The trade mark is reproduced in its entirety in the disputed domain name.

The disputed domain name is therefore identical to the ASHLEY MADISON trade mark in which the Complainant has rights.

The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s ASHLEY MADISON trademark registrations and its use of the ASHLEY MADISON trade mark predate the registration of the disputed domain name by many years. No licence or authorization has been extended by the Complainant to the Respondent for the use of “Ashley Madison” as a trade mark or in a domain name. There is no evidence that the Respondent is commonly known by the name “Ashley Madison” or that there have been demonstrable preparations by the Respondent to use the disputed domain name in connection with a bona fide offering of goods or services. The use of the disputed domain name in relation to Pay-Per-Click advertising does not constitute a bona fide offering of goods or services.

The Respondent failed to respond or rebut the Complainant’s assertions.

The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

The adoption by the Respondent of the Complainant’s trade mark ASHLEY MADISON, which is widely known, gives rise to a strong presumption that the Respondent had registered the disputed domain name for the specific intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Further or in the alternative, the listing of the disputed domain name in the domain aftermarket site, Sedo, is indicative that the Respondent registered or “acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name”. In view of the significant membership numbers the Complainant has in relation to its ASHLEY MADISON business and the extensive reach across the globe, it defies belief that the Respondent was unaware of the reputation of the Complainant and its ASHLEY MADISON trade mark.

The Respondent did not offer any explanation for how it came to select “Ashley Madison” for the disputed domain name. ASHLEY MADISON is a trade mark that is associated exclusively with the Complainant. The inference of opportunistic bad faith on the Respondent’s part has not been rebutted by the Respondent.

The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.

7. 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 name <ashleymadison.pw> be transferred to the Complainant.

Francine Tan
Sole Panelist
Date: December 2, 2019

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