The Complainant is Ruby Life Inc. of Ontario, Canada, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Jean-Marc Baysang of Nordrhein-Westfalen, Germany, self-represented.
The disputed domain name <ashleymsdison.com> ("Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 16, 2017. On August 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 17, 2017, 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 August 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 12, 2017. The Respondent did not file the Response by the specified due date. Accordingly, the Center notified the Respondent's default on September 13, 2017.
The Respondent filed a late Response on September 13, 2017.
The Center appointed Martin Schwimmer as the sole panelist in this matter on September 18, 2017. 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.
The Complainant provides an online dating service under the ASHLEY MADISON trademark. The Complainant is the owner the trademark ASHLEY MADISON in numerous jurisdictions, including European Union Trade Mark registration no. 007047764 registered on October 13, 2009.
The Respondent registered the Domain Name <ashleymsdison.com> on May 30, 2017, which Domain Name is used to host advertising links promoting online dating services.
The Complainant founded the ASHLEY MADISON online dating service in 2001. It created the mark ASHLEY MADISON (the "Mark") by selecting two of the most popular female names given to new born babies in the years 2000 and 2001. It offers its services utilizing the website "www.ashleymadison.com". It owns trademark registrations for the Mark in numerous jurisdictions, including European Union Intellectual Property Office. Because the Complainant targets married people in its advertising, the Complainant is controversial, and therefore receives a great deal of unsolicited press coverage. Previous UDRP panels have found that the Complainant's Mark is famous. See, e.g., Avid Dating Life Inc. v. Erin Nemshick, WIPO Case No. D2014-1638.
The Domain Name <ashleymsdison.com> is confusingly similar to the Complainant's Mark, as it differs solely by a single letter — an "s" instead of an "a". As the letter "a" is next to the letter "s" on a standard keyword, the Respondent's selection of the Domain Name constitutes "typosquatting".
The Respondent has no relationship to the Complainant in any manner, and lacks rights and/or legitimate interests in the Domain Name. The Respondent is not commonly known as either ASHLEY MADISON or ASHLEY MSDISON. The Respondent uses the Domain Name as a pay-per-click ("PPC") landing page. Certain links on the landing page lead to services that compete with those of the Complainant.
The Respondent had actual knowledge of the Mark, in view of the Complainant's reputation in the online dating market, and that the Respondent's content refers to the Complainant and to online dating. Furthermore, typosquatting has been found as evidence of bad faith registration and use. Additionally, the Respondent has registered other domain names that reflect famous marks, such as <microsofth.com> ("MICROSOFT") and <forevar21.com> ("FOREVER 21").
The Respondent submitted an untimely email to the Center. The email was addressed to the Center, but the Respondent directs his comments directly to the Complainant (see below). The Panel will address the arguments asserted by Respondent, but will consider evidence in the light most favorable to the Respondent. The Panel will exercise its discretion and consider the contents, the text of which is reproduced in full here.
"1. why you think the contents on my website is threats to your clients? all of the contents are from google.com, I do not think that's theats. (sic).
2. As i know, this domain is already exited (sic) for many years. Why you did nothing in the past years if you think this domain is a theat (sic) ?
3. And I think you should catch this domain fatser (sic) than me if you really care about this domain, not email me after i cacthed it.
4. I do not want to do anything illegal.
5. I'm a domain businessman, so if you are interested in this domain, I can give you a kind price , please feel free to contact with me.
Looking forward to your Collaboration"
The Complainant has provided voluminous evidence of use and registration of the ASHLEY MADISON trademark. The Domain Name is <ashleymsdison.com> and differs only by a single letter from the Complainant's famous trademark. While "Ashley" and "Madson" are each popular names for girls, there is no evidence of use of the compound name ASHLEY MADISON to connote anyone or anything other than the Complainant. The Panel notes that "MSDISON" doesn't appear to create a recognizable name or word, and the letter "a" appears next to the letter "s" on a standard keyboard. Accordingly, "msdison" appears to be a typo for the word "madison".
Furthermore, it is standard practice by UDRP panels to disregard the generic Top-Level Domain ("gTLD") suffix ".com", which does little if any to change the connotation of the second-level name.
Therefore, the Panel agrees with the Complainant that the Domain Name is confusingly similar to the Complainant's Mark.
The second ground to be demonstrated by the Complainant, according to the provisions of the Policy, is the Respondent's absence of any rights or legitimate interests in the Domain Name, per paragraph 4(a)(ii) of the Policy.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
The Respondent does not rebut the Complainant's allegations that he does not have any form of relationship with the Complainant. The Respondent asserts that all his content is derived from Google, which, in view of the Complainant's documentation of the Respondent's website, the Panel understands to mean that the Respondent is hosting keyword advertisements obtained from Google. The Panel notes that certain of these advertisements appear to promote online dating websites that presumably compete with that of the Complainant.
The Panel is satisfied that the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the ASHLEY MADISON trademark in a domain name or in any other manner. The Complainant alleges that there is no such connection here. The Panel finds there is no evidence of legitimate noncommercial or fair use.
Therefore, in light of the Complainant's prima facie case, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
Addressing the arguments made by the Respondent in his email first, he appears to be asserting a defense of laches by noting that the Domain Name has existed for many years. The Respondent also suggests that the Complainant should have been faster to "catch" the Domain Name. While UDRP Panels are prepared to entertain the idea of delay as a defense (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.17), the Respondent has not established delay in this case. The evidence shows that the WhoIs database shows a creation date of May 30, 2017 for the Domain Name. Additionally, the Panel has exercised its discretion to review matters of public record, specifically historical WhoIs records. The prior registrant shares no contact data in common with the Respondent and thus is seemingly unrelated to the Respondent. The Domain Name "dropped" or expired, prior to the May 30, 2017 creation date. The Respondent may have obtained the Domain Name using a backorder service (thus explaining his use of the word "catch" to describe how he obtained the Domain Name), but in any event, there is no evidence to suggest that the Respondent obtained the Domain Name earlier than May 30, 2017. Thus, the Complainant did not delay in filing its Complaint against the Respondent.
Second, the Respondent suggests that he is not responsible for the contents of the site, as "all contents are from google.com." As stated above, the Panel understands this to refer to the Google keyword ads on the site. The consensus view is that registrants are responsible for content of their sites, even if in the form of automatically generated advertising links. WIPO Overview 3.0, section 3.5. This is especially the case when other evidence of a respondent's prior knowledge of a complainant's trademark is present, as is the case here. See e.g., Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No.D2006-1315, <shangrila.com>; Owens Corning v. NA, WIPO Case No. D2007-1143, <pinkbatts.com>.
Finally, the Respondent appears to offer the Domain Name for sale to the Complainant for a "kind price". While an offer to sell a domain name in excess of a respondent's cost in obtaining the domain name can be deemed to be evidence of bad faith, the Panel will not consider this evidence in a light unfavorable to the Respondent, for the reasons discussed above. Here, the word "kind" is too vague to be interpreted as being meaningfully in excess of registration costs.
Turning to the Complainant's assertions, it has readily established that the ASHLEY MADISON Mark was well-known prior to the Respondent's registration of the Domain Name. In view of the advertisements on the Respondent's site that refer to both the Complainant and to other entities in the online dating market, it is clear that the Respondent knew of the Complainant's reputation in its mark. As the Respondent is not itself known as ASHLEY MSDISON, and as the term does not spell a recognizable word, the Panel finds that this is an instance of typosquatting. Additionally, the Respondent has not rebutted the Complainant's assertions that the Respondent has registered other domain names reflecting famous trademarks.
The Panel finds that the Respondent has registered and used the Domain Name in bad faith to exploit in some way the Complainant's rights in its Mark.
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 <ashleymsdison.com> be transferred to the Complainant.
Martin Schwimmer
Sole Panelist
Date: October 18, 2017