national arbitration forum

 

DECISION

 

Avid Dating Life, Inc. v. White & Case Limited c/o Domain Admin

Claim Number: FA1002001309102

 

PARTIES

Complainant is Avid Dating Life, Inc. (“Complainant”), represented by Brody Stout of CitizenHawk, Inc., California, USA.  Respondent is White & Case Limited c/o Domain Admin (“Respondent”), Barbados.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <aashleymadison.com>, <asheymadison.com>, <ashhleymadison.com>, <ashleemadison.com>, <ashleeymadison.com>, <ashlemadison.com>, <ashleyadison.com>, <ashleymaadison.com>, <ashleymadiison.com>, <ashleymadion.com>, <ashleymadisn.com>, <ashleymadisonn.com>, <ashleymadisoon.com>, <ashleymadson.com>, <ashleymaison.com>, <ashleymdison.com>, <ashleymmadison.com>, <ashleyymadison.com>, <ashlleymadison.com>, <asshleymadison.com>, and <shleymadison.com>, registered with Enom, Inc.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

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 22, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <aashleymadison.com>, <asheymadison.com>, <ashhleymadison.com>, <ashleemadison.com>, <ashleeymadison.com>, <ashlemadison.com>, <ashleyadison.com>, <ashleymaadison.com>, <ashleymadiison.com>, <ashleymadion.com>, <ashleymadisn.com>, <ashleymadisonn.com>, <ashleymadisoon.com>, <ashleymadson.com>, <ashleymaison.com>, <ashleymdison.com>, <ashleymmadison.com>, <ashleyymadison.com>, <ashlleymadison.com>, <asshleymadison.com>, and <shleymadison.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 25, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 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@aashleymadison.com, postmaster@asheymadison.com, postmaster@ashhleymadison.com, postmaster@ashleemadison.com, postmaster@ashleeymadison.com, postmaster@ashlemadison.com, postmaster@ashleyadison.com, postmaster@ashleymaadison.com, postmaster@ashleymadiison.com, postmaster@ashleymadion.com, postmaster@ashleymadisn.com, postmaster@ashleymadisonn.com, postmaster@ashleymadisoon.com, postmaster@ashleymadson.com, postmaster@ashleymaison.com, postmaster@ashleymdison.com, postmaster@ashleymmadison.com, postmaster@ashleyymadison.com, postmaster@ashlleymadison.com, postmaster@asshleymadison.com, postmaster@shleymadison.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 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <aashleymadison.com>, <asheymadison.com>, <ashhleymadison.com>, <ashleemadison.com>, <ashleeymadison.com>, <ashlemadison.com>, <ashleyadison.com>, <ashleymaadison.com>, <ashleymadiison.com>, <ashleymadion.com>, <ashleymadisn.com>, <ashleymadisonn.com>, <ashleymadisoon.com>, <ashleymadson.com>, <ashleymaison.com>, <ashleymdison.com>, <ashleymmadison.com>, <ashleyymadison.com>, <ashlleymadison.com>, <asshleymadison.com>, and <shleymadison.com> domain names are confusingly similar to Complainant’s ASHLEY MADISON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <aashleymadison.com>, <asheymadison.com>, <ashhleymadison.com>, <ashleemadison.com>, <ashleeymadison.com>, <ashlemadison.com>, <ashleyadison.com>, <ashleymaadison.com>, <ashleymadiison.com>, <ashleymadion.com>, <ashleymadisn.com>, <ashleymadisonn.com>, <ashleymadisoon.com>, <ashleymadson.com>, <ashleymaison.com>, <ashleymdison.com>, <ashleymmadison.com>, <ashleyymadison.com>, <ashlleymadison.com>, <asshleymadison.com>, and <shleymadison.com> domain names.

 

3.      Respondent registered and used the <aashleymadison.com>, <asheymadison.com>, <ashhleymadison.com>, <ashleemadison.com>, <ashleeymadison.com>, <ashlemadison.com>, <ashleyadison.com>, <ashleymaadison.com>, <ashleymadiison.com>, <ashleymadion.com>, <ashleymadisn.com>, <ashleymadisonn.com>, <ashleymadisoon.com>, <ashleymadson.com>, <ashleymaison.com>, <ashleymdison.com>, <ashleymmadison.com>, <ashleyymadison.com>, <ashlleymadison.com>, <asshleymadison.com>, and <shleymadison.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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, White & Case Limited c/o Domain Admin, registered the disputed domain names on October 14, 2003.  All of the disputed domain names resolve to similar websites that offer services that directly compete with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

All of the disputed domain names contain common misspellings of Complainant’s ASHLEY MADISON 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 disputed 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.

 

Rights or Legitimate Interests

 

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 “White & Case Limited c/o Domain Admin” as the registrant, which does not indicate that Respondent is commonly known by the disputed 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 Respondent’s disputed domain names resolve to similar websites that offer services that directly compete with Complainant.  The Panel finds that such a use by Respondent in this manner does not represent 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel finds that Respondent’s operation of a website virtually identical to Complainant’s website to offer competing travel reservation services does not fall within the parameters of 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 disputed domain names under Policy ¶ 4(a)(ii).  See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Since registering the disputed domain names on October 14, 2003, all of the disputed domain names have resolved to similar websites that offer services that directly compete with Complainant.  The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business.  The Panel further finds that such a disruption constitutes bad faith registration and use under Policy ¶ 4(b)(iii).  See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

The Panel finds that Respondent’s use of the confusingly similar disputed domain names creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain names.  The Panel finds that Respondent is commercially gaining from this likelihood of confusion by operating its competing business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).

 

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 Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <aashleymadison.com>, <asheymadison.com>, <ashhleymadison.com>, <ashleemadison.com>, <ashleeymadison.com>, <ashlemadison.com>, <ashleyadison.com>, <ashleymaadison.com>, <ashleymadiison.com>, <ashleymadion.com>, <ashleymadisn.com>, <ashleymadisonn.com>, <ashleymadisoon.com>, <ashleymadson.com>, <ashleymaison.com>, <ashleymdison.com>, <ashleymmadison.com>, <ashleyymadison.com>, <ashlleymadison.com>, <asshleymadison.com>, and <shleymadison.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 8, 2010

 

 

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