ADP, LLC v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1508001632077
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. 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 <adptotalpay.com> ('the Domain Name') , registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2015; the Forum received payment on August 5, 2015.
On August 7, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <adptotalpay.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 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 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@adptotalpay.com. Also on August 10, 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 September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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
Complainant's submissions can be summarised as follows:
The Complainant is one of the world's largest providers of business outsourcing solutions. It provides its services to 625,000 clients in more than 100 countries worldwide. Since as early as 1977 ADP has continuously used its ADP mark in connection with products and services relating to computing, human resources, payroll, tax and benefits administration solutions and assisting customers with regulatory and legislative compliance. As a result the public has come to associate the ADP mark with the high quality services the Complainant offers. Complainant launched its web site adp.com in 1991. In 2013 alone ADP spent over $US 26 million in advertising and marketing to promote the ADP marks. It has recently generated over US$ 10 billion in annual revenue through the provision of its services.
Complainant owns a large number of registrations in the United States and across the world for ADP the word mark or including that mark for its services. It also has a US trade mark registration for TOTAL PAY in class 35.
The Domain Name is identical or confusingly similar to the Complainant’s ADP or TOTAL PAY marks which were established in trade well prior to the registration of the Domain Name in 2006 and predate it by use by more than thirty years in the case of ADP (Eight years in the case of TOTAL PAY). The Domain Name does not resolve to an active web site, but rather to a parked web site displaying a series of advertising links directing users to third parties including the Complainant's competitors.
Respondent is not affiliated with Complainant and has not been granted any permission by Complainant to use the well known ADP or TOTAL PAY marks. Respondent has never been known by or operated a business under the name ADP Total Pay, nor does Respondent have any trade mark rights in that name. Respondent has not used the Domain Name in conjunction with a bona fide offering of goods or services or with a legitimate non-commercial or fair use as it resolves to a web site displaying a series of links that direct users to third party advertisers, many of which are the Complainant's competitors.Such competitive use does not constitute a bona fide offering of goods and services. Respondent does not have rights or legitimate interests in the Domain Name.
Respondent likely knew or should have known of Complainant’s rights in its famous ADP and TOTAL PaY marks when Respondent registered the Domain Name. The Registration was primarily for the purpose of disrupting the Complainant's business and to intentionally attract Internet Users to Respondent's web site for commercial gain by creating a likelihood of confusion with Complainant's ADP and TOTAL PAY marks. Bad faith exists where a respondent registers a domain with knowledge of another party's rights in trade marks and/or service marks incorporated into that domain.
Respondent's offering of the domain name for sale on the page attached to it and the WhoIS search related to the Domain name clearly establishes bad faith.
Respondent's use of the web site accessible via the domain name to display the ADP marks and a series of links that direct users to third party advertisers many of which are Complainant's competitors also evidences bad faith.
Respondent's failure to make any use of the Domain Name and lack of any indication that it will use the domain for a legitimate purpose demonstrates Respondent’s bad faith registration and use of the Domain Name. .
Respondent's use of a privacy service to conceal his or her identity together with the lack of any indication that it will use the Domain Name for a legitimate purpose are also indications that the Domain Name was registered and is being used in bad faith.
The Respondent ignored Complainant’s attempts to resolve matters amicably and this intentional disregard represents additional evidence of bad faith registration and use of the Domain Name .
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a large number of registrations in the United States and across the world for ADP the word mark or including that mark for its services which it has used in commerce since at least 1977. It also has a US trade mark registration for TOTAL PAY in class 35 which it has used in commerce since at least 1994.
The Domain Name was registered in 2006 and has been used to display a series of links that direct users to third party advertisers including competitors of the Complainant. Material associated with the Domain Name shows it is being offered for sale.
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.”).
The Respondent does not appear to have any trade marks associated with the names ADP or TOTAL PAY. There is no evidence that he is commonly known by either or both of these names and he does not have any consent from the Complainant to use its marks. He does not appear to have used the Domain Name for any bona fide offering of services.
Currently, the web site attached to the Domain Name points to pay per click links including those leading to sites offering competing services to the Complainant and the Domain Name has been offered for sale.
The Respondent does not explain why he has registered a domain name consisting of the Complainant's trade marks. Given the contents of the site attached to the Domain Name as described above the Panelist infers the Respondent's intentions were to capitalise on the Complainant's goodwill in its trade mark. See United Servs Auto. Assn v Savchenko, FA 1105728 (Nat. Arb. Forum Dec 12, 2007) finding that displaying links to Complainant's competitors on a web site attached to the domain name was not a bona fide offering of goods and services pursuant to Policy 4 (c) (i) nor a legitimate non-commercial or fair use pursuant to Policy 4 (c) (iii). See also Disney Enters, Inc v Kamble FA 918556 (Nat Arb Forum Mar 27 2007) (holding that the operation of a pay per click web site at a confusingly similar domain name was not a bona fide offering of goods and services under Policy 4 (c) (i), nor a non commercial or fair use under Policy 4 (c)(iii).
Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name.
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [the Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i)) and
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.” (s4(b)(iv)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adptotalpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<September 18, 2015>>
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