The Complainant is Ruby Life Inc., Canada, represented by Safenames, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Mark Gapasen, Philippines. 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 29, 2021. On January 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 29, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 5, 2021, 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 amendment to the Complaint on February 10, 2021. The Center verified that the Complaint together with the amendment to 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 February 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2021. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 30, 2021. 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 following facts are undisputed. The Complainant, Ruby Life Inc., is a Canadian operator of online dating websites based in Toronto, Canada founded in 2002 and that specializes in innovative dating services. The Complainant is the owner of several dating brands, including Ashley Madison. This brand has been used in trade since 2002. The Complainant is the owner of several trademark registrations, including, but not limited to the Canadian word mark ASHLEY MADISON, with registration no. TMA592582, with a filing date of July 8, 2002 and with a registration date of October 20, 2003, for services in classes 41 and 45 and the European Union Trade Mark (word mark) ASHLEY MADISON, with registration no. 007047764, with a filing date of July 8, 2008 and with a registration date of October 13, 2009, for services in classes 38 and 45 (hereinafter jointly referred to as the “Trademark”). The Complainant is the owner of the domain name and website “www.ashleymadison.com”, registered on November 13, 2001. The Domain Name was registered on November 9, 2020. The Domain Name resolves to a website with a sign-up and contact page and further information on a ‘ID Gold pass” which visitors could sign in for (the “Website”). Complainant has sent a cease and desist letter to the Respondent on November 20, 2020. 5. Parties’ Contentions A. Complainant Insofar as relevant for deciding this matter, the Complainant contends the following. The Domain Name is confusingly similar to the Complainant’s Trademark, as the Trademark is recognizable within the Domain Name. The Trademark is completely incorporated in the Domain Name and the additions “safety” and “protection” are only descriptive terms. Further, the conjunction of “safety” “protection” is likely to create further confusion in the mind of the Internet users. The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not commonly known by the Trademark and is not authorized or permitted to use the Trademark, nor is the Respondent associated with the Complainant. The Domain Name is used in an attempt to give the impression of association with the Complainant’s business and Trademark. Also, the Website offers a fake product under the Trademark and requests for personal data of the visitors of the Website, which suggests the possibility that the Domain Name is used for fraudulent purposes. The Domain Name was registered and has been used in bad faith. The Trademark and domain name of the Complainant predate the registration date of the Domain Name. In addition, the Complainant has accrued substantial goodwill and recognition since 2002. By utilizing the Complainant’s website image it is clear that the Respondent knew about the existence of the Trademark and therefore registered the Domain Name in bad faith. The Respondent has intentionally misappropriated the Trademark as a way of redirecting Internet users to the Website and to disrupt the Complainant’s activities, by claiming the offer of services of the Complainant. The Domain Name creates confusion as to the source of the Domain Name in an attempt to trade on the goodwill associated with the Complainant’s Trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Name is 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. The Complainant has shown that it has rights in the Trademark. As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “ashleymadison”, “safety” and “protection”. The element “ashleymadison” is identical to the Trademark. The elements “safe” and “protection” are dictionary terms. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the two additional terms do not prevent a finding of confusing similarity. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. Therefore, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as: (i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making 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. The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “ashleymadison” or “ashleymadisonsafetyprotection” is the Respondent’s name or that the Respondent is commonly known under one of these names. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark. Furthermore, the use of the Domain Name cannot be considered as a bona fide offering of goods or services. The Complainant has sufficiently demonstrated that the Website consists of false and misleading information and misleads the Internet users by appearing to offer services on behalf of the Complainant. Also, on the Website the Respondent asks the visitors to fill in their personal data, which can potentially lead to fraudulent purposes under the Domain Name. The Panel finds that the Respondent has intentionally registered the Domain Name for the purpose of making illegitimate or unfair use of the Trademark and the Complainant’s goodwill by misleading Internet users who are seeking information about the Complainant’s dating activities. Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name. Finally, given the circumstance of this case, the Panel finds that the Complainant’s case that the Respondent’s lack of rights or legitimate interests in the Domain Name is also unrebutted due to the fact that no formal or substantive response was filed by the Respondent. Therefore, the Panel is satisfied that the second element of the Policy is met. C. Registered and Used in Bad Faith The Panel finds that the Domain Name was registered and is being used in bad faith. The Panel refers to its considerations under section 6.B and adds the following. In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the existence of the Complainant’s activities and rights at the time the Respondent registered the Domain Name. The Panel finds that the Respondent, by using the Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Trademark. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv). Finally, although the lack of a formal or substantive response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered and is being used 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 Domain Name Willem J. H. Leppink
Sole Panelist
Date: April 12, 2021
Full & Egal Universal Law Academy