ADP, LLC v. Niche Domain Proxy Manager / Domains By Proxy - NA Proxy Account
Claim Number: FA1508001632087
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is Niche Domain Proxy Manager / Domains By Proxy - NA Proxy Account (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwadpselect.com>, registered with DomainSite, Inc.
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.
Kenneth L. Port 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, DomainSite, Inc. confirmed by e-mail to the Forum that the <wwwadpselect.com> domain name is registered with DomainSite, Inc. and that Respondent is the current registrant of the name. DomainSite, Inc. has verified that Respondent is bound by the DomainSite, 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 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@wwwadpselect.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 Kenneth L. Port 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 has registered the ADP trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,054,139, registered Jan. 31, 2006). Complainant also asserts unregistered common law rights in the ADP SELECT trademark dating back to October 3, 2004. The mark is used on or in connection with an expansive variety of products and services, including, but not limited to worldwide integrated computing solutions; human resources, payroll, talent management, tax and benefits administration solutions; providing assistance to customers to aid with regulatory and legislative compliance; educational services and training programs in numerous fields; research and analytical services; information services for use in connection with its various businesses; and integrated securities transaction processing and inventor communications services for the financial services industry. The <wwwadpselect.com> domain name is confusingly similar to both the ADP and ADP SELECT trademarks because the domain name contains both marks in their entirety and differs only by the addition of the prefix “www” and the generic top-level domain (“gTLD”) “.com.”
Complainant alleges that Respondent has no rights or legitimate interests. Respondent is not commonly known as the disputed domain names, nor is Respondent a licensee of Complainant. Further, the domain names resolve to a webpage displaying links to Complainant’s competitors.
Complainant also alleges that Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent is disrupting Complainant’s business by displaying competing hyperlinks on the resolving webpage. Respondent is attempting to commercially benefit from a likelihood of confusion. Lastly, due to the fame of Complainant’s mark, Respondent had actual notice of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name <wwwadpselect.com> was registered on July 8, 2007.
As the Respondent has failed to file a Response in this matter, the Panel shall make its determination based on the undisputed and reasonable allegations of the Complainant. Accordingly, the Panel finds that the disputed domain name and the Complainant’s registered mark are confusingly similar, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed 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.”).
The disputed domain name is confusingly similar to Complainant’s registered trademark. Complainant has registered the ADP trademark with the USPTO (e.g., Reg. No. 3,054,139, registered Jan. 31, 2006). The mark is used in connection with an expansive variety of products and services as indicated above. This registration is sufficient evidence to support rights in a trademark for purposes of these proceedings.
Complainant also asserts unregistered common law rights in the ADP SELECT trademark dating back to October 3, 2004. To acquire common law rights in a trademark, a complainant must establish that the mark has acquired secondary meaning. Relevant evidence of secondary meaning includes “length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.” See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011). Here, Complainant has provided ample evidence of secondary meaning as to the ADP trademark, but no evidence relating specifically to the ADP SELECT trademark. Complainant contends that it spends a great amount of time, effort, and money advertising its services under the ADP mark, and that these efforts have resulted in billions of dollars in revenue. Complainant also notes that its services under the ADP mark are marketed on various social media websites. See Compl., at Attached Ex. F.
As Complainant has failed to provide evidence of its rights in or to ADP SELECT, the Panel finds that it has no rights in or to that trademark. This is not a fatal flaw to Complaint’s Complaint, however.
Complainant argues that the <wwwadpselect.com> domain name is confusingly similar to both the ADP and ADP SELECT trademarks. As the Panel has determined that the Complainant has no demonstrative rights in or to the trademark ADP SELECT, the Panel shall focus its analysis on the ADP registered trademark.
The disputed domain name and Complainant’s registered mark differ on in that the disputed domain name adds the gTLD .com and the generic word “select” to the existing registered trademark and “www” as a prefix. As a general rule, the gTLD “.com” can never distinguish a domain name from the mark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have established a confusing similarity where the respondent has attached the “www” prefix to a domain name that contains the entire mark at issue. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name <wwwbankofamerica.com> is confusingly similar to the complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”). In addition, the addition of the generic word “select” does nothing to distinguish the disputed domain name from the registered trademark.
Accordingly, the Panel finds that the addition of “www” is inconsequential in distinguishing the disputed domain name from the registered trademark. As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered trademark per Policy ¶ 4(a)(i).
Complainant asserts that Respondent is not commonly known by the <wwwadpselect.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the ADP trademark in domain names. “Niche Domain Proxy Manager” is listed as the registrant of record for the disputed domain name. The record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See 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 argues that Respondent’s use of the <wwwadpselect.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that the domain names resolve to a webpage displaying hyperlinks to Complainant’s competitors. The disputed domain name resolves to a webpage containing links that read, among other things, “ADP Background Check,” “ADP,” “Payroll Companies,” and “ADP Payroll Service.” See Compl., at Attached Ex. K. Prior panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) or (iii) where the domain name resolves to a webpage displaying links to the complainant’s competitors. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to 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).”).
Accordingly, the Respondent lacks any rights or legitimate interests in or to the disputed domain name made cognizable under Policy ¶¶ 4(c)(i) or (iii).
The Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant believes that use of the domain name to display competing hyperlinks is most disruptive. The disputed domain name resolves to a webpage with messages reading, among other things, “ADP Background Check,” “ADP,” “Payroll Companies,” and “ADP Payroll Service.” See Compl., at Attached Ex. K. Bad faith exists under Policy ¶ 4(b)(iii) where the domain name resolves to a webpage displaying links to the complainant’s competitors. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Therefore, when the disputed domain names resolves to a webpage with competing hyperlinks, bad faith exists under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the domain name resolves to a webpage containing links to various third-party websites that sell the same or similar services to those sold under the ADP trademark (competing hyperlinks). Further, Complainant argues that Respondent must be profiting from this behavior in some manner. The disputed domain name resolves to a webpage containing links that read, among other things, “ADP Background Check,” “ADP,” “Payroll Companies,” and “ADP Payroll Service.” See Compl., at Attached Ex. K. Bad faith under Policy ¶ 4(b)(iv) exits where the disputed domain name resolves to a webpage with competing hyperlinks. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Accordingly, the Panel finds that the disputed domain name resolves to a webpage with competing hyperlinks and Respondent must be profiting therefrom. As such, it has engaged in bad faith use and registration under Policy ¶ 4(b)(iv).
Finally, Complainant also contends that in light of the fame and notoriety of its ADP trademark, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the marks. Given the totality of the circumstances, the Panel agrees that it is very unlikely that the Respondent proceeded to register the disputed domain name completely ignorant of Complainants rights in and to the registered trademark.
As such, the Panel finds that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <wwwadpselect.com> domain name be transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: September 12, 2015
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