Avid Dating Life, Inc. v. Mainstream Advertising, Inc. c/o Nathan Joseph
Claim Number: FA1002001309085
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 <ashlemadisons.com> and <ashleymadions.com>, registered with Moniker.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 23, 2010.
On February 19, 2010, Moniker confirmed by e-mail to the National Arbitration Forum that the <ashlemadisons.com> and <ashleymadions.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 24, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 16, 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@ashlemadisons.com and postmaster@ashleymadions.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 James A. Carmody, Esq., 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 <ashlemadisons.com> and <ashleymadions.com> domain names are confusingly similar to Complainant’s ASHLEY MADISON mark.
2. Respondent does not have any rights or legitimate interests in the <ashlemadisons.com> and <ashleymadions.com> domain names.
3. Respondent registered and used the <ashlemadisons.com> and <ashleymadions.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, Mainstream
Advertising, Inc. c/o Nathan Joseph, registered the <ashlemadisons.com>
and <ashleymadions.com>
domain names on December 11, 2005. The
disputed domain names resolve to similar websites that display hyperlinks to
third-party websites, some of which directly compete with Complainant.
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).
The disputed domain names contain common misspellings of
Complainant’s ASHLEY MADISON mark and add the generic top-level domain (“gTLD”)
“.com.” Specifically, the <ashlemadisons.com> domain name deletes the
letter “y” and adds the letter “s” while the <ashleymadions.com>
domain names deletes the letter “s” within the mark and adds the letter “s” to
the end of the mark. 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 <ashlemadisons.com>
and <ashleymadions.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 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); 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 legitimate interests 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 “Mainstream Advertising, Inc.
c/o Nathan Joseph” as the registrant, which does not indicate that
Respondent is commonly known by the <ashlemadisons.com>
and <ashleymadions.com>
domain names.
Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name);
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).
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 <ashlemadisons.com> and <ashleymadions.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 a common misspelling 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 <ashlemadisons.com>
and <ashleymadions.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.
Since registering the
<ashlemadisons.com> and <ashleymadions.com>
domain names on December 11, 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 <ashlemadisons.com> and <ashleymadions.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
Finally, the Panel finds that Respondent’s aforementioned
engagement in typosquatting is further evidence of bad faith registration and
use under Policy ¶ 4(a)(iii). 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 <ashlemadisons.com> and <ashleymadions.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 6, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum