Ceridian Corporation v. Private Whois Service
Claim Number: FA1101001369862
Complainant is Ceridian Corporation (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Minnesota, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cerdian.com>, registered with Internet.BS Corp.
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 January 27, 2011; the National Arbitration Forum received payment on January 28, 2011.
On February 1, 2011, Internet.BS Corp. confirmed by e-mail to the National Arbitration Forum that the <cerdian.com> domain name is registered with Internet.BS Corp. and that Respondent is the current registrant of the name. Internet.BS Corp. has verified that Respondent is bound by the Internet.BS Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2011 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@cerdian.com. Also on February 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2011, 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" 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cerdian.com> domain name is confusingly similar to Complainant’s CERIDIAN mark.
2. Respondent does not have any rights or legitimate interests in the <cerdian.com> domain name.
3. Respondent registered and used the <cerdian.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Ceridian Corporation, is a business services company and a global, single-source provider of solutions covering the full range of human resource administration and management. Complainant also provides payroll processing and gift card and corporate spending products and services. Complainant owns trademark registrations for the CERIDIAN mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,868,786 issued December 20, 1994 and
Reg. No. 2,890,133 issued September 28, 2004.
Respondent, Private Whois Service, registered the <cerdian.com> domain name on August 24, 2000. The disputed domain name resolves to the <paysafe.net> domain name, which is a search portal, claiming to be “for resources and information on payroll and human resources,” that redirects Internet users to competitors of Complainant through sponsored pay-per-click links.
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.
Complainant owns trademark registrations for the CERIDIAN mark with the USPTO:
Reg. No. 1,868,786 issued December 20, 1994 and
Reg. No. 2,890,133 issued September 28, 2004.
The Panel finds that registering its mark with the USPTO demonstrates that Complainant has rights in the CERIDIAN mark for the purposes of Policy ¶ 4(a)(i), even though Respondent’s residence and/or business operations are outside the U.S. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant argues that Respondent’s <cerdian.com> domain name is confusingly similar to Complainant’s CERIDIAN mark as the only differences are the removal of the letter “i” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that misspelling Complainant’s mark by simply removing a single letters fails to alleviate confusing similarity under Policy ¶ 4(a)(i). See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel also finds that the addition of the gTLD is irrelevant to the Policy ¶ 4(a)(i) analysis. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel accordingly finds that Respondent’s <cerdian.com> domain name is confusingly similar to Complainant’s CERIDIAN mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In alleging that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires Complainant to put forth a prima facie case against Respondent before the burden to show rights and legitimate interests transfers to Respondent. Complainant has met this burden in this proceeding, but Respondent, in defaulting, has not presented any evidence showing rights and legitimate interests. The Panel accordingly infers that Respondent does not possess rights and legitimate interests and that Complainant’s allegations may be taken as true. See Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will nevertheless consider the evidence in record in light of the Policy ¶ 4(c) factors, however.
Complainant contends that Respondent is not a licensee of Complainant. The WHOIS information for the <cerdian.com> domain name does not reflect any association between Respondent and the disputed domain name. The Panel accordingly concludes that Respondent is not commonly known by the <cerdian.com> domain name and consequently lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant asserts that Respondent’s <cerdian.com> domain name redirects to the <paysafe.net> domain name, which features a variety of pay-per-click links that redirect Internet users to third-party websites offering goods and services in competition with Complainant. The Panel holds that misappropriating Complainant’s mark in the disputed domain name in order to profit from a pay-per-click link directory is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); 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)).
Complainant alleges that Respondent’s <cerdian.com> domain name differs from Complainant’s mark by only one letter, which is an effort to capitalize on a common typographical error made by Internet users. The Panel finds that this practice is typosquatting and is evidence that Respondent lacks rights and legitimate interests in the <cerdian.com> domain name according to 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 LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent’s <cerdian.com> domain name redirects Internet users to a directory website advertising topical links to various other websites that offer products and services competing with Complainant. These links relating to other business’ goods disrupt Complainant’s business because the unwary Internet user may arrive at Respondent’s directory page and be directed away from Complainant, despite an initial intent to visit Complainant’s web page. The Panel finds that Respondent’s use of the disputed domain name to divert Complainant’s intending customers reveals 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 Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that Respondent’s use of a confusingly similar variation of Complainant’s CERIDIAN mark in the <cerdian.com> domain name is intended to attract Complainant’s customers attempting to reach Complainant’s web page. After arriving at Respondent’s website, the Internet users are converted into profit for Respondent by way of “click-through” fees if they click on any of the displayed links. The Panel finds that Respondent’s efforts to mislead and attract Complainant’s customers to Respondent’s own web page for commercial gain demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”); see also 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).
The Panel has previously concluded that Respondent is engaged in the practice of typosquatting through the use of the confusingly similar disputed domain name. The Panel finds this practice of typosquatting is evidence in itself 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 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.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cerdian.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 8, 2011
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