ADP, LLC v. KIM H. SUK
Claim Number: FA1507001630837
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is KIM H. SUK (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adpuk.com>, registered with eNom, Inc..
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2015; the Forum received payment on July 27, 2015.
On July 28, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <adpuk.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 July 29, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@adpuk.com. Also on July 29, 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 August 20, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.
Complainant
Complainant operates as ADP, LLC, one of the world’s largest business outsourcing solutions. Complainant has rights in the ADP mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,133,370, registered on April 15, 1980). Respondent’s <adpuk.com> domain name is confusingly similar to the ADP mark because it contains the entire mark and is altered by only the additions of the geographic term “uk” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <adpuk.com> domain name. The available WHOIS information lists “Kim H. Suk” as Registrant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the <adpuk.com> domain name resolves to a parked page containing links to competitors of Complainant.
Respondent uses the <adpuk.com> domain name in bad faith because it offers the domain for general sale, it has failed to make an active use of the website, and because its hosting of competitive links is disruptive to Complainant’s business and done for the commercial gain of Respondent. Respondent registered the <adpuk.com> domain name in bad faith because it did so with actual and/or constructive knowledge of Complainant’s rights in the ADP mark.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <adpuk.com> domain name.
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 alleges it has rights in the ADP mark through its numerous registrations with the USPTO (e.g., Reg. No. 1,133,370, registered on April 15, 1980). Complainant states it also has international registrations of the ADP mark, which include registration in South Korea, where Respondent is located. Past panels have found that registration with the USPTO suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the ADP mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <adpuk.com> domain name is confusingly similar to the ADP mark because it contains the full mark and is altered by only the additions of the term “uk” and the gTLD “.com.” Past panels have found that the addition of “.com” is irrelevant to Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Complainant argues that the term “uk” is a geographic qualifier and that such terms do not sufficiently distinguish a domain name from a registered mark. Past panels have agreed with similar arguments. See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to the complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom). Therefore, the Panel finds that Respondent’s <adpuk.com> domain name is confusingly similar to Complainant’s ADP mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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 alleges that Respondent is not commonly known by the <adpuk.com> domain name. The available WHOIS information lists “Kim H. Suk” as Registrant, and Respondent has failed to provide any evidence to indicate that it is commonly known by the domain name. Past panels have found such a lack of evidence sufficient to show that a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). 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). The Panel therefore finds that Respondent is not commonly known by the <adpuk.com> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not using the <adpuk.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name resolves to a parked page containing links to competitors of Complainant. Complainant has provided a screenshot of the resolving webpage which includes links such as “Online Payroll Services” and “Payroll Outsourcing.” Past panels have found that such use suffices to show a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Therefore, the Panel finds that Respondent is not using the resolving website for a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and ¶4(c)(iii).
Complainant has proved this element.
Complainant alleges that Respondent is using the <adpuk.com> domain name in bad faith because it offers the domain for general sale. The WHOIS records displays the words “Buy This Domain.” Past panels have found general offers for sale as evidence to support a finding of bad faith use under Policy ¶ 4(b)(i). See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). The Panel finds such use here, and finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Complainant alleges that Respondent uses the <adpuk.com> domain name in bad faith because it resolves to a parked page hosting links competitive to Complainant’s business. Complainant provides a screenshot of the resolving webpage, which includes links such as “Online Payroll Services” and “Payroll Outsourcing.” Past panels have found that hosting links competitive to a complainant’s business constitutes disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds such use here, and finds that Respondent is using the <adpuk.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent uses the <adpuk.com> domain name in bad faith because it resolves to a parked page hosting links to competitors of Complainant and that this is done for commercial gain. Complainant argues that Respondent presumably receives referral fees by hosting these links. Past panels have found that hosting commercial links constitutes bad faith use pursuant to Policy ¶ 4(b)(iv) and that there is a reasonable inference that hosting competitive links is done in exchange for referral fees. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Maricopa Cmty. Coll. Dist. v. College.com, LLC, FA 536190 (Nat. Arb. Forum Sept. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to a competing website. Because Respondent’s domain name is identical to Complainant’s PHOENIX COLLEGE mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the <phoenixcollege.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds such behavior by Respondent here, and therefore finds that Respondent is using the <adpuk.com> domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant alleges that Respondent registered the <adpuk.com> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the ADP mark. Complainant argues that its ADP mark has a sufficient level of fame such that Respondent’s use of it must have been done with actual knowledge of Complainant’s rights. In the alternative, Complainant argues that its famous mark has provided Respondent with constructive knowledge. While past panels have found that constructive knowledge is not enough to establish bad faith registration, they have found that actual knowledge does suffice. See Meredith Corp. v. CityHome, Inc., D2000-0223 (WIPO May 18, 2000) (finding that the respondent’s constructive notice of the complainant’s registered mark was insufficient to support a finding of bad faith registration); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the ADP mark at the time of registration, and therefore finds find that Respondent registered the <adpuk.com> domain in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <adpuk.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: August 24, 2015
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