The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Nanci Nette, 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 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 January 20, 2020 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 January 21, 2020. 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 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 Andrew Brown Q.C. as the sole panelist in this matter on February 18, 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 states that since 2002, it has operated online dating websites under the brands ASHLEY MADISON, COUGAR LIFE and ESTABLISHED MEN which specialize in innovative dating services. The Complainant states that the ASHLEY MADISON brand is its flagship brand and is used for its main dating website “www.ashleymadison.com”. This caters for various types of discreet adult relationships and is now claimed to be one of the most famous dating websites on the Internet. The Complainant states that it also runs an affiliate scheme alongside the “www.ashleymadison.com” website, which operates in over 50 countries, supports over five different languages and allows affiliates to earn money by referring online users to sign up to the Complainant’s main website. The Complainant states that it has acquired significant and widespread consumer goodwill and recognition in the ASHLEY MADISON brand by virtue of its 17 years using this brand. The Complainant also states that it, together with its affiliates, subsidiaries and associated companies, owns registered trademark rights in the brand ASHLEY MADISON in several jurisdictions around the world, including but not limited to the following trademarks: Trademark Origin Registration No. Date of Registration Classes ASHLEY MADISON Canada TMA592582 October 20, 2003 41, 45 ASHLEY MADISON United States 2812950 February 10, 2004 38, 45 ASHLEY MADISON European Union 007047764 October 13, 2009 38, 45 ASHLEY MADISON Australia 1250305 February 16, 2009 38, 45 These are collectively referred to as the “ASHLEY MADISON Mark”. As well as using its ASHLEY MADISON Mark in its company logo and main website address, the Complainant also states that it uses the mark to promote its services on social media platforms including Facebook (“www.facebook.com/AshleyMadison/”), Twitter (“www.twitter.com/ashleymadison”) and YouTube (“www.youtube.com/user/AshleyMadison”). The Respondent registered the disputed domain name The Respondent is using the disputed domain name to host randomly generated content which at times hosts a Pay-Per-Click advertising page which contains links thematically similar to the services offered by the Complainant. 5. Parties’ Contentions A. Complainant The Complainant asserts its rights in the ASHLEY MADISON Mark. The Complainant contends that the disputed domain name is confusingly similar to its ASHLEY MADISON Mark. It states that despite the addition of the generic term “leaked”, its ASHLEY MADISON Mark remains prominent and recognizable in the disputed domain name. The Complainant also asserts that the Respondent has no rights in the disputed domain name. In this respect, the Complainant states that the Respondent is not affiliated or connected with it in any way and is not licensed by it or otherwise authorized to use the ASHLEY MADISON name and Mark. The Complainant also contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent is not commonly known by the disputed domain name and has not acquired any registered trademark rights or unregistered rights in the ASHLEY MADISON Mark or name. The Complainant contends that the Respondent’s use of the disputed domain name is to create an impression of association with the Complainant in order to earn revenue through the different links provided on the website to which the disputed domain name resolves or through redirections. The Complainant also states that it sent a cease and desist letter to the Respondent seeking voluntary transfer of the disputed domain name but that the Respondent never responded to this communication. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith and that this is evidenced by the fact that the disputed domain name automatically redirects online users to third-party websites. The Complainant states that the online user is often redirected to a Pay-Per-Click advertising page featuring links directly relating to the Complainant or other websites advertising different services. The Complainant also contends that the Respondent has previously engaged in a pattern of registering domain names featuring the trademark of a third-party brand and refers to several UDRP decisions in support. It contends that this shows a pattern of conduct on the part of the Respondent to profit from the brand value of trademarked terms. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Laches The Panel notes that the disputed domain name was registered in July 2015 and that the Complaint was filed on January 15, 2020. The question which arises is whether the elapse of around four and a half years from the domain name registration date prevents the Complainant from commencing an administrative proceeding against the Respondent under the Policy. The Panel recognizes that the issue has been addressed in previous UDRP decisions and that the doctrine or policy of laches or estoppel has not been applied to proceedings under the UDRP. See section 4.17 of the WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. Here, the Panel does not draw any negative inference from the mere delay in the filing of the Complaint. In this respect, the Panel is entitled to have regard to the lack of any substantive response by the Respondent to the Complainant’s contentions. The Panel will now review each of the three cumulative elements set form in paragraph 4(a) of the Policy. Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding: (i) that the disputed domain name is identical or confusingly similar to a trademark 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. B. Identical or Confusingly Similar The Complainant has provided evidence of its registrations in relation to the ASHLEY MADISON Mark in Canada, the United States, the European Union and Australia. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the ASHLEY MADISON Mark with a history of use going back to 2002. The Panel is satisfied that the Complainant is well-known by its ASHLEY MADISON Mark as an online provider of dating services catering for various types of discreet adult relationships. The Panel finds that the disputed domain name contains, as a dominant element, the ASHLEY MADISON Mark combined with the term “leaked”. The Panel considers this term to be a descriptive term. The use of this term does not prevent a finding of confusing similarity (see section 1.8 of WIPO Overview 3.0). The Panel also notes that it is well-established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparisons under the first element. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s ASHLEY MADISON Mark. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favour of the Complainant. C. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service rights; or (iii) that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the disputed domain name. In this respect, the Panel accepts that the Respondent is not commonly known by the disputed domain name and has not acquired any rights (registered or otherwise) in the ASHLEY MADISON Mark or name. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. D. Registered and Used in Bad Faith The Panel is satisfied that the disputed domain name has been registered in bad faith for the following reasons: (i) The Panel is satisfied that the Complainant’s ASHLEY MADISON Mark is well-known in its industry with a history of use going back to 2002. The Panel is also satisfied that at the time of registering the disputed domain name, the Respondent was aware of the Complainant, its ASHLEY MADISON Mark, the Complainant’s exclusive rights in that Mark and the goodwill residing in the Mark. In this respect, the Panel notes that the use of the term “leaked” deliberately draws attention to the primary and dominant element of the disputed domain name, namely the ASHLEY MADISON Mark, which is used in its entirety. In addition, the Complainant has provided, as evidence (Annex 10 to the Complaint), a media article which references a significant data breach that occurred in respect of the Complainant’s ASHLEY MADISON services in 2015. Given that the term “leaked” may be understood to mean the intentional disclosure of confidential information, together with the fact that the disputed domain name was registered in 2015 at a time when the Complainant is known to have suffered a data breach confirms that the use of the term “leaked” is a direct reference to this data breach, and that the Respondent knew of the Complaint’s rights to its AHLEY MADISON Mark. Finally, the Panel notes in this respect, that the website to which the disputed domain name resolves features links directly relating to the services offered by the Complainant. These factors, taken individually or together, support a finding that the Respondent knew of the Complainant, the Complainant’s ASHLEY MADISON Mark and the Complainant’s services at the time of the registration of the disputed domain name. (ii) Without any rights or legitimate interests, the Respondent’s registration of the disputed domain name is indicative of bad faith. (iii) The Complainant has referred the Panel to five domain names registered by the Respondent, and which contain other famous or well-known third-party marks. In one, the Respondent has combined two famous or well-known third-party trademarks. In another two, the Respondent has misspelled the famous or well-known third-party marks. This is well-established as a form of typosquatting registration. In the final two, the Respondent has combined a famous or well-known third-party mark with a descriptive term. In each case, the famous or well-known third-party mark is easily recognizable. As per section 3.1.2 of WIPO Overview 3.0, URDP panels have held that as few as two instances of abusive domain name registration can establish a pattern of bad faith registrations. In the Panel’s opinion, and in the absence of any arguments or evidence to the contrary by the Respondent, the list of five domain names featuring other famous or well-known marks demonstrates that the Respondent has clearly engaged in a pattern of registering domain names to prevent the trademark owner from reflecting its own mark in a corresponding domain name. See Arla Foods Amba and Mejeriforeningen Danish Dairy Board v Mohammad Alkurdi,WIPO Case No. D2017-0391 and Halle Berry and Ballah Brands Incorporated v Alberta Hot Rods,WIPO Case No. D2016-0256. (iv) The Complainant has also drawn to the Panel’s attention that the Respondent was involved in 19 previous domain disputes, of which 17 resulted in the transfer of the domain name(s) to the Complainant. The Panel accepts that this provides further evidence that the Respondent has engaged in a pattern of registering domain names to prevent a trademark owner from reflecting its own mark in a corresponding domain name. The Panel is also satisfied that the disputed domain name has been used in bad faith for the following reasons: (i) The Complainant has provided evidence (Annex 13 to the complaint) which shows that the website to which the disputed domain name resolves automatically redirects the online user to third-party websites. Further, the online user is often redirected to a Pay-Per-Click advertising page featuring links directly relating to services offered by the Complainant or other websites offering different services. The disputed domain name is therefore presumably providing the Respondent with an income source via the Pay-Per-Click features. The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent. The Panel therefore concludes that the Respondent, by using the disputed domain name, has intentionally attempted to attract for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). (ii) The Panel also accepts that the Respondent’s prior conduct in registering domain names featuring famous or well-known marks together with its use of the disputed domain name as an income source suggests that the Respondent is engaged in pattern of profiting from the brand value of trademarked terms it utilizes in its domain names. (iii) The Respondent’s failure to reply to the cease and desist letter sent by the Complainant is further evidence of bad faith, given all the other circumstances of this case. See LEGO Juris A/S v Thai Dang, WIPO Case No. D2018-1929. Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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 Andrew Brown Q.C.
Sole Panelist
Date: March 2, 2020
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