Ceridian Corporation v. Italy Domains / Domain Admin
Claim Number: FA1012001365128
Complainant is Ceridian Corporation (“Complainant”), represented by Jodi A. DeSchane of Faegre & Benson LLP, Minnesota, USA. Respondent is Italy Domains / Domain Admin (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ceridiancobra.com>, registered with Internet.bs Corp.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2010; the National Arbitration Forum received payment on December 27, 2010.
On December 27, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <ceridiancobra.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 January 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 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@ceridiancobra.com. Also on January 4, 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 January 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 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 <ceridiancobra.com> domain name is confusingly similar to Complainant’s CERIDIAN mark.
2. Respondent does not have any rights or legitimate interests in the <ceridiancobra.com> domain name.
3. Respondent registered and used the <ceridiancobra.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 single-source provider of solutions covering a full range of human resource administration and management. Complainant currently services approximately 130,000 customers worldwide. Complainant owns two 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, Italy Domains / Domain Admin, registered the <ceridiancobra.com> domain name on January 31, 2008. The disputed domain name resolves to a search portal and pop-up advertisements with sponsored listings for third parties offering COBRA insurance coverage, Medicare plans, and healthcare plans.
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 two 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 these USPTO trademark registrations are conclusive evidence of Complainant’s rights in the CERIDIAN mark according to Policy ¶ 4(a)(i), despite that Respondent lives in a country outside where the mark is registered. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that Respondent’s <ceridiancobra.com> domain name is confusingly similar to Complainant’s CERIDIAN mark because Respondent combines Complainant’s mark with the descriptive term “cobra,” the acronym for the federal law relating to continuing group health insurance benefits, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the presence of a term descriptive of services offered by Complainant nor a gTLD dispels confusing similarity. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark). Thus, the Panel finds that Respondent’s <ceridiancobra.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 order to satisfy the requirements of Policy ¶ 4(a)(ii), Complainant must put forth a prima facie case against Respondent. In the instant proceeding, the Panel finds that Complainant has met this burden, thereby transferring the burden to show rights and legitimate interests to Respondent. In defaulting, however, Respondent has not carried its burden or presented any evidence showing rights and legitimate interests. The Panel accordingly finds that Respondent does not possess rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”). In the interest of fairness, however, the Panel elects to consider the evidence in light of the Policy ¶ 4(c) factors.
Complainant asserts that Respondent has no trademark or intellectual property rights in the <ceridiancobra.com> domain name. Complainant also argues that Respondent is not and has never been a licensee of Complainant. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the disputed domain and does not have rights and legitimate interests in the disputed domain name pursuant to 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).
Complainant contends that Respondent’s <ceridiancobra.com> domain name resolves to a generic directory page featuring links to third parties who provide goods and services that compete with Complainant. Examples include “AARP Health Insurance Plans,” “AARP Medicare Supplement,” “Medicare Health Plans,” etc. The Panel finds that using the disputed domain name to host a pay-per-click link directory is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that the pay-per-click links displayed on Respondent’s resolving website at the <ceridiancobra.com> domain name compete with Complainant as they advertise services such as “Medicare Health Plans,” “Individual Health Plans,” and “CIGNA Medicare Rx Plans.” Complainant argues that Respondent’s use of its mark in connection with advertising links to competitors disrupts its business and therefore shows Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). The Panel agrees. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); 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 populates the website resolving from its <ceridiancobra.com> domain name with pay-per-click links. Complainant asserts that Respondent uses Complainant’s CERIDIAN mark in the disputed domain name in order to attract Internet users and create a likelihood of confusion as to the source or affiliation of Respondent’s website. The Panel finds that Respondent likely profits from this scheme as a result of the pay-per-click fees generated, which indicates bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <ceridiancobra.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: February 4, 2011
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