WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avid Dating Life Inc. v. Calico Draconia

Case No. D2015-1324

1. The Parties

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

The Respondent is Calico Draconia of Santa Rosa, California, United States of America, self-represented.

2. The Domain Name and Registrar

The disputed domain name <washeonashleymadison.com> (the "Disputed Domain Name") is registered with Domain.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 29, 2015, the Registrar 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 July 31, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2015. The Respondent filed an email communication with the Center on July 31, 2015. The Response was filed with the Center on August 20, 2015.

The Center appointed John Swinson as the sole panelist in this matter on September 2, 2015. 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.

On September 12, 2015, the Respondent sent an email communication to the Centre containing a supplemental filing. The Centre forwarded the supplemental filing to the Panel on September 14, 2015.

4. Factual Background

The Complainant is Avid Dating Life Inc. of Canada. The Complainant's parent company, Avid Life Media Inc., is a social entertainment media company which operates five major online dating brands. The Complainant's most recognized brand is the Ashley Madison Agency Limited, which launched on February 14, 2002.

The Complainant owns registered trade marks for ASHLEY MADISON in Canada, the United States, Europe, the United Kingdom and Australia, the earliest of which was registered on July 8, 2002 (the "Trade Mark"). The Complainant has provided evidence of those rights.

The Complainant also owns the domain name <ashleymadison.com>, which incorporates the Trade Mark. The Complainant's online dating agency is operated at the website associated with this domain name.

The Respondent is Calico Draconia, an individual of the United States. The Respondent states that she is a computer programmer. On the website at the Disputed Domain Name, the Respondent at one time stated that she is not Mr. McAfee, a well-known software developer. This is apparently in response to media reports or blog post stating that Calico Draconia is Mr. McAfee.

The Respondent registered the Disputed Domain Name on July 27, 2015. The website at the Disputed Domain Name is currently a holding page showing a collage of photographs and a notice which refers to the recent data leak relating to the Complainant, and states that the Respondent is not responsible for that leak. Previously, at the time the Complaint was filed, the website at the Disputed Domain Name was a parking page featuring pay-per-click ("PPC") links.

5. Parties' Contentions

A. Complainant

The Complainant's contentions are as follows:

Identical or Confusingly Similar

The Complainant submits that the Trade Mark features two female names in connection with a particular class of goods and services, and as such is not generic.

The Complainant submits that the Disputed Domain Name is confusingly similar to the Trade Mark. The top level domain ".com" is not sufficient to distinguish the Disputed Domain Name from the Trade Mark. The Disputed Domain Name otherwise combines the Trade Mark with the generic terms "was", "he" and "on". As found by previous panels, these generic terms do not distinguish the Disputed Domain Name from the Trade Mark. The dominant part of the Disputed Domain Name is the Trade Mark.

Rights or Legitimate Interests

The Complainant submits that it has not authorized, licensed or otherwise permitted the Respondent to use the Trade Mark in the Disputed Domain Name or for any other purpose, and that the Trade Mark is not generic. The Complainant submits that, based on its online searches, the Respondent is not commonly known as WASHEONASHLEYMADISON or as ASHLEY MADISON for the purpose of paragraph 4(c) of the Policy, and has no trade mark rights of its own which contain those terms.

The Respondent registered the Disputed Domain Name on July 27, 2015. The Complainant submits that the website at the Disputed Domain Name features PPC links which are related to the Complainant. The PPC link webpage also includes a link specifically to the Complainant. The Complainant submits that the Respondent is generating revenue from those PPC links, and as such, the Disputed Domain Name is being used for commercial gain. Even if the Respondent claims not to be generating any revenue from the Disputed Domain Name, this in itself would not create a legitimate interest in the Disputed Domain Name, as the Respondent is still misleading Internet users. The use of links to services related and unrelated to the Complainant shows a clear intent to divert the Complainant's consumers and to trade off the goodwill of the Complainant, and such use does not create a legitimate interest. As such, the Respondent has not used or made demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Complainant submits that any argument by the Respondent that the links on the website at the Disputed Domain Name are placed automatically is irrelevant as the Respondent is responsible for the content on the website at the Disputed Domain Name.

Registration and Use in Bad Faith

The Complainant submits that the Trade Mark and related brand is well-known across the world. Prior to the registration of the Disputed Domain Name, there had been global media coverage of the hacking of the Complainant's dating website and related data leak, and this news was well-known at the time the Respondent registered the Disputed Domain Name. The Complainant submits that it is clear from the timing of the registration that the Respondent's intention was to profit from the data leak. The wording of the Disputed Domain Name, being "was he on ASHLEY MADISON", proves that the Respondent had knowledge of the Trade Mark and the hacking, which indicates the Respondent's malign intent to aid in the tarnishing of the Trade Mark.

The format of the Disputed Domain Name and the use of the website at the Disputed Domain Name as a PPC link page confirms that the Respondent knowingly used the Trade Mark in order to attract Internet traffic to the Disputed Domain Name for commercial gain (paragraph 4(b)(iv) of the Policy). The links which appear on the Disputed Domain Name are intended to disrupt the Complainant's business by diverting consumers to third party websites for commercial gain, as the Complainant profits from the PPC links. It is for the Respondent to ensure that the links on the website at the Disputed Domain Name do not infringe the Complainant's Trade Mark.

The Complainant submits that the use of a domain name which is obviously connected with a trade mark holder suggests opportunistic bad faith. Even if it is clear to Internet users on viewing the website at the Disputed Domain Name that the Disputed Domain Name is not associated with the Complainant, the Respondent has successfully attracted them, thereby detracting potential customers from the Complainant's website and potentially causing reputational damage to the Complainant and the Trade Mark.

Finally, the Complainant submits that the Respondent has registered the Disputed Domain Name using a fake name, in breach of its registration agreement. The Complainant refers to Internet searches on the Respondent's name in support of this assertion.

B. Respondent

The Respondent's contentions are as follows:

Identical or Confusingly Similar

The Respondent does not dispute that the Complainant has rights in the Trade Mark, but does not believe that consumers would be confused that the Respondent is associated with the Complainant.

The Respondent submits that although the Disputed Domain Name contains the Trade Mark, the use of three common words as a prefix does not make the Disputed Domain Name similar to the Trade Mark.

Rights or Legitimate Interests

The Respondent submits that she purchased the Disputed Domain Name so that it would not be available to "scammers". The Respondent's intention was to use the website at the Disputed Domain Name as a forum for customers of the Complainant who have been affected by the data leak. It was not intended to be a commercial venture.

Registration and Use in Bad Faith

The Respondent submits that she purchased the Disputed Domain Name in good faith. Her intention was to prevent others from registering and using it for improper purposes.

The Respondent submits that there is no confusion that the website at the Disputed Domain Name is related to or owned by the Complainant. That the Disputed Domain Name contains the Trade Mark is not sufficient to prove that customers will be confused.

The PPC link page referred to by the Complainant is a search site which delivers similar sites to what the Internet user may be looking for. The Respondent submits that she has not received any compensation from the links on the website at the Disputed Domain Name and she did not give the Registrar permission to park the page with PPC links. The PPC links are to the Complainant and to hair washing sites (as the term "wash" is also contained in the Disputed Domain Name).

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.

The onus of proving these elements is on the Complainant.

A. Procedural Issues

Supplemental filing

The Policy envisages prompt and efficient resolution of domain name disputes. Accordingly, the Rules and the Supplemental Rules only contemplate the filing of a complaint and a response, with strict time and word limits. There is no explicit provision for additional filings, except for further statements or documents provided in response to a request from a panel. Paragraph 10 of the Rules provides that the panel is to conduct proceedings "with due expedition" and gives the Panel the power to "determine the admissibility, relevance, materiality and weight of the evidence". Generally, panels will only accept supplemental filings in "exceptional" circumstances.

The Respondent has provided a supplemental filing in these proceedings. The Panel received this filing on September 14, 2015, which is only two days before the Panel was due to provide his decision to the Provider. The Panel considers that this filing largely consists of irrelevant material, and does not add any further information that was not available to the Respondent at the time of filing the initial Response, or that is not currently available to the Panel. The Respondent has effectively sought to have a second attempt at filing the Response. Accordingly, the Panel declines to accept the Respondent's supplemental filing as part of the record in this proceeding.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.

The Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with three generic words, being "was", "he" and "on". As a phrase, the Disputed Domain Name reads "was he on Ashley Madison". Especially given the Complainant's recent media attention concerning leaked customer data, the Disputed Domain Name can be readily associated with the Complainant. Further, the Trade Mark is the distinctive aspect of the Disputed Domain Name, and it is more likely than not that Internet users would interpret the generic prefix as subordinate to the Trade Mark (see, e.g., Statoil ASA v. N/A Alex, WIPO Case No. D2013-0713).

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must establish that the Respondent has no rights to or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests. It is then for the Respondent to rebut this prima facie case.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- The Complainant has not authorized, licensed or otherwise given the Respondent permission to use the Trade Mark in the Disputed Domain Name.

- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. At the time the Complaint was filed, the website at the Disputed Domain Name was a Registrar parking page containing PPC links. The first link on the page was to the Complainant's website. Further links were to various unrelated services. In the circumstances, such use is not legitimate.

- Based on searches conducted by the Complainant, the Respondent is not commonly known by the Disputed Domain Name or by the Trade Mark, and does not hold any related trade mark rights of her own.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Disputed Domain Name initially hosted a PPC link page which presumably generated revenue, even if such revenue was not received by the Respondent. Currently, the website at the Disputed Domain Name contains a notice written by the Respondent regarding the Complainant's data leak, but the Respondent created the current website following notification of the Complaint.

Criticism and commentary websites can, in some circumstances, give rise to rights and legitimate interests. The Respondent submits that she registered the Disputed Domain Name to prevent others from using it for nefarious purposes, and that she intended to use the website at the Disputed Domain Name as a forum for those affected by the well-published data leak. She has provided no evidence to support this intention other than her sworn Response. At present, the website at the Disputed Domain Name contains no such forum.

The Panel finds that the Respondent has not rebutted the prima facie case made out by the Complainant with evidence of use or demonstrable preparation to use the Disputed Domain Name in connection with a bona fide offering of goods or services or in connection with a noncommercial or fair use.

The Complainant succeeds in establishing the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent both registered and subsequently used the Disputed Domain Name in bad faith.

There is no question that the Respondent was aware of the Complainant at the time she registered the Disputed Domain Name, and that the media attention given to the hacking of the Complainant's customer database and subsequent data leak was the impetus for the Respondent's registration of the Disputed Domain Name.

The Complainant submits that the reference to the recent data leak is evidence of the Respondent's intention to tarnish the Trade Mark. However, the mere possibility of reputational damage, based on the wording of the Disputed Domain Name itself (which implies that an Internet user could obtain information released during the data leak) is not necessarily sufficient to show that the Disputed Domain Name is being used in bad faith. In Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647, the Panel said:

"[T]arnishment in the context of the UDRP refers to unseemly conduct such as linking unrelated pornographic, violent or drug-related images or information to an otherwise wholesome mark. See Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (citing Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (WIPO January 23, 2001)). Fair‑use criticism, even if libelous, does not constitute tarnishment and is not prohibited by the Policy; rather, claims sounding in commercial libel must be brought in other legal venues."

The notice currently shown on the holding website is not disparaging of the Complainant's services. There is no evidence that the Respondent intended to profit from the data leak (e.g. asking Internet users to pay for access to the leaked data). The Panel considers that the registration of a domain name which has a negative connotation does not, of itself, in all cases tarnish the Trade Mark and show bad faith.

At the time the Complaint was submitted, the website at the Disputed Domain Name was a Registrar-generated parking page featuring PPC links. The Respondent submits that she did not give the Registrar permission to use PPC links on the parking page, and that she did not profit from any advertising. The Respondent removed the parking page at some time after receiving notice of the Complaint.

However, as the Complainant submitted, even if this is the case, previous panels have found that a respondent will generally be deemed responsible for the content appearing at the relevant domain name, including where a registrar has placed a parking page with automatically generated content, unless the respondent can show some good faith attempt at preventing advertising which relates to third party trade marks (see paragraph 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") and e.g., Owens Corning v. NA, WIPO Case No. D2007-1143; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396).

The Respondent has shown no such good faith attempt in this case. Many of the PPC links were to services containing the word "wash". However, the Complainant has provided evidence that the first link on the page resolved to a further parking page containing PPC links to services in the Complainant's industry.

Thus, it is reasonable for the Panel to conclude that the Respondent intentionally attempted to attract, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Trade Mark as to the source of the website. This is an indicator of bad faith under paragraph 4(b)(iv) of the Policy.

The Panel notes that the examples of bad faith listed in paragraph 4(b) of the Policy are provided without limitation; that is, they are not the only possible indicators of bad faith registration or use. Based on the surrounding circumstances, it is apparent that the Respondent registered the Disputed Domain Name for its trade mark value. The Panel found, in relation to the second element, that the Respondent is not making a legitimate or fair use of the Disputed Domain Name. The Complainant and the Trade Mark featured heavily in the media immediately preceding the registration. The Respondent asserted that one of her purposes in registering the Disputed Domain Name was to prevent others from registering it. The Panel considers that the Respondent's registration of the Disputed Domain Name was opportunistic.

For these reasons, the Panel considers that the Respondent is using the Disputed Domain Name in an attempt to disrupt the business of the Complainant.

In the circumstances, the Panel considers it more likely than not that the Respondent registered and is using the Disputed Domain Name in bad faith.

The Respondent stated in the Response that she intended to use the website at the Disputed Domain Name as a forum for those affected by the data leak. The Panel has no evidence before it on which to reach that conclusion. The Respondent only belatedly removed the PPC links, and created the current website (which does not yet host a forum), following notification of the Complaint. The Respondent has otherwise shown no clear evidence of her intention to use the Disputed Domain Name for a bona fide or other fair use or free speech purpose. If she had done so, the Panel's decision in this case may well have been different.

The Complainant succeeds in establishing the third element of the Policy.

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 <washeonashleymadison.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: September 21, 2015