Avid Dating Life Inc. v. Taranga Services Pty Ltd c/o Domain Admin
Claim Number: FA1002001307872
Complainant is Avid Dating Life Inc. (“Complainant”), represented by Brody
Stout, of CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2010.
On February 16, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names are registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 15, 2010 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ashleymadisom.com, postmaster@ashleymadisson.com, postmaster@ashleymadsion.com, and postmaster@ashlymadison.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names are confusingly similar to Complainant’s ASHLEY MADISON mark.
2. Respondent does not have any rights or legitimate interests in the <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names.
3. Respondent registered and used the <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Avid Dating Life
Inc., is a provider of online dating services.
Complainant has used the ASHLEY MADISON mark in connection with these
services since 2002. Complainant holds a
registration of the ASHLEY MADISON mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 2,812,950 issued February 10, 2004).
Respondent, Taranga Services Pty Ltd c/o Domain Admin, registered the <ashleymadisom.com> domain name on November 27, 2005 and the <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names on November 26, 2005. All of the disputed domain names resolve to similar websites that display hyperlinks to third-party websites, some of which directly compete with Complainant.
Complainant offers evidence that Respondent has a history of registering domain names that infringe upon the trademark rights of others and has been ordered by previous UDRP panels to transfer the disputed domain names to the respective complainants. See Capital One Financial Corp. v. Taranga Servs. Pty Ltd., FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Eldos Interactive Ltd. v. Taranga Servs. Pty Ltd., D2009-0124 (WIPO March 31, 2009).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) The domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has established rights in
the ASHLEY MADISON mark under Policy ¶ 4(a)(i) through its registration of the
mark with the USPTO (Reg. No. 2,812,950 issued
February 10, 2004).
All of the disputed domain names contain common misspellings
of Complainant’s ASHLEY MADISON mark.
Specifically, the <ashleymadisom.com> domain name replaces the
letter “n” with the letter “m,” the <ashleymadisson.com> domain
name adds an extra letter “s,” the <ashleymadsion.com> domain name
transposes the letter “i” and the letter “s,” and the <ashlymadison.com>
domain name deletes the letter “e.” The
Panel finds that none of these changes to Complainant’s mark sufficiently
distinguishes the disputed domain names from Complainant’s mark. Therefore, the Panel finds that the <ashleymadisom.com>, <ashleymadisson.com>,
<ashleymadsion.com>, and <ashlymadison.com>
domain names are confusingly similar to Complainant’s ASHLEY MADISON mark under
Policy ¶ 4(a)(i).
See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000)
(finding that, by misspelling words and adding letters to words, a respondent
does not create a distinct mark but nevertheless renders the domain name
confusingly similar to the complainant’s marks); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259
(WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or
changes, such as the addition of a fourth “w” or the omission of periods or
other such “generic” typos do not change respondent’s infringement on a core
trademark held by the complainant); see
also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant makes this showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Although Respondent did not assert that it had any rights or allegations in the disputed domain names, the Panel elects to examine the record under Policy ¶ 4(c).
The WHOIS information for the disputed domain names list “Taranga Services Pty Ltd c/o Domain Admin” as
the registrant, which does not indicate that Respondent is commonly known by
the <ashleymadisom.com>, <ashleymadisson.com>,
<ashleymadsion.com>, and <ashlymadison.com>
domain names. Respondent has not offered any evidence to
suggest that Policy ¶ 4(c)(ii) applies in this case. Moreover, Complainant asserts that it has not
licensed or otherwise authorized Respondent to use the ASHLEY MADISON
mark. Therefore, the Panel finds that
Respondent is not commonly known by the disputed domain names under Policy ¶
4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb.
Forum July 7, 2006) (concluding that the respondent was not commonly known by
the disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii)
based on the WHOIS information and other evidence in the record).
All of the disputed domain names resolve to similar websites that display hyperlinks to third-party websites, some of which directly compete with Complainant. The Panel presumes, as does Complainant, that Respondent receives click-through fees for these hyperlinks. Therefore, the Panel finds that Respondent’s use of the <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Finally, the Panel
finds that Respondent is engaged in typosquatting because Respondent is taking
advantage of common misspellings of Complainant’s ASHLEY MADISON mark. Therefore, the Panel finds that Respondent’s
engagement in typosquatting is further evidence that Respondent lacks rights
and legitimate interests in the <ashleymadisom.com>, <ashleymadisson.com>,
<ashleymadsion.com>, and <ashlymadison.com>
domain names under Policy ¶
4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant offers evidence that Respondent has engaged in serial cybersquatting in the past. Complainant references past WIPO and NAF decisions against Respondent as evidence of a pattern of bad faith registration of domain names of well-known parties. See Capital One Financial Corp. v. Taranga Servs. Pty Ltd., FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Eldos Interactive Ltd. v. Taranga Servs. Pty Ltd., D2009-0124 (WIPO March 31, 2009). The Panel finds that Respondent’s history of registering domain names in bad faith is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). Complainant further contends that Respondent’s registration of four domain names that infringe upon its trademark rights are evidence of bad faith registration and use. The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii), where it has registered four domain names that infringe upon the trademark rights of Complainant. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).
Since registering the
<ashleymadisom.com>, <ashleymadisson.com>,
<ashleymadsion.com>, and <ashlymadison.com>
domain names in November 2005, the disputed domain names have resolved to
similar websites that display hyperlinks to third-party websites, some of which
directly compete with Complainant. The
Panel finds that Respondent’s use of the disputed domains disrupts Complainant’s
business. The Panel further finds that
such a disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb.
13, 2007) (concluding that the use of a confusingly similar domain name to attract
Internet users to a directory website containing commercial links to the
websites of a complainant’s competitors represents bad faith registration and
use under Policy ¶ 4(b)(iii)); see
also Am. Airlines, Inc. v.
The Panel finds that Respondent’s use of the confusingly
similar <ashleymadisom.com>, <ashleymadisson.com>,
<ashleymadsion.com>, and <ashlymadison.com>
domain names creates a likelihood of confusion as to Complainant’s affiliation
with the disputed domain names. The
Panel further finds that Respondent is commercially gaining from this
likelihood of confusion from its presumed receipt of click-through fees, which
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
The Panel has already determined that Respondent has engaged
in typosquatting. This practice has been
found to constitute evidence by itself of bad faith registration and use under
Policy ¶ 4(a)(iii), and so this Panel finds. See Nextel Commc’ns Inc.
v. Geer, FA 477183 (Nat.
Arb. Forum July 15, 2005)
(finding that the respondent’s registration and use of the <nextell.com>
domain name was in bad faith because the domain name epitomized typosquatting
in its purest form); see also Microsoft
Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ashleymadisom.com>, <ashleymadisson.com>, <ashleymadsion.com>, and <ashlymadison.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 6, 2010
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