ADP, LLC v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1508001632026
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adpeease.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2015; the Forum received payment on August 5, 2015.
On August 6, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <adpeease.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@adpeease.com. Also on August 7, 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 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the ADP trademark in the marketing of a variety of products and services, including integrated computing solutions, human resources, payroll, talent management, taxation and benefits administration, and research and analytical services.
Complainant holds a registration for the ADP mark, on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,054,139, registered January 31, 2006).
Respondent registered the domain name <adpeease.com> on October 21, 2006.
The domain name is confusingly similar to Complainant’s ADP trademark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise permitted Respondent to use its ADP mark in a domain name.
The domain name resolves to a webpage displaying click-through hyperlinks to the websites of Complainant’s commercial competitors.
Respondent’s use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent is offering the domain name for sale to the public.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent is attempting to benefit commercially from a likelihood of confusion it causes among Internet users.
Respondent knew of Complainant and its rights in the ADP trademark when it registered the domain name.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 proceeding on the basis of Complainant's undisputed representations pursuant to ¶¶ 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to ¶ 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the ADP trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
This is true without regard to whether Complainant’s rights in its mark arise from its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here St. Vincent and the Grenadines). See State Farm Mutual Automobile Insurance Company v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1579014 (Nat. Arb. Forum Oct. 8, 2014) (finding that it is irrelevant under Policy ¶ 4(a)(i) whether a UDRP complainant has registered its mark in the country where a respondent resides).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <adpeease.com> domain name is confusingly similar to Complainant’s ADP trademark. The domain name contains the entire trademark, merely adding the letter “e,” the generic term “ease,” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” to the mark of another in creating a domain name is insufficient to differentiate the domain name from the mark).
See also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding the domain name <eebay.com> confusingly similar to a UDRP complainant’s EBAY trademark).
Further see Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to a UDRP Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).
Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
Respondent has not been commonly known by the <adpeease.com> domain name, and that Complainant has not licensed or otherwise permitted Respondent to use its ADP mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin/ Private Registrations Aktien Gesellschaft,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <adpeease.com> domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that the domain name resolves to a parked webpage displaying hyperlinks to the websites of Complainant’s commercial competitors, and that Respondent seeks to profit commercially from this employment of the domain name, presumably from the receipt of click-through or similar fees for each visit by Internet users to the featured links. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to permit Respondent to demonstrate that it has rights to or legitimate interest in the contested domain name under either of those provisions of the Policy. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name … currently resolves to a website displaying Complainant’s marks and contains links to [the websites of] Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <adpeease.com> domain name, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the website resolving from a contested domain name to divert Internet users to the websites of a UDRP complainant’s commercial competitors constituted evidence of bad faith registration and use under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent uses the contested <adpeease.com> domain name, which is confusingly similar to Complainant’s ADP trademark, in an effort to profit from confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this too stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … 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.’
Finally, under this head of the Policy, it is evident that Respondent knew of Complainant and of its rights in the ADP trademark when Respondent registered the <adpeease.com> domain name, which is further proof of Respondent’s bad faith in registering the domain name. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of” a UDRP complainant's mark at the time of its registration of a confusingly similar domain name).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <adpeease.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 8, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page