ADP, LLC v. MEDIA2K GROUP
Claim Number: FA1705001731067
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of c/o Venable LLP, California, USA. Respondent is MEDIA2K GROUP (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adpspayrollserve.com>, registered with eNom, LLC.
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 May 11, 2017; the Forum received payment on May 11, 2017.
On May 11, 2017, eNom, LLC confirmed by e-mail to the Forum that the <adpspayrollserve.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 May 15, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 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@adpspayrollserve.com. Also on May 15, 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 June 6, 2017, 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.
A. Complainant
Complainant is a provider of business outsourcing solutions. Complainant has registered the ADP mark with the United States Patent and Trademark Office in furtherance of its business. (Reg. No. 1,133,370, registered Apr. 15, 1980). Respondent’s <adpspayrollserve.com> is confusingly similar to Complainant’s ADP mark because it incorporates the mark in its entirety and merely adds an “s” and the phrase “payroll serve”, which references a service provided by Complainant, and a generic top-level domain (“gTLD") “.com”.
Respondent has no legitimate rights or interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its ADP mark. Respondent neither uses the disputed domain name for a bona fide offering of goods or services, nor a legitimate non-commercial fair use. Respondent is using the disputed domain name to resolve to a parking website displaying Complainant’s trademarks and a series of links that direct users to third party advertisers, including Complainant’s competitors.
Respondent has registered and is using the disputed domain name in bad faith. Respondent had actual knowledge of Complainant’s rights in the ADP mark at the time Respondent registered the disputed domain name. Respondent is using the disputed domain name to capitalize on the substantial goodwill associated with Complainant’s ADP marks by using the mark to divert users to a parking website from which Respondent presumably financially benefits. Respondent has failed to make any use of the disputed domain name and there is no indication that Respondent will use it for a legitimate purpose. Finally, Respondent used a privacy service to conceal its identity when registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <adpspayrollserve.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(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 asserts that it has established rights in the ADP mark via its registrations with the USPTO (e.g., Reg. No. 1,133,370, registered Apr. 15, 1980). Registration of a mark with the USPTO sufficiently establishes rights in that mark. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has established rights in the ADP mark.
Complainant argues that Respondent’s <adpspayrollserve.com> is confusingly similar to Complainant’s ADP mark because it incorporates the mark in its entirety and merely adds the letter “s” and the phrase “payroll serve”, which references a service provided by Complainant, and a generic top-level domain (“gTLD") “.com”. Adding an “s” has been deemed inconsequential to Policy ¶ 4(a)(i). See FCOA, LLC v. Domain Admin / Whois Privacy Corp., FA 1619791 (June 23, 2015) (holding the <foresmost.com> domain name confusingly similar to the FOREMOST mark, noting that the domain name “makes a trivial addition to the trademark in the form of addition of the letter, ‘s.’”).The addition of a term descriptive of Complainant’s business and a gTLD may also not be sufficient to distinguish the disputed domain name from Complainant’s mark. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”) Therefore, the Panel finds that Respondent’s domain name is confusingly similar to the ADP mark in which Complainant has established rights.
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 (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 asserts that Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use its ADP mark. Where a respondent fails to submit a response, the Panel looks to the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information on record lists “MEDIA2K GROUP” as the registrant name. Lack of evidence in the record showing that Complainant authorized Respondent to use the ADP mark can further support a finding that Respondent does not have rights or legitimate interests in the 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). Therefore, the Panel concludes that Respondent is not commonly known by the <adpspayrollserve.com> domain name.
Complainant argues that Respondent is using the disputed domain name to resolve to a parking website displaying Complainant’s trademarks and a series of links that direct users to third party advertisers, including Complainant’s competitors, and therefore is not using the disputed domain name for a bona fide offering of goods or services or legitimate non-commercial fair use. Using a disputed domain name to resolve to a parking website hosting links to third party advertisers and/or Complainant’s competitors’ websites is not a bona fide offering of goods or services or a legitimate non-commercial fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). It is apparent that the disputed domain name resolves to a parking website hosting links to websites advertising business outsourcing services which compete with Complainant’s business. Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use.
Complainant has proved this element.
Complainant argues that Respondent is using the disputed domain name to capitalize on the substantial goodwill associated with Complainant’s ADP marks by using the mark to divert users to a parking website from which Respondent presumably benefits financially. Using a disputed domain name to divert Internet users to a website containing links to Complainant’s competitors’ websites creates a presumption that Respondent is commercially benefiting from the diversion and therefore that Respondent has registered and is using the disputed domain name in bad faith. See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). The disputed domain name resolves to a website hosting links to websites offering business outsourcing services which directly compete with Complainant’s business. Therefore, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith.
Next, Complainant argues that Respondent had actual notice of Complainant’s rights in the ADP mark and therefore that Respondent has registered and is using the disputed domain name in bad faith. When a Respondent’s domain name is confusingly similar to a famous mark, and it appears that Respondent is attempting to capitalize on that fame, then the Panel may infer that Respondent has registered and is using the disputed domain name in bad faith. See eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith pursuant to Policy ¶ 4(b)(iv) where the respondent capitalized on the fame associated with the complainant’s EBAY mark and profited from it by diverting users seeking the complainant to the respondent’s website). Complainant attaches a declaration that Complainant has used the ADP mark in business from as early as 1977 and since then the ADP mark has come to be widely associated with Complainant’s high quality of services. Complainant also adduces evidence of its prominence on social media and the priority of Complainant’s website on google searches for “adp”, both of which support a finding that ADP is a well-known mark associated with Complainant’s services. Therefore, the Panel finds that the notoriety of the ADP mark allows it to infer that Respondent had actual knowledge of Complainant’s rights in the mark and finds that Respondent has registered and is using the disputed domain name in bad faith.
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <adpspayrollserve.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 9, 2017
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