DECISION

 

Ruby Life Inc. v. Erwin Heard / Cut Rite Lawn Care

Claim Number: FA1911001869480

 

PARTIES

Complainant is Ruby Life Inc. (“Complainant”), represented by Yinka Babarinde of Safenames Limited, United Kingdom.  Respondent is Erwin Heard / Cut Rite Lawn Care (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ashleymadisonn.us>, registered with NameCheap, Inc..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 1, 2019; the Forum received payment on November 1, 2019.

 

On November 1, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <ashleymadisonn.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”)..

 

On November 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ashleymadisonn.us.  Also on November 5, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Ruby Life Inc., is the operator of multiple online dating services. Complainant has the rights in the ASHLEY MADISON mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,812,950, registered Feb. 10, 2004). See Compl. Annex 8. Respondent’s <ashleymadisonn.us> domain name is confusingly similar to Complainant’s mark because the domain name wholly incorporates Complainant’s mark, merely adding the additional letter “n” and the country code top-level domain (ccTLD) “.us.”

2.    Respondent has no rights or legitimate interests in the <ashleymadisonn.us> domain name. Respondent is not licensed or authorized to use Complainant’s ASHLEY MADISON mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent fails to make an active use of the disputed domain name.

3.    Respondent registered or uses the <ashleymadisonn.us> domain in bad faith. Respondent has shown a pattern of bad faith registration. In addition, Respondent fails to make an active use of the disputed domain name. Further, Respondent failed to respond to Complainant’s cease and desist letter. See Compl. Annex 15.  Respondent has engaged in typosquatting by adding a letter “n” for the letter in the ASHLEY MADISON mark. Finally, Respondent had actual knowledge of Complainant’s ASHLEY MADISON mark when it registered the <ashleymadisonn.us> domain name.

 

B.  Respondent

1.    Respondent did not submit a response.

 

FINDINGS

1.    Respondent’s <ashleymadisonn.us> domain name is confusingly similar to Complainant’s ASHLEY MADISION mark.

2.    Respondent does not have any rights or legitimate interests in the <ashleymadisonn.us> domain name.

3.    Respondent registered or used the <ashleymadisonn.us> domain name in bad faith.

 

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."

 

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.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the ASHLEY MADISON mark based upon its registration with the USPTO. Registration with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). Complainant provides copies of its USPTO registrations for the ASHLEY MADISON mark (e.g., Reg. No. 2,812,950, registered October 2, 2004). See Compl. Annex 8. Thus, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <ashleymadisonn.us> domain name is confusingly similar to Complainant’s mark because the domain name wholly incorporates Complainant’s ASHLEY MADISON mark, merely adding an additional letter and a ccTLD to the mark. Addition of single letters and a ccTLD to a mark does not negate confusing similarity between a disputed domain name and a mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum Dec. 11, 2006) (holding that “it is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis” when determining confusing similarity). Complainant argues Respondent merely adds the letter “n”, and a “.us” ccTLD to Complainant’s ASHLEY MADISON mark. Therefore, this Panel agrees that Respondent’s registration of <ashleymadisonn.us> domain name fails to overcome the notion that it is confusingly similar to the ASHLEY MADISON mark.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

The Panel further agrees that there is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, this Panel concludes that Respondent has failed Policy ¶ 4(c)(i).

 

Respondent has no rights or legitimate interests in the <ashleymadisonn.us> domain name as Respondent is not licensed or authorized to use Complainant’s ASHLEY MADISON mark and is not commonly known by the disputed domain name. WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of evidence indicating that a respondent has been authorized to use a complainant’s mark supports a finding that the respondent has no rights or legitimate interests in the disputed domain name. See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”). The WHOIS information of record identifies the registrant as “Erwin Heard.” See Compl. Annex 1. Further, there is no information on the record indicting that Respondent was authorized to use the ASHLEY MADISON mark. Therefore, the Panel finds that Respondent has not been known by the disputed domain name under Policy ¶ 4(c)(iii).

 

Complainant also asserts that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use since the disputed domain name does not resolve to an active webpage. Failure to make an active use of a domain name does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). Complainant provides screenshots of the <ashleymadisonn.us> domain name resolving to a webpage that is inactive. See Compl. Annex 12. Thus, the Panel finds that Respondent did not use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered or uses the <ashleymadisonn.us> domain in bad faith. Specifically, Complainant argues that Respondent has shown a pattern of bad faith registration through a multitude of domain name registrations using famous third-party trademark. Registration of multiple domains containing famous marks can be a showing of bad faith under Policy ¶ 4(b)(ii). See F Bid Industrial Holdings (Proprietary) Limited v. ZhangPeng / Zhang Peng, FA 1743105 (Forum Sep. 15, 2017) (finding that the complainant’s submission of WHOIS evidence that listed the respondent as the registrant of other domain names incorporating third-party trademarks was sufficient to establish that the respondent had a pattern of registering and using domain names in bad faith pursuant to Policy ¶ 4(b)(ii)). Here, Complainant provides a list of Respondent’s current domain name portfolio which contain several famous third-party trademarks. See Compl. Annex 16. The Panel agrees that Respondent has shown a pattern of bad faith registration, and finds registration in bad faith under Policy ¶ 4(b)(ii).

 

Further, Complainant argues that Respondent’s domain name fails to resolve to an active webpage. Failure to make an active use of a disputed domain name may constitute a finding of bad faith under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”). As previously noted, Complainant provides evidence that the <ashleymadisonn.us> domain name does not resolves to an inactive webpage. See Compl. Annex 12. Therefore, the Panel finds use of the domain name in bad faith under Policy ¶ 4(a)(iii).

 

Next, Complainant argues that Respondent has engaged in typosquatting with an intent to mislead consumers in bad faith. Misspelling of a complainant’s mark in order to commercially benefit from a confusing similarity between a disputed domain name and the mark can evince bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant asserts Respondent merely adds the letter “n” at the end of the ASHLEY MADISON mark.  The Panel agrees that addition of this letter constitutes typosquatting, and finds bad faith registration or use under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent registered the <ashleymadisonn.us> domain name with actual knowledge of Complainant’s rights in the ASHLEY MADISON mark. Registering a domain name with knowledge of another’s rights therein may be indicative of bad faith under Policy ¶4(a)(iii). See Norgren GmbH v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1501001599884 (Forum Feb. 25, 2014) (holding that the respondent had actual knowledge of the complainant and its rights in the mark, thus demonstrating bad faith registration under Policy ¶ 4(a)(iii), where the respondent was using the disputed domain name to purposely host links related to the complainant’s field of operation); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Here, Complainant argues that Respondent’s knowledge of Complainant’s mark prior to registering <ashleymadisonn.us> is apparent from the notoriety of Complainant’s trademark and from Respondent’s intent to mislead users by intentionally misspelling Complainant’s mark. Therefore, the Panel finds that Respondent registered the <ashleymadisonn.us> domain name with actual knowledge of Complainant’s ASHLEY MADISON mark, thus demonstrating bad faith per Policy ¶4(a)(iii).

 

DECISION

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

 

Accordingly, it is Ordered that the <ashleymadisonn.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  December 13, 2019