ADP, LLC v. Dennis Shifrin / Streamline
Claim Number: FA1705001732114
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of c/o Venable LLP, California, USA. Respondent is Dennis Shifrin / Streamline (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <streamlinehrs.com>, registered with Register.com, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 17, 2017; the Forum received payment on May 17, 2017.
On May 17, 2017, Register.com, Inc. confirmed by e-mail to the Forum that the <streamlinehrs.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 May 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 7, 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@streamlinehrs.com. Also on May 18, 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 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it 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. Since at least as early as 2005, Complainant has continuously and pervasively used its well-known ADP STREAMLINE and STREAMLINE trademarks in connection with a broad range of services, including, but not limited to, software in the field of human resources and payroll. Complainant filed its application for the trademark STREAMLINE in the United States on November 25, 2014, alleging first use in commerce on October 31, 2005; the trademark was registered on July 21, 2015. The mark is also registered in other countries around the world. Complainant’s STREAMLINE marks have also been extensively featured in numerous articles in both trade and general publications, including throughout the United States and on Complainant’s various websites, and are prominently featured in literature and advertising materials by Complainant’s numerous business units.
According to Complainant, the disputed domain name is confusingly similar to Complainant’s STREAMLINE mark because it incorporates the mark in its entirety and merely adds the letters “hrs”, which are obviously intended to refer to Complainant’s human resource services, and a generic top-level domain, (“gTLD”), “.com”.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is neither commonly known by the disputed domain name nor has Complainant authorized Respondent to use its STREAMLINE mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. Complainant provides evidence to the effect that the disputed domain name resolves to a web site containing the following:
Streamline Human Resource Services
New Site Coming Soon
Streamline HRS is currently being remodeled. Check back soon.
According to Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent had either actual or constructive knowledge of Complainant’s rights in the STREAMLINE mark. Respondent registered the disputed domain name nearly ten years after Complainant’s STREAMLINE mark was used in commerce. Respondent was notified that its domain name was infringing on Complainant’s right but intentionally disregarded the warning. Finally, Respondent’s use of a privacy service to conceal its identity further supports a finding of bad faith registration and use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the registered trademark STREAMLINE with rights dating back to at least November 2014.
The disputed domain name was registered in January 2015.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a web site purporting to offer services that would compete with those of Complainant.
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.”).
The disputed domain name is confusingly similar to Complainant’s STREAMLINE mark because it incorporates the mark in its entirety and merely adds the descriptive term “hrs” and appends the gTLD “.com”. The appendage of a descriptive term and a gTLD are not sufficiently distinguishing to negate confusing similarity. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Here, Respondent has included the letters “hrs” which is most likely an abbreviation for “human resource services” which describes Complainant’s business. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Complainant claims it has not licensed or otherwise authorized Respondent to use its STREAMLINE mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. 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). Where a respondent fails to submit a response, the Panel may look 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 of record lists “DENNIS SHIFRIN” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the disputed domain name because the resolving webpage purporting to offer services that would compete with those of Complainant. Panels have held that using another’s mark to resolve to a website displaying commercial links, particularly links in competition with a Complainant’s business, is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum August 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant). The Panel finds that Respondent is not using the disputed domain name within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
The disputed domain name was registered in January 2015, after Complainant established its trademark rights in November 2014 by filing its trademark application: the relevant date for Complainant’s mark is the filing date, see Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA 1591638 (Forum Jan. 16, 2015) (finding Complainant has rights in the LENOVO mark dating back to the February 20, 2003 filing date with the USPTO as the trademark application was ultimately successful); see also Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed web page to resolve to a web page that purports to offer services that would compete with those of Complainant. Panels have found bad faith under Policy ¶ 4(b)(iii) where a respondent used a confusingly similar domain name to resolve to a website displaying links that compete with a complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds rthat such use establishes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds that Respondent has used the disputed domain name in bad faith per Policy ¶ 4(b)(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 <streamlinehrs.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 13, 2017
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