The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Domain Admin, Domain Privacy Guard Sociedad Anonima Ltd, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 11, 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 14, 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 14, 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 Respondent of the Complaint, and the proceedings commenced on November 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2019. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on December 3, 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 undisputed facts of the case are that the Complainant was founded in 2002 and operates online dating websites, under different brands, being one of them ASHLEY MADISON, based on the website “www.ashleymadison.com”. The Complainant owns trademark registrations for ASHLEY MADISON in Australia (Reg. No. 1250305 of July 8, 2008), Canada (Reg No. TMA 592582 of October 20, 2003), European Union (EUTM Reg. No. 007047764 of October 13, 2009) and the United States (Reg. No. 2812950 of February 10, 2004) (Annex 9 to the Complaint). The disputed domain name The Complainant asserts that the disputed domain name incorporates its well-known ASHLEY MADISON trademark which remains the prominent part of the domain name, not being the addition of dictionary terms capable to avoid a confusing similarity therewith. Regarding the absence of Respondent’s rights or legitimate interests, the Complainant argues that: i. the Respondent does not have any trademark rights or unregistered rights to the term ASHLEY MADISON; ii. the Complainant has not granted any license to use domain names featuring such the ASHLEY MADISON trademark; and iii. there is no plausible reason for the registration and use of the disputed domain name other than to use it to earn revenues through advertising links (pay-per-click links) hosted on the website available from the disputed domain name, some of which redirect Internet users to competitors of the Complainant (Annex 13 to the Complaint), what does not characterize a bona fide offering of services. Under the Complainant’s view the Respondent’s bad faith in registering and using the disputed domain name is also evident given that the ASHLEY MADISON trademark predates the creation date of the disputed domain name by 12 years, having such trademark accrued substantial goodwill and became world-renowned in the sector of online dating. In addition to that the Respondent has not replied to a cease and desist letter sent by the Complainant’s representatives on July 9, 2019 (Annex 15 to the Complaint). Furthermore, considering that the Complainant’s trademark is not a dictionary term or common phrase of which the Respondent could derive value from its descriptive meaning, it becomes clear that the Respondent sought to exploit the value attached to the ASHLEY MADISON trademark and is offering it for sale for more than the Respondent’s out-of-pocket costs in registering and maintain the disputed domain name (Annex 16 to the Complaint). Lastly, the use of the disputed domain name in connection with PPC advertisements targeting the Complainant characterizes bad faith use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(i) of the Policy. A. Identical or Confusingly Similar The Complainant has established its rights in the ASHLEY MADISON trademark according to the registrations owned by it in Australia (Reg. No. 1250305 of July 08, 2008), Canada (Reg No. TMA 592582 of October 20, 2003), European Union (EUTM Reg. No. 007047764 of October 13, 2009) and the United States of America (Reg. No. 2812950 of February 10, 2004) (Annex 6 to the Complaint]. In this Panel’s view, the addition of the dictionary terms “leak” and “data” in the disputed domain name does not avoid a finding of confusing similarity given that the Complainant’s trademark remains prominently recognizable in the disputed domain name. For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice 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 The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element. In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which has not been commonly known by the disputed domain name and has neither been licensed to use the Complainant’s trademark to register the disputed domain name. Also according to the evidence submitted by the Complainant, the use made of the disputed domain name in connection with a parked page displaying PPC advertisements, including links to Complainant`s competitors cannot be considered a bona fide use of the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Complainant has demonstrated that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(i) and (iv) that bad faith can be found when present circumstances indicating that the disputed domain name was acquired 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 as well as in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website 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 the website or location or of a product or service on the website or location. In this case, both circumstances are present given that the Respondent has offered the disputed domain name (Annex 16 to the Complaint) for figures in excess of the out-of-pocket expenses incurred in the registration and maintenance of the disputed domain name, as well as the intent to earn from the undue association with the Complainant’s well-known trademark in view of the PPC advertisements available at the webpage resolving from the disputed domain name. Lastly, the lack of a reply to the cease-and-desist letter sent by the Complainant’s representatives to Respondent further corroborate with a finding of bad faith conduct by the Respondent. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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, Wilson Pinheiro Jabur
(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.
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired 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 mark at issue.
Sole Panelist
Date: December 5, 2019
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