WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Avid Dating Life Inc. v. Naofumi Tamura

Case No. D2014-1912

1. The Parties

The Complainant is Avid Dating Life Inc. of Toronto, Ontario, Canada, represented by SafeNames Ltd. of United Kingdom of Great Britain and Northern Ireland.

The Respondent is Naofumi Tamura of Honide Araoshi, Kumamoto, Japan.

2. The Domain Name and Registrar

The disputed domain name <ashley-madison-jpn.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2014. On October 30, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On November 3, 2014, the Center transmitted an email in both English and Japanese to the parties regarding the language of the proceeding. On November 6, 2014, the Complainant confirmed with the Center that it requests English be the language of the proceeding. On November 6, 2014, the Center received an email from the Respondent in English, indicating that it does not understand English. It stated that it had used Google translate to draft that email.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in both English and Japanese, and the proceeding commenced on November 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2014.

On November 14, 2014, the Center received the suspension request from the Complainant by email and the proceeding was subsequently suspended on the same day. On November 28, 2014, the Complainant submitted its request to reinstitute the proceeding due to a failure to reach the settlement with the Respondent. The proceeding was re-commenced on December 1, 2014.

The Respondent did not submit any formal Response. Accordingly, on December 22, 2014, the Center notified the Respondent that it would proceed to the appointment.

The Center appointed Douglas Clark as the sole panelist in this matter on January 5, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is Canadian based Internet company that operates a website at the domain name <ashleymadison.com> that provides services for married individuals to meet other individuals for adulterous relationships. The Complainant is the registered proprietor of the trademark ASHLEY MADISON in various countries around the world.

The disputed domain name <ashley-madision-jpn.com> was registered on May 23, 2014.

The website to which the disputed domain name resolved to, until the Complainant sent a cease and desist letter, was a page stating in Japanese that it was the "Official HP" of Ashley Madison. HP is an abbreviation used in Japanese for "homepage". The website featured the front page of the Complainant's official website "www.ashleymadision.com" in English and links to what appear to be a number of blog entries about extramarital affairs. One link stated it provided details of how to register with Ashley Madison without using a credit card and appeared to be an advertisement for Visa Debit cards. The Complainant stated that the website contained links to third party websites but did not exhibit any of these links to the Complaint.

The disputed domain name now resolves to an error page in Japanese.

5. Parties' Contentions

A. Complainant

The Complainant contends that the disputed domain name <ashley-madison-jpn.com> is confusingly similar to its registered trademark ASHLEY MADISON. It is made up of the Complainant's trademark ASHLEY MADISON to which the geographical indicator "jpn" has been added.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name. The Complainant contends that the Respondent has no commercial relationship with the Complainant and the Respondent is not a licensee of the Complainant.

The Complainant contended that the website to which the disputed domain name was resolving appeared to be a blog site of some kind which also contained links to third party websites. The Complainant contended that while it was not clear how the Respondent was deriving revenue, it must have been doing so in some way.

B. Respondent

The Respondent did not formally reply to the Complainant's contentions.

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement is Japanese. Paragraph 11(a) of the Rules provides that:

"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding".

The Complainant requested the language of the proceeding to be English on the grounds that: a) the Cease and Desist letter sent by the Complainant to the Respondent was drafted in English and the Respondent clearly understood the contents conveyed in the letter as it changed use of the website followed receipt of the same; b) English is a compulsory language in Japanese schools and therefore the Respondent is likely to have a general understanding of the English language; c) the Complainant does not even have a basic understanding of Japanese and d) to translate the Complaint will cause unnecessary costs and delays.

The Respondent stated that it did not understand English well and "interaction in English only, I refuse".

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Japanese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceeding lies with this Panel.

The Respondent did respond to the Complainant in English. However, its responses were very short and specifically stated that the Respondent could not communicate at a high level in English. The Respondent did, however, show an ability to understand the nature of the Complaint made by the Complainant. The Respondent also did not request the language of the proceeding be Japanese; the Respondent only requested that the proceeding not be in English only.

The Respondent clearly understands the nature of this proceeding. The Panel also notes that the Center notified the Respondent of the Complaint in both English and Japanese. Further, as set out below, this Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.

These factors lead the Panel to determine to follow the Center's preliminary determination. If the Respondent had filed a Response in Japanese, this would have been accepted. As the only pleading before the Panel is in English, the Panel will render its decision in English.

Substantive Issues

A. Identical or Confusingly Similar

The Complainant has demonstrated it has trademark rights in ASHLEY MADISON.

The disputed domain name <ashley-madison-jpn.com> is composed of the Complainant's registered trademark ASHLEY MADISON and the addition a geographic indicator "jpn". The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark.

The first element of the UDRP is made out.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") provides:

"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP."

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The second element of the UDRP is made out.

C. Registered and Used in Bad Faith

The Panel also finds that the disputed domain name <ashley-madison-jpn.com> was registered in bad faith and is being used in bad faith.

This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

The use of the page under the disputed domain name to claim to be an official homepage has clearly been done to attract visitors to the site for commercial gain. The advertisement of the Visa Debit cards at the least must have been creating some revenue for the Respondent.

The third element of the UDRP is made out.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <ashley-madison-jpn.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: January 9, 2015