ADP, LLC. v. ZANDT WLADIMIR
Claim Number: FA1701001713745
Complainant is ADP, LLC. (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is ZANDT WLADIMIR
(“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adp-groupe.com>, registered with REGISTER.IT SPA.
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 23, 2017; the Complaint was submitted in both French and English. The Forum received payment on January 23, 2017.
On January 25, 2017, REGISTER.IT SPA confirmed by e-mail to the Forum that the <adp-groupe.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name. REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA 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 31, 2017, the Forum served the Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of February 21, 2017 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@adp-groupe.com. Also on January 31, 2017, 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 March 3, 2017, 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, ADP, LLC, is a worldwide provider of business outsourcing solutions. In connection with this business, Complainant uses its ADP mark to provide an expansive variety of products and services, including, but not limited to, educational services and training programs in numerous fields, research and analytical services, and information services for use in connection with its various businesses. Complainant has rights to the ADP mark based upon multiple registrations with the United States Patent and Trademark Office (“USPTO”) and other patent agencies throughout the world (e.g. Reg. No. 3,054,139, registered Jan. 31, 2006). Respondent’s <adp-groupe.com> is confusingly similar to Complainant’s ADP mark, as it contains the mark in its entirety, and merely differs through the addition of the generic term “groupe,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the <adp-groupe.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use the ADP mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. In fact, Respondent has not made any use of the domain name, and the resolving website merely indicates that the website has not yet been configured.
iii) Respondent has registered and used <adp-groupe.com> in bad faith. Respondent clearly had actual and constructive knowledge of Complainant and Complainant’s rights in the ADP mark when it registered and used the disputed domain name. Additionally, Respondent’s failure to make an active use of the disputed domain name is further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was created on March 14, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. 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."
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in French, thereby making the language of the proceedings in French. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(f), 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 (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 claims rights in the ADP mark based upon registration of the mark with the USPTO (e.g. Reg. No. 3,054,139, registered Jan. 31, 2006). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).The Panel therefore holds that Complainant’s registration of the ADP mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims Respondent’s <adp-groupe.com> is confusingly similar to Complainant’s ADP mark, as it contains the mark in its entirety, and merely differs through the addition of the generic term “groupe,” a hyphen, and the gTLD “.com.” Addition of a generic term and a gTLD to a mark in order to form a domain name is not enough to distinguish that domain name from the mark in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Additionally, hyphens are irrelevant for the purposes of Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel therefore finds the <adp-groupe.com> domain name to be confusingly similar to Complainant’s ADP mark pursuant to Policy ¶ 4(a)(i).
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 (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 (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 argues that Respondent has no rights or legitimate interests in <adp-groupe.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant licensed or otherwise permitted Respondent to use any of its trademarks or apply for or use a domain name incorporating the ADP mark. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “ZANDT WLADMIR.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <adp-groupe.com> does not resolve to an active website, and instead the resolving website indicates that the site has not yet been configured. Inactive holding of a disputed domain name is not a use indicative of rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Panel therefore finds that Respondent has failed to use the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncomemrcial or fair use, and thus lacks rights and legitimate interests in the name.
Complainant does not argue any of the factors of bad faith under Policy ¶ 4(b). However, past panels have held that the factors in Policy ¶ 4(b) are non-exclusive, and that bad faith can be determined from a “totality of the circumstances” under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Accordingly, the Panel may look to arguments beyond Policy ¶ 4(b) for evidence of bad faith.
Complainant also contends that in light of the fame and notoriety of Complainant's ADP mark, it is inconceivable that Respondent could have registered the <adp-groupe.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel infers due to the fame and notoriety of Complainant's mark that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant also contends that Respondent’s failure to make an active use of <adp-groupe.com> is further evidence of its bad faith registration and use. Inactive holding of a disputed domain name can indicate bad faith per Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (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 recalls that the disputed domain name does not resolve to an active website. The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.) The particular circumstances of this case that the Panel has considered are:
i) Complainant is one of the world’s largest providers of business outsourcing solutions, and provides its services to 650,000 clients in over 110 countries worldwide. Moreover, over 80 percent of FORTUNE 500® companies and more than 90 FORTUNE 100 companies utilize one or more of Complainant's services, making Complainant one of the world’s largest providers of business outsourcing solutions. Complainant's mark has been extensively featured in numerous articles in both trade and general publications, including throughout the United States and on Complainant's various websites, and Complainant's mark is prominently featured in literature and advertising materials by Complainant's numerous business units. Complainant has recently generated approximately $11 billion in annual revenue through providing Complainant’s ADP brand services. From July 2015 to June 2016 alone, ADP spent over $30 million in marketing and advertising its ADP Marks worldwide. As such, the fame and notoriety of complainant's mark are recognized, and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
The Panel therefore finds that Respondent’s inactive holding of the disputed domain to indicate bad faith registration and use pursuant top 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 <adp-groupe.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 9, 2017
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