The Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
The Respondent is Perfect Privacy, LLC, United States of America / William Guzman, United States of America.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 13, 2021, 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 August 16, 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 amended Complaint on August 16, 2021.
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 August 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Alistair Payne as the sole panelist in this matter on September 19, 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 BackgroundThe Complainant is a Canadian operator of online dating websites based in Toronto, Canada founded in 2002. The Complainant specialises in innovative dating services and owns the online dating brand ASHLEY MADISON which is used for the dating website “www.ashleymadison.com” that caters for various types of discreet adult relationships. In 2020, it averaged 466,233 new accounts monthly, and reached 70 million users and the on-line platform garners around 10.55 million visits per month according to third-party statistics. The Complainant owns various trade mark registrations for its ASHLEY MADISON mark including United States trade mark registration 2812950 registered on February 10, 2004 and Canadian registration TMA592582 registered on October 20, 2003.
The disputed domain name was registered on May 7, 2021 and resolves to a website that features the Complainant’s ASHLEY MADISON logo together with an image that is frequently used by the Complainant on its website and in its marketing. The website features no other content but encourages users to enter their email to subscribe to the Respondent’s online dating service.
5. Parties’ Contentions A. ComplainantThe Complainant submits that it owns registered rights in its ASHLEY MADISON trade mark as set out above and that the disputed domain name wholly contains its mark and is therefore confusingly similar to it. The Complainant says that the addition of “-matchapproval” before the top level domain name “.com” element does not dispel confusing similarity for the purposes of the first element of the Policy.
The Complainant says that to the best of its knowledge, the Respondent does not have any trade mark rights for the term “Ashley Madison” or any other terms used in the disputed domain name. It says that there is also no evidence that the Respondent owns unregistered trade mark rights to the term “Ashley Madison” or any other terms used in the disputed domain name and that the Respondent is not commonly known by the name “Ashley Madison”. Neither, asserts the Complainant, has the Respondent received any licence from the Complainant to use domain names featuring the ASHLEY MADISON trade mark. It also asserts that none of the circumstances set out in paragraph 4(c) of the Policy are fulfilled in this case.
The Complainant’s key submission is that the Respondent has used the disputed domain name to resolve to a website which deceives online users as to its source or affiliation with the Complainant’s ASHLEY MADISON mark. It notes also that the Complainant’s ASHLEY MADISON logo is displayed at the top of the Respondent’s web page, along with an image frequently used by the Complainant on its website and in its marketing. The Complainant suggests that the website encourages users to enter their email address, in order to ‘subscribe’ to the Respondent’s service but that this is the most plausible intention of the Respondent in setting up this website is to harvest email addresses of users of ASHLEY MADISON services and it notes that there appears to be no other content displayed under the disputed domain name. In this regard, the Complainant submits that the use of a domain name that is confusingly similar to a well-known trade mark for the purposes of deceiving online users into thinking the attached website is operated by the trade mark holder, is clearly not an indication of a bona fide offering of goods or services and that this is particularly so where the online user’s personal data (in this case email address) is potentially misappropriated. Further, says the Complainant, none of this conduct amounts to legitimate non-commercial or fair use of the disputed domain name.
Its earliest trade mark registration, says the Complainant, predates the creation date of the disputed domain name by 18 years. It submits that since the Complainant’s establishment in 2002 the “Ashley Madison” name has become well-known for its provision of discreet dating services and that its service is the first reference on Google when searching in the name “Ashley Madison”.
The Complainant submits that the Respondent’s conduct, as outlined above, fulfills the criteria of paragraph 4(b)(iv) of the Policy in that the use of the disputed domain name to divert Internet users to the Respondent’s own website by exploiting the confusing similarity between the disputed domain name and the Complainant’s trade mark is evidence of bad faith. The Complainant also notes that the Respondent, by registering the disputed domain name, has set up a website that passes off the Complainant’s brand and that the Respondent most likely uses this deception to obtain the email addresses of online users. The Complainant says that as the Respondent has paid for the registration and maintenance of the disputed domain name and website attached thereto, there is most likely a commercial motive behind the use of the disputed domain name.
The Complainant also says that under paragraph 4(b)(iii) of the Policy, the Respondent has registered the disputed domain name in order to prevent the Complainant as the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name and that it has engaged in a pattern of such conduct. It says that there is evidence of a ‘pattern of bad faith conduct’ and that
Therefore, says the Complainant, there is evidence under paragraph 4(b) of the Policy that the Respondent has both registered and used the disputed domain name in bad faith and the fact that the Respondent failed to respond to its “cease and desist” letter dated June 22, 2021 raises a further inference of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated that it owns United States trade mark registration 2812950 registered on February 10, 2004 and Canadian registration TMA592582 registered on October 20, 2003 for its ASHLEY MADISON mark.
The disputed domain name wholly contains the ASHLEY MADISON mark and is therefore confusingly similar to it. The Panel finds that the addition to the disputed domain name of “-matchapproval” before the top level domain name “.com” element does not dispel confusing similarity.
Accordingly, the Complaint succeeds under the first element of the Policy.
B. Rights or Legitimate InterestsThe Complainant has submitted that to the best of its knowledge, the Respondent does not have any trade mark rights for the term “Ashley Madison” or any other terms used in the disputed domain name. It has also submitted that there is no evidence that the Respondent owns unregistered trade mark rights in the term “Ashley Madison” or any other terms used in the disputed domain name. It has also asserted that the Respondent is not commonly known by the name “Ashley Madison” and that the Respondent has not received any licence from the Complainant to use domain names featuring the ASHLEY MADISON trade mark and that none of the circumstances set out in paragraph 4(c) of the Policy are fulfilled in this case.
It is apparent that that the Respondent has used the disputed domain name to resolve to a website which deceives online users as to its source or affiliation with the Complainant’s ASHLEY MADISON mark. The Complainant’s ASHLEY MADISON logo is displayed at the top of the Respondent’s web page to which the disputed domain name resolves and on that page there is an image which appears to the Panel to be near identical to the image that appears on the Complainant’s main website page. This is a clear case of the Respondent seeking to confuse Internet users into thinking that its webpage is the Complainant’s, or is affiliated or associated with it, when that is not the case. As there is no evidence that there is further content on the site to which the disputed domain name resolves, the Respondent’s motivation is unclear, but the fact that the website encourages users to enter their email address, presumably in order to ‘subscribe’ to the Respondent’s service, would reasonably suggest, as hypothesized by the Complainant, that the Respondent’s intention is to gather email addresses from Internet users seeking to subscribe to what they think is the Ashley Madison service. None of this conduct is consistent with a bona fide offering of goods or services and certainly does not amount to legitimate non-commercial or fair use of the disputed domain name.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent has failed to rebut this case. For these reasons and as set out under Part C below, the Panel finds that the Complaint also succeeds under this element of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered on May 7, 2021 by the United States based Respondent, many years after the Complainant registered its ASHLEY MADISON trade mark in the United States and after it commenced its website and business. The Complainant’s ASHLEY MADISON mark is very distinctive and the evidence suggests that by 2020 it had developed a very substantial degree of repute of which the Respondent was more than likely aware. In addition, the fact that the website to which it resolves features the Complainant’s logo mark and an almost identical image to that on the Complainant’s webpage supports the inference that the Respondent must have been well aware of the Complainant’s mark and business when it registered the disputed domain name in 2021.
Under paragraph 4(b)(iv) of the Policy there is evidence of registration and use of the disputed domain name in bad faith where a Respondent has used the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation or endorsement of the website.
As described under section B above, the Respondent is intentionally using the disputed domain name to confuse and divert Internet users who think that they are going to the Complainant’s site, to the Respondent’s own website. The use of the Complainant’s logo and image could very well confuse Internet users into seeking to subscribe, whether by entering their email address or other personal details. The precise nature of the Respondent’s purpose in trying to pass itself off as the Complainant is not clear, but in the circumstances it is very likely for fraudulent purposes or at the least for the commercial benefit of the Respondent. The fact that the Respondent also used a privacy service to mask his identity only reinforces the Panel’s view of the Respondent’s bad faith.
In view of the Panel’s findings under paragraph 4(b)(iv) and in circumstances that it is more than likely that the Respondent’s deception of Internet users, as described above, is for a fraudulent purpose in bad faith, it is unnecessary for the Panel to consider paragraph 4(b)(iii). The Panel therefore finds that the disputed domain name has been both registered and used in bad faith and that the Complaint also succeeds under this element of the Policy.
7. DecisionFor 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
Alistair Payne
Sole Panelist
Date: September 28, 2021