national arbitration forum

 

DECISION

 

Avid Dating Life, Inc. v. Cyber Domain Services Pvt.Ltd. a/k/a PRIVATE WHOIS FOR ASLEYMADISON.COM c/o Privacy Protection

Claim Number: FA1002001309521

 

PARTIES

Complainant is Avid Dating Life, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Cyber Domain Services Pvt.Ltd. a/k/a PRIVATE WHOIS FOR ASLEYMADISON.COM c/o Privacy Protection (“Respondent”), IND.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain name at issue are <asleymadison.com> and <theashleymadison.com>, registered with Lead Networks Domains Pvt. Ltd., Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 24, 2010.

 

On March 3, 2010, Lead Networks Domains Pvt. Ltd., Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <asleymadison.com> and <theashleymadison.com> domain names are registered with Lead Networks Domains Pvt. Ltd., Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names.  Lead Networks Domains Pvt. Ltd., Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd., Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com 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 March 16, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 5, 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@asleymadison.com and postmaster@theashleymadison.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <asleymadison.com> and <theashleymadison.com> domain names are confusingly similar to Complainant’s ASHLEY MADISON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <asleymadison.com> and <theashleymadison.com> domain names.

 

3.      Respondent registered and used the <asleymadison.com> and <theashleymadison.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Avid Dating Life, Inc., has registered its ASHLEY MADISON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 78,187,090 issued February 1, 2004; filed November 2, 2002). Complainant uses the mark in connection with online dating services.

 

Respondent, Cyber Domain Services Pvt.Ltd. a/k/a PRIVATE WHOIS FOR ASLEYMADISON.COM c/o Privacy Protection, registered the disputed domain name April 30, 2004. The <asleymadison.com> disputed domain name redirects the Internet user to the <theashleymadison.com> disputed domain name. The <theashleymadison.com> disputed domain name resolves to a web directory of third party websites that include competitors of 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.

 

Preliminary Issue: Multiple Respondents

 

In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same entity, which is operating under several aliases.  Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” 

 

Complainant contends that while the WHOIS information provides two registrant names, one entity, “Cyber Domain Services Pvt. Ltd.,” owns the alias “Lead Networks Domains Pvt. Ltd.”  The <asleymadison.com> disputed domain name automatically redirects to the <theashleymadison.com> disputed domain name, leading Complainant to infer that both contacts in the WHOIS information are one and the same Respondent.

 

The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.

 

Identical and/or Confusingly Similar

 

Complainant asserts it has rights in its ASHLEY MADISON mark due to its registration with the USPTO (Reg. No. 78,187,090 issued February 1, 2004; filed November 2, 2002). The Panel finds that Complainant’s registration of its ASHLEY MADISON mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).  

 

Complainant asserts that the disputed domain names are confusingly similar to its ASHLEY MADISON mark.  Respondent’s <asleymadison.com> and <theashleymadison.com> domain names removes the “h” of Complainant’s mark in one and adds the preposition “the” in the other, and adds to both the generic top-level domain “.com.”  The Panel finds that the disputed domain names are confusingly similar to Complainant’s mark, pursuant to Policy ¶ 4(a)(i).  See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”).

 

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has no rights or legitimate interests in the <asleymadison.com> and <theashleymadison.com> domain names. Once Complainant has made a prima facie case in support of this, the burden to establish that Respondent has rights or legitimate interests in the disputed domain name shifts to the Respondent, pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has established a prima facie case, shifting the burden to the Respondent. Due to Respondent’s failure to respond to the proceedings, the Panel will analyze the record in light of Policy ¶ 4(c).  See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”). 

 

The WHOIS information for the <asleymadison.com> domain name lists “PRIVATE WHOIS FOR ASLEYMADISON.COM c/o Privacy Protection” as the registrant, which indicates that Respondent appears to be but is not commonly known by the disputed domain name. The WHOIS information for the <theashleymadison.com> domain name lists “Cyber Domain Services Pvt.Ltd.” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name.  Complainant asserts no license or other authorization has been given to Respondent to use the ASHLEY MADISON mark. Furthermore, Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also 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).

 

Complainant asserts that Respondent’s use of the <asleymadison.com> disputed domain name redirects the Internet user to the <theashleymadison.com> disputed domain name. Further, that Respondent’s use of the second, <theashleymadison.com>, domain name resolves to a web directory with links to third-party websites, to include competitors of Complainant.  The Panel finds that Respondent’s use of the <asleymadison.com> and <theashleymadison.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 Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant asserts that the <asleymadison.com> domain name is an intentional misspelling of the ASHLEY MADISON mark. Complainant further asserts that Respondent is capitalizing on this misspelling to misdirect Internet users seeking Complainant’s services.  The Panel finds that this constitutes the practice of typosquatting, which is evidence that Respondent lacks rights and legitimate interests in the <asleymadison.com> domain name under Policy ¶ 4(a)(ii).  See Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant); see also 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).”).

 

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

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent’s use of the <asleymadison.com> disputed domain name redirects the Internet user to the <theashleymadison.com> disputed domain name. Further, that Respondent’s use of the <theashleymadison.com> domain name resolves to a web directory with links to third-party websites, to include competitors of Complainant.  The Panel finds Respondent’s registration and use of the <asleymadison.com> and <theashleymadison.com> domain names to operate a web directory with links to third-party websites that compete with the Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See 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).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).

 

Complainant asserts that Internet users, searching for Complainant’s services, will be confused as to Complainant’s sponsorship or affiliation with the disputed domain names when each eventually lead to a web directory with links to third-party competitors of Complainant.  Further, Internet users may become confused as to Complainant’s sponsorship or affiliation with the <asleymadison.com> and <theashleymadison.com> domain names and resolving websites due to the Complainant’s mark displayed on the resolving site.  Respondent attempts to profit from this confusion through its presumed receipt of click-through fees by linking to third-party websites.  Therefore, the Panel finds Respondent’s use of the <asleymadison.com> and <theashleymadison.com> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).

 

The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the <asleymadison.com> domain name.  The Panel finds that this practice is stand alone evidence of bad faith registration and use with respect to the <asleymadison.com> domain name pursuant to 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 Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).

 

The Panel finds 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 <asleymadison.com> and <theashleymadison.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

John J. Upchurch, Panelist

Dated:  April 20, 2010

 

 

 

 

 

National Arbitration Forum


 

 

 

 

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