ADP, LLC v. kawano kazuhiro / SAKURA Internet Inc.
Claim Number: FA1501001602227
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is kawano kazuhiro / SAKURA Internet Inc. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <a-d-p.info>, registered with Melbourne IT Ltd.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 28, 2015; the Forum received payment on January 28, 2015.
On January 30, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <a-d-p.info> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 19, 2015 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@a-d-p.info. Also on January 30, 2015, 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 February 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 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 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
i) Complainant is one of the world’s largest providers of business outsourcing solutions, and provides its services to more than 610,000 clients in more than 100 countries worldwide. Consistent with this widespread usage of the ADP marks to identify Complainant and its products and services, Complainant has engaged in extensive advertising and marketing to promote the ADP marks. Prior panels have recognized the strength of the ADP marks, and the renown of Complainant’s brand.
ii) Complainant uses ADP to identify its business outsourcing solutions. For example, the mark is used in connection with a full suite of human resource, payroll, tax, and benefits administration services. Complainant has registered the ADP mark with numerous trademark authorities worldwide, including the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,054,139, registered Jan. 31, 2006). The <a-d-p.info> domain name is confusingly similar to the ADP mark. The disputed domain name incorporates the mark in full, hyphenating the individual letters of the mark, and adding the generic top-level domain (“gTLD”) “.info.” The additions of hyphens to the ADP mark and the affixation of the “.info” gTLD do not mitigate the confusing similarity.
iii) Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the “A-D-P” name, nor have any trademark rights in the name. Further, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. After the disputed domain name was created, Respondent used it to redirect users to Afilias’ website, a domain name registry. Shortly thereafter, Respondent removed the redirection, and the domain name became inactive.
iv) Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent registered the disputed domain name with at least constructive knowledge of Complainant’s rights in the ADP mark, which constitutes bad faith. Further, Respondent’s failure to make an active use of the disputed domain name demonstrates Respondent’s bad faith. Respondent has ignored Complainant’s attempts to resolve the matters amicably and without recourse to these administrative proceedings. Respondent’s intentional disregard represents additional evidence of ad faith registration and use of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent submitted a brief e-mail to the Forum in Japanese, but has not submitted a formal Response for the Panel’s consideration in English, the language of the registration agreement. The disputed domain name was registered January 30, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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.
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.”).
Complainant uses ADP to identify its business outsourcing solutions. For example, the mark is used in connection with a full suite of human resource, payroll, tax, and benefits administration services. Complainant has registered the ADP mark with numerous trademark authorities worldwide, including the USPTO (e.g., Reg. No. 3,054,139, registered Jan. 31, 2006), and claims such registrations demonstrate its rights in the mark for purposes of Policy ¶ 4(a)(i). The Panel agrees that Complainant’s trademark registrations for ADP with the likes of the USPTO sufficiently demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant claims the <a-d-p.info> domain name is confusingly similar to the ADP mark. Complainant urges the disputed domain name incorporates the mark in full, hyphenating the individual letters of the mark, and adding the gTLD “.info.” Complainant argues these alterations fail to distinguish the resulting domain name from the mark. Prior panels have found that the addition of hyphens and a gTLD fails to negate the inherent confusing similarity of an otherwise incorporated mark. See, e.g., Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel finds the <a-d-p.info> domain name is confusingly similar to the ADP mark under Policy ¶ 4(a)(i) despite the insertion of hyphens and the affixation of a gTLD.
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges there is no evidence that Respondent is commonly known by the “A-D-P” name, nor does Respondent have any trademark rights in the name. The Panel notes the WHOIS record lists “kawano kazuhiro / SAKURA Internet Inc.” is listed as the registrant of record. As there is no evidence in the record linking Respondent’s personal or business name with the terms of the disputed domain name, the Panel agrees that a finding in favor of Respondent per Policy ¶ 4(c)(ii) is unwarranted. See 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).
Further demonstrating Respondent’s lack of rights, Complainant argues Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Complainant explains that after the disputed domain name was created, Respondent used it to redirect users to Afilias’ website, a domain name registry. Shortly thereafter, Respondent removed the redirection, and the domain name became inactive. See Compl., at Attached Ex. K. The Panel determines that Respondent’s inactive holding of the <a-d-p.info> domain name suggests Respondent is without any rights or legitimate interests in the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for 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)).
In asserting Respondent’s bad faith, Complainant argues that Respondent’s failure to make an active use of the disputed domain name demonstrates Respondent’s bad faith. See Compl., at Attached Ex. K. Prior panels have found evidence of bad faith pursuant to Policy ¶ 4(a)(iii) where the respondent fails to make an active use the disputed domain name. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
The Panel notes that in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003 case (WIPO, February 18, 2000), the panel concluded that the respondent’s passive holding of the domain name satisfied the requirement of paragraph 4(a)(iii) that the domain name was being used in bad faith by the respondent because: (1) the complainant’s trademark had a strong reputation and was widely known; (2) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name; (3) the respondent had taken active steps to conceal its true identity, by operating under a name that is not a registered business name and; (4) the respondent had actively provided, and failed to correct, false contact details, in breach of its registration agreement.
The Panel observes that (1) the Complainant’s trademark has a strong reputation and was widely known; (2) the Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name; (3) Respondent never replied to the Complainant’s cease-and-desist letter; and (4) the Respondent did not submit a Response to the Complaint. Therefore, the Panel holds that, similarly to the Telstra Corporation Limited v. Nuclear Marshmallows case above, reproducing the famous trademark ADP mark in the disputed domain name in order to attract Internet users to an inactive website is considered as being a use in bad faith, and thus agrees that Respondent’s behavior is indicative of Policy ¶ 4(a)(iii) bad faith.
Further, Complainant argues that Respondent registered the disputed domain name with at least constructive knowledge of Complainant’s rights in the ADP mark, which constitutes bad faith. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel infers that the Respondent was aware of the existence of Complainant’s trademark at the time of registration of the disputed domain name in light of the reputation of Complainant’s ADP trademark, and the Respondent’s reproduction of the trademark in its entirety. Therefore, the Panel holds that the Respondent registered the disputed domain name in bad faith which falls under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <a-d-p.info> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 6, 2015
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