Complainant is Ruby Life Inc., Canada, represented by SafeNames Ltd., United Kingdom.
Respondent is Phoebe Wu, China.
The disputed domain name <ashleymadisonwebsite.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2019. On October 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2019. The Center received an informal email communication from Respondent on October 26, 2019. Respondent did not submit any formal response. The Center notified the Parties on November 13, 2019, that it would proceed to panel appointment.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on November 28, 2019. 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.
Since 2002, Complainant has owned and operated an online dating platform under the mark ASHLEY MADISON, via its website, located at “www.ashleymadison.com”. Complainant advertises “discreet relationships of all kinds”, and has members in over 50 countries around the world. Complainant owns trademark registrations for the ASHLEY MADISON mark in various jurisdictions. These include United States of America Registration No. 2812950 (registered February 10, 2004); Canadian Registration No. TMA592582 (registered October 20, 2003); and European Union Registration No. 007047764 (registered October 13, 2009). Complainant also advertises its services via various social media platforms, including Facebook, Twitter, and YouTube.
The disputed domain name <ashleymadisonwebsite.com> was registered on April 23, 2018. Respondent has no affiliation with Complainant. Respondent has had the URL associated with the disputed domain name resolve to a parked webpage, that was inactive as of the filing date of the Complaint. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.
Complainant contends that (i) the disputed domain name <ashleymadisonwebsite.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
In particular, Complainant contends that its ASHLEY MADISON mark is known globally for discreet dating services. Complainant further contends that it has trademark registrations in various jurisdictions for the ASHLEY MADISON mark. Complainant further contends that Respondent has no rights or legitimate interests in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith.
On October 26, 2019, a few days after this proceeding was commenced, the Center received an informal email communication from Respondent as follows:
“Hi Ashleymadison team,
I am very sorry for the late reply. I have been wondering why I received your letter since this website could not be opened. I thought it was a fraud. I forgot to have this domain name. Built the home page has been no matter it, do not remember the domain name. I have contacted godaddy service provider to help me delete this website. It is not clear why Chinese people are not allowed to buy this domain name in foreign countries.
Best regards,
Phoebe”
Respondent did not submit a formal response.
The Panel notes that Respondent has informally expressed a desire to settle this proceeding. In this regard, the Panel turns to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.10, which notes that even where a respondent expresses consent to a remedy, a panel may proceed to a substantive determination on the merits, particularly where the complainant has not agreed, but rather has requested a panel decision. In this regard, after receiving the email sent by Respondent on October 26, 2019, the Center contacted the Parties to see if they wished to suspend the proceeding to explore settlement negotiations. The Parties did not request a formal suspension.
Rather, on November 7, 2019, Complainant asked the Center to proceed with a decision. The Center acknowledged the correspondence and indicated it would proceed. After receiving no formal response from Respondent, the Center notified the Commencement of Panel Appointment Process. Under these circumstances, and as discussed herein, the Panel finds it appropriate to discuss and render a full decision.
This Panel must first determine whether the disputed domain name <ashleymadisonwebsite.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is. The disputed domain name directly incorporates Complainant’s registered trademark ASHLEY MADISON, and merely adds the descriptive term “website”.
Complainant’s trademark is clearly recognized in the disputed domain name.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words, including geographically descriptive wording, does not prevent a finding of confusing similarity for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example,Inter-IKEA v. Polanski, WIPO Case No. D2000-1614 (transferring <ikeausa.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>). See also Section 1.8 of the WIPO Overview 3.0.
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the disputed domain name in connection with a bona fide offering of goods or services; (ii) demonstration that Respondent has been commonly known by the disputed domain name; or (iii) 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.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted.
Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Decision, Respondent has previously set up a parked webpage at the URL associated with the disputed domain name, which is now inactive. It is well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. SeeWIPO Overview 3.0, Section 3.3, which notes that the “non-use of a domain name” does not necessarily negate a finding of bad faith.
Rather, a panel must examine “the totality of the circumstances”, including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here did not formally respond to the Complaint, nor to follow-up correspondence from Complainant. Furthermore, Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world.
Considering the totality of the circumstances, this Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.
For all 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 <ashleymadisonwebsite.com> be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: December 12, 2019