The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2021. On June 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2021. The Center appointed William R. Towns as the sole panelist in this matter on August 13, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is Canadian company founded in 2002. The Complainant for some 20 years has owned and operated an online dating service trading under the “ASHLEY MADISON” brand. The Complainant is the holder of the following trademark registrations for the ASHLEY MADDISON mark issued in Canada (“CA”), the United States (“US”), the European Union (“EU”), and Australia (“AU”)): - ASHLEY MADISION, CA Reg. No. TMA592582, applied for July 8, 2002, and registered October 20, 2003; - ASHLEY MADISION, US Reg. No. 2812950, applied for November 20, 2002, and registered February 10, 2004; - ASHLEY MADISION, EU Reg. No. 007047764, applied for July 8, 2008, and registered October 13, 2019; - ASHLEY MADISION, AU Reg. No. 1250305, applied for July 8, 2008, and registered February 16, 2009. The disputed domain The Respondent has redirected the disputed domain names to unrelated third-party websites. Some of these websites contain sponsored links to financial investment services, while other websites appear to be used by the Respondent to generate pay-per-click (“PPC”) revenues. Upon learning of the Respondent’s registration and use of the disputed domain names, the Complainant’s representative dispatched a cease and desist letter to the Respondent on April 9, 2021, to which the Respondent offered no reply. The Complainant thereafter commenced this proceeding under the Policy. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain names all are identical or confusingly similar to the Complainant’s ASHLEY MADISON mark. The Complainant observes that each of the disputed domain names are slight misspellings of the Complainant’s mark, and explains that such misspellings of a trademark do not negate confusing similarity under the UDRP when the aspects of the relevant mark are recognizable. The Complainant emphasizes the distinctive nature of the ASHLEY MADISON mark. According to the Complainant, the Respondent’s involvement in numerous similar cases under the UDRP dispels any doubt as to the Respondent’s intention to register multiple domain names confusingly similar to the Complainant’s distinctive ASHLEY MADISON mark. The Complainant sites the following WIPO decisions: Government Employees Insurance Company (“GEICO”) v. Domain Adminstrator, Fundacion Privacy Services LTD,WIPO Case No. D2020-3340; Klarna Bank AB v. Fundacion Privacy Services LTD,WIPO Case No. D2020-2513; DD IP Holder LLC v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2020-1372; Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2020-1079. The Complainant also notes that the generic top-level domain “.com” is a standard registration requirement generally disregarded under the first element of the Policy. The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant submits that the Respondent possesses no trademark rights or unregistered rights in the ASHLEY MADISON mark, and further maintains that the Respondent has not been licensed or otherwise authorized to use the ASHLEY MADISON mark in domain names. The Complainant asserts there is no plausible reason for the Respondent’s registration of the disputed domain names other than to take advantage of the goodwill and valuable reputation attached to the ASHLEY MADISON brand. The Complainant asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant contends that the disputed domain names have been redirected by the Respondent to random, unrelated webpages. The Complainant observes that some of these webpages contain sponsored links to financial investment services, or resolve to webpages encouraging users to install something on their browser, and maintains that on each such occasion the online user is redirected immediately to potentially harmful websites. The Complainant sites as authority Government Employees Insurance Company (“GEICO”) v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1012. The Complainant argues that the Respondent has not been commonly known by the disputed domain names and is not truly offering any goods or services using the Complainant’s ASHLEY MADISON mark. To the contrary, the Complainant observes there is no plausible reason for the Respondent’s registration of the disputed domain names other than to take advantage of the goodwill and valuable reputation attached to the ASHLEY MADISON brand. The Complainant remarks that mere ownership of the disputed domain names does not confer a right or legitimate interest on the Respondent, citing National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net,WIPO Case No. D2000-0118. In light of the foregoing, the Complainant submits that the evidence clearly demonstrates that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names. Rather, according to the Complainant, the Respondent is using the reputation of the Complainant’s ASHLEY MADISON mark to attract online users to disputed domain names, which are then redirected to websites that contain links to financial investments and are commercial in nature. The Complainant adds that the Respondent likely earns revenue from such automatic redirections. The Complainant submits that the Respondent registered and is using the disputed domain names in bad faith. The Complainant emphasizes that the ASHLEY MADISON trademark registrations predate the Respondent’s registration of the disputed domain names by nine years, during which the Complainant has accrued substantial good will in the Complainant’s “Ashley Madison” name, and is well known for the provision of discrete dating services. The Complainant cites Government Employees Insurance Company (“GEICO”) v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1012. The Complainant maintains that the Respondent has engaged in typosquatting that in itself demonstrates bad faith registration and use. The Complainant considers that the disputed domain names registered by the Respondent are nonsensical and as such can be considered only as deliberate misspellings of the ASHLEY MADISON mark attempting to “catch out” Internet users who mistype or misread the disputed domain names. The Complainant further represents that the Respondent has been a party in at least 122 UDRP decisions, almost all found in favor of the complainants. According to the Complainant, the Respondent continually registers domain names pertaining to famous brands through typosquatting, citing as examples Government Employees Insurance Company v. Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2020-1079; ZipRecruiter Inc. v. Domain Admin / Domain Administrator, Fundacion Privacy Services LTD,WIPO Case No. D2020-0376; and Andrey Ternovskiy dba Chatroulette v. Domain Administrator, Fundacion, Privacy Services LTD,WIPO Case No. D2018-1644. The Complainant contends the Respondent’s involvement in other UDRP disputes establishes a pattern of bad faith registration and use of the disputed domain names within the contemplation of the Policy. The Complainant concludes such is particularly so as the Respondent consistently targets well-known brands and often registers multiple infringing domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain names are confusingly similar to the ASHLEY MADISON mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. The Complainant’s ASHLEY MADISON mark is recognizable in each of the disputed domain names.3 The first element test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.4 Applying this comparison, the Complainant’s mark is recognizable. The inclusion in the disputed domain names of slight but deliberate multiple misspellings of the Complainant’s ASHLEY MADISON mark constitute typosquatting, and do not prevent a finding of the confusing similarity between the disputed domain names and the Complainant’s mark.5 When at least a dominant feature of the relevant trademark is recognizable in the disputed domain names, the domain names will normally be considered confusingly similar to that mark for purposes of UDRP standing.6 See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524. Top-Level Domains (“TLDs”), in this case “.com” generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.7 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s ASHLEY MADISON mark. Regardless, the Respondent has registered multiple disputed domain names appropriating the Complainant’s distinctive ASHLEY MADISON mark. As previously noted, the Respondent has redirected the disputed domain names to unrelated third-party websites, some with sponsored links to financial investment services, and others apparently used by the Respondent to generate PPC revenues. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain names by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain names within any of the “safe harbors” of paragraph 4(c) of the Policy. It is evident to the Panel that the Respondent was aware of the Complainant and had the Complainant’s ASHLEY MADISON mark in mind when registering multiple domain names, each of which is confusingly similar to the Complainant’s mark. To the extent the Respondent might claim to be making a fair use of the disputed domain names, any reliance by the Respondent on decisions such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 would be misplaced. Fundamentally, a respondent’s use of a domain name would not be considered “fair” if it falsely suggests affiliation with the trademark owner. And the use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359; Project Management Institute v. CMN.com,WIPO Case No. D2013-2035. Having regard to all of the relevant circumstances in this case, and in the absence of any explanation by the Respondent, the Panel finds that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. See Autodesk, Inc. v. Brian Byrne, meshIP, LLC,WIPO Case No. D2017-0191. Further, and for the reasons discussed above, the Panel holds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names. As previously noted, the Respondent has not been authorized to use the Complainant’s ASHLEY MADISON mark, and the Panel has found no indication in the record that the Respondent has been commonly known by any of the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the Respondents’ documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iv) of the Policy. The record is convincing that the Respondent had the Complainant’s ASHLEY MADISON mark firmly in mind when registering the disputed domain names. The Respondent’s deliberate misspelling of the disputed domain names signals a clear intention to confuse Internet users and is unquestionably demonstrative of bad faith. The Respondent beyond question has sought intentionally to exploit and profit from on the Complainant’s trademark rights. 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 names, William R. Towns 1 - - - - - - 2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. 3 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy. 4 Id. 5 See WIPO Overview 3.0, section 1.9 and cases cited therein. 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. See also WIPO Overview 3.0, section 1.8 and cases cited therein. The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy. 6 See WIPO Overview 3.0, section 1.7 and cases cited therein. 7 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Sole Panelist
Date: August 27, 2021
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