WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Ruby Life Inc. v. Domain Admin / Hulmiho Ukolen, Pavol Icik

Case No. D2019-1641

1. The Parties

The Complainant is Ruby Life Inc. of Ontario, Canada, represented by Safenames Ltd., United Kingdom.

The Respondents are Domain Admin of Czech Republic / Hulmiho Ukolen of Finland, and Pavol Icik of Slovakia.

2. The Domain Name and Registrar

The Disputed Domain Names <ahsleymadison.com> and <ashlymaddison.com> are registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2019. On July 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On July 16, 2019, the Registrar transmitted by email to the Center its verification response, disclosing the 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 July 16, 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 July 17, 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 Respondents of the Complaint, and the proceedings commenced on July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 8, 2019.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on August 14, 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, Ruby Life Inc., a Canadian operator of online dating websites based in Toronto, Canada, was founded in 2002. The Complainant specializes in dating services and owns online dating brands, including Ashley Madison, Cougar Life, and Established Men.

The Complainant owns various trademark registrations around the word for the term ASHLEY MADISON, among others:

- ASHLEY MADISON, Canadian Trademark Registration No. TMA592582, registered on
October 20, 2003;

- ASHLEY MADISON, United States Trademark Registration No. 2812950, registered on
February 10, 2004; and

- ASHLEY MADISON, European Union Trademark Registration No. 007047764, registered on
October 13, 2009.

The ASHLEY MADISON trademark is used for the dating website “www.ashleymadison.com”, which was registered on November 13, 2001.

The Disputed Domain Name <ashlymaddison.com> was registered on November 30, 2005, while the Disputed Domain Name <ahsleymadison.com> was registered on December 1, 2005.

Currently, both of the Disputed Domain Names redirect to the official website of the Complainant. However, the Complainant presented evidence that the Disputed Domain Names were being used to redirect online users to an ever-changing series of third-party websites.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows:

The Complainant has argued that the Complaint is filed against multiple respondents due to a consolidation scenario, referring to both registrants of the Disputed Domain Names together as “The Respondent”.

Identical or confusingly similar

The Complainant submits that the Disputed Domain Names are confusingly similar to the Complainant’s ASHLEY MADISON trademark. Both of the Disputed Domain Names are misspellings of the Complainant’s trademark.

With respect to the Disputed Domain Name <ashlymaddison.com>, the letter “e” is removed, and a letter “d” is added. Regarding the Disputed Domain Name <ahsleymadison.com>, the letters “s” and “h” are swapped. These misspellings do not prevent the confusingly similarity under the UDRP.

Finally, with respect to the generic TLD “.com”, the Complainant requests that the Panel disregards this under the first element.

Rights or legitimate interests

The Complainant states that the Respondent has no rights or legitimate interests with respect to the Disputed Domain Names.

The Complainant alleges that the Respondent does not have any trademark rights to the term “Ashley Madison”, nor has the Respondent received any license from the Complainant. The Complainant further states that the Respondent has deliberately used misspellings of the ASHLEY MADISON trademark to confuse Internet users in order to earn revenue.

The Complainant further submits that the Respondent is not commonly known by the terms “Ashley Madison”, “Ashlymaddison”, or “Ahsleymadison”, nor is the Respondent offering goods or services by those terms.

Finally, the Complainant submits that the Respondent is not making a legitimate non-commercial use of the Disputed Domain Names. The Respondent is generating monetary revenue through automatically redirecting online users to third-party websites. Such use is not a legitimate non-commercial or fair use of the Disputed Domain Names, as it uses the goodwill of the ASHLEY MADISON trademark to generate revenue and direct online users to potentially fraudulent websites.

Registration and use in bad faith

The Complainant submits that the Respondent both registered and is using the Disputed Domain Names in bad faith, for the following motives:

The Complainant’s earliest trademark registration predates the registration date of the Disputed Domain Names by two (2) years.

Moreover, the Complainant sent a Cease and Desist letter to the Respondent on May 17, 2019, and the Respondent replied to such letter stating “[USD]625” with a link where the Disputed Domain Name is up for sale.

Finally, the Complainant states that the Respondent has engaged in a pattern of bad faith conduct since the Respondent was involved in seventy seven (77) previous UDRP proceedings.

B. Respondent

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

6. Discussions and Findings

6.1. Preliminary Matter: Consolidation of Respondents

Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following with respect to complaints consolidated against multiple respondents:“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” Paragraph10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

The Complainant submitted a request for the consolidation of proceedings against multiple respondents.

In the present case, the evidence shows that each of the Disputed Domain Names adopted a common structure: each of them consists of the Complainant’s trademark ASHLEY MADISON but with different typos, and are phonetically and visually similar to the Complainant’s trademark. The registration dates of both Disputed Domain Names are very close in time. In addition, the Disputed Domain Names share the same registrar, name servers and privacy servers. Moreover, both of the Disputed Domain Names redirect to the official website of the Complainant.

Accordingly, the Panel finds that the Disputed Domain Names are subject to common control for the purposes of the Policy. The Respondents have not denied these assertions, thus the Panel permits the consolidation of the proceedings and will refer hereinafter to both registrants of the Disputed Domain Names as the “Respondent”.

6.2. Substantive Matters

Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:

(i) the Disputed Domain Names are 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 Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Disputed Domain Names <ahsleymadison.com> and <ashlymaddison.com> are confusingly similar to the Complainant’s trademark ASHLEY MADISON. The Disputed Domain Names incorporate single-letter changes to the Complainant’s trademark with the effect that the Disputed Domain Names sound and look like the Complainant’s ASHLEY MADISON trademark.

Thus, the Panel finds that this is a typical typosquatting case, since the Disputed Domain Names reproduce the Complainant’s trademark in its entirety but with a minor alteration of the letters, which does not change the overall impression that the Disputed Domain Names are the same as the Complainant’s trademark.

WIPO Overview 3.0 states in section 1.9:

“A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
[…]
Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers.”

Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances, any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:

(i) before any notice to the Respondent of the dispute, the Respondent’s 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) the Respondent (as an individual, business, or other organization) has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.

There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademark in the Disputed Domain Names. Furthermore, the Respondent is not known by the Disputed Domain Names.

The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant’s contentions.

As such, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

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

The fact that the Disputed Domain Names are nearly identical to the Complainant’s trademark, having a similar visual and phonetic appearance, establishes that the Respondent was well aware of the Complainant’s trademark when registering the Disputed Domain Names.

Moreover, the Disputed Domain Names redirects to the official website of the Complainant. This particular conduct confirms that the Respondent knew the Complainant and its trademark rights.

Furthermore, it is important to highlight that the present case is a “typosquatting” case, which is strong evidence of the Respondent’s bad faith.

In the case at hand, in view of the Respondent’s registration of two (2) domain names confusingly similar to the Complainant’s well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Names, and its failure to respond to the Complaint, the Panel finds that the Respondent’s redirection of the Disputed Domain Names to the Complainant’s website also amounts to bad faith.

Moreover, the Respondent has been involved in several previous domain name disputes, and has been ordered to transfer domain names to its legitimate owners.

Finally, the Complainant submitted evidence of the Respondent’s intentions to sell the Disputed Domain Names for the amount of “[USD]625”. This is also evidence of bad faith according to paragraph 4(b)(i) of the Policy.

For that reason, the Panel concludes that Respondent registered the Disputed Domain Names in bad faith since it is clear that the Respondent deliberately registered the Disputed Domain Names as a misspelling of the Complainant’s trade/service mark and with a view to deceiving Internet users for commercial gain.

Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Names in bad faith.

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 Names, <ahsleymadison.com> and <ashlymaddison.com>, be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: August 26, 2019