The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Brent Saunders, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2020. On January 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2020. The Center appointed Nicholas Weston as the sole panelist in this matter on February 25, 2020. 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 company established in 2002 that operates a business providing online dating platforms. The Company’s affiliate scheme operates in more than 50 countries, allowing referrers to earn money by referring new subscribers to the business. The Complainant owns registrations for the mark ASHLEY MADISON in several countries. Canadian Trademark Registration No. TMA592582, for example, was registered on October 20, 2003. It also owns the domain name The Disputed Domain Name The Complainant cites its United States trademark registration No. 2812950 registered in 2004 and numerous other registrations around the world, for the mark ASHLEY MADISON as prima facie evidence of ownership. The Complainant submits that the mark ASHLEY MADISON is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a landing page with “a website which featured the Complainant’s distinctive logo and slogan in an attempt to pass itself off as the Complainant and to give the impression of association with the Complainant”, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use and fame of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark 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 produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ASHLEY MADISON in numerous countries including where the Respondent appears to be located, the United States, pursuant to trademark No. 2812950 registered in 2004. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the ASHLEY MADISON trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ASHLEY MADISON; (b) followed by a hyphen; (c) followed by the word “join” and followed by the gTLD “.com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “ashleymadison-join”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word, in this case, the word “join”. (See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033); This Panel accepts the Complainant’s contention that the addition of a hyphen and the word “join” after the Complainant’s registered trademark does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark (see NutriSystem IPHC, Inc. v. Craig Rosenfeld, WIPO Case No. D2008-0336 “The domain name consists of Complainant’s registered mark preceded by the common term “join” and followed by the gTLD suffix “.com”. It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that a domain name is confusingly similar to a mark.”. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends, prima facie, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to a web page that features the trademark ASHLEY MADISON and a strap line used by the Complainant: “life is short”, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark. On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name. In the absence of a response, this Panel finds that the Respondent is making an illegitimate commercial use of the Disputed Domain Name. By misleadingly diverting Internet users, it can be inferred that the Respondent is opportunistically using the Complainant’s well-known mark in order to attract Internet users to its webpage and has been using the Disputed Domain Name to divert Internet traffic. The Panel finds for the Complainant on the second element of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark ASHLEY MADISON has achieved such a degree of notoriety for providing online dating platforms that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Ruby Life Inc. v. Phoebe Wu, WIPO Case No. D2019-2486 (“Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world”); Ruby Life Inc. v. Alexander Varkov, WIPO Case No. D2017-1895 (“Considering the famous nature of the mark and the notoriety or the services offered under the ASHLEY MADISON brand”)). This Panel notes, as the basis of a further finding of bad faith on the issue of registration, that the Respondent’s website prior to the cease and desist notification, clearly demonstrated actual knowledge of the Complainant and its trademark, as it made multiple references to the Complainant, including use of its strap line “life is short”. On the issue of use, the evidence is that the Disputed Domain Name resolves to a webpage unconnected with any bona fide supply of goods or services by the Respondent. The Panel finds that the evidence does support a finding that the Respondent has registered the Disputed Domain Name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark, by: (i) seeking to cause confusion for the Respondent’s commercial benefit, including the display of the Complainant’s trademark, strap line “life is short”, and a link; (ii) the lack of the Respondent’s own rights to or legitimate interests in the Disputed Domain Name; (iii) the lack of any form of disclaimer; and (iv) the absence of any conceivable good faith use (see WIPO Overview 3.0, section 3.1.4). The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc.,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814). Further, a gap of years between registration of a Complainant’s trademark and a Respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name 16 years after the Complainant established registered trademark rights in the ASHLEY MADISON mark. This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested submission, with evidence, that the Respondent not only failed to respond to a letter demanding that it cease and desist in its use of the Disputed Domain Name, it changed the landing page to an inactive webpage shortly after the letter was sent by the Complainant’s representatives (see: Paddy Power Plc v. Petrin Milenco Daniel,WIPO Case No. DRO2017-0009 (“Respondent’s modification of the website resolving to the disputed domain name after receiving a cease and desist letter tends to show Respondent’s further bad faith registration and use of the domain name”)). In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark ASHLEY MADISON and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users for commercial gain to a web page designed to create a likelihood of confusion as to the source or sponsorship of the Respondent’s site. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 Nicholas Weston
Sole Panelist
Date: March 5, 2020
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