ADP, LLC. v. yangzhichao
Claim Number: FA1707001739178
Complainant is ADP, LLC. (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, U.S.A. Respondent is yangzhichao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <worforcenowadp.com>, registered with 22net, Inc..
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 July 10, 2017; the Forum received payment on July 10, 2017.
On July 10, 2017, 22net, Inc. confirmed by e-mail to the Forum that the <worforcenowadp.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, 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 July 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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@worforcenowadp.com. Also on July 13, 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 August 4, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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 and Complainant has registered the ADP WORKFORCE NOW mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,938,761, registered Mar. 29, 2011) in furtherance of its business. Respondent’s <worforcenowadp.com> is confusingly similar to Complainant’s ADP WORKFORCE NOW mark because the domain name incorporates that mark in its entirety and merely misspells “workforce”, transposes “workforce now” and “adp”, and adds a generic top-level domain (gTLD), “.com.”
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 ADP WORKFORCE NOW mark. Respondent is not using the disputed domain name for a bona fide offering of goods or services. Instead, Respondent, by misspelling “workforce”, is engaging in typosquatting in the hope that Internet users will accidentally misspell workforce and be redirected to Respondent’s parked website. Furthermore, the parked website displays Complainant’s marks and a series of links that direct users to third-party advertisers, including Complainant’s competitors.
Respondent registered, and is using, the disputed domain name in bad faith. First, Respondent had actual knowledge of Complainant’s rights in the ADP WORKFORCE NOW mark, which can be inferred from the notoriety of the mark. Second, Respondent’s bad faith is demonstrated by its use of the disputed domain name to capitalize on the substantial goodwill associated with Complainant’s ADP WORKFORCE NOW mark. Respondent presumably derives click-through fees from diverting Internet users to its parked website. Finally, Respondent used a privacy service to conceal its identity, which should corroborate any finding of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: Required Language of Complaint
The Registration Agreement is written in Chinese. Complainant has argued that because the disputed domain name <worforcenowadp.com> is based on English terms which suggests the Respondent has command of the English language, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. The Panel agrees with Complainant and finds the proceeding should be conducted in English.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <worforcenowadp.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 WORKFORCE NOW mark via its registration with the USPTO (Reg. No. 3,938,761, registered Mar. 29, 2011). 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).”). The Panel finds that Complainant has established rights in the ADP WORKFORCE NOW mark.
Complainant argues that Respondent’s <worforcenowadp.com> is confusingly similar to Complainant’s ADP WORKFORCE NOW mark because the domain name incorporates that mark in its entirety and merely mispells “workforce”, transposes “workforce now” and “adp”, and adds a gTLD, “.com.” Transposing words in a mark cannot distinguish a domain name from that mark. See Hourglass Angel, LLC v. Pham Dinh Nhut, FA 1556334 (Forum June 12, 2014) (finding that the transposition of the words "hourglass" and "angel" in the domain name <angelhourglass.com> failed to distinguish the domain from Complainant’s HOURGLASS ANGEL mark under Policy ¶ 4(a)(i).). A misspelling of a mark likewise cannot distinguish a domain name from that mark. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Finally, the inclusion of gTLD is irrelevant for the purposes of the similarity analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ADP WORKFORCE NOW mark.
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 WORKFORCE NOW mark. 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 on record lists “yangzhichao” as the registrant name. Lack of evidence in the record showing that Complainant authorized Respondent to use the ADP WORKFORCE NOW 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 <worforcenowadp.com> domain name.
Complainant alleges that Respondent is typosquatting, by misspelling the ADP WORKFORCE NOW mark, in order to redirect unsuspecting Internet users to Respondent’s website, which hosts links to Complainant’s competitors. Using a domain name to host links of competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). Furthermore, typosquatting in and of itself precludes Respondent from claiming a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”). Respondent’s disputed domain name resolves to a parked webpage hosting links to payroll services in direct competition with Complainant. Furthermore, because the disputed domain name differs from the mark by a simple misspelling of “workforce” and a transposition of “workforcenow” and “adp”, the Panel concludes that Respondent is using typosquatting as a strategy to lure unsuspecting Internet users to its parked page. 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 noncommercial or fair use.
Complainant has proved this element.
Complainant argues that Respondent is using the disputed domain name to attract Internet users for the purpose of receiving click through fees from its third-party advertising links. Using a domain name to resolve to a parking page, from which Respondent presumably derives referral fees, is evidence of bad faith. See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Respondent’s disputed domain name resolves to a parked webpage hosting links to payroll services in direct competition with Complainant. Therefore, the Panel finds that Respondent registered, and is using, the disputed domain name in bad faith.
In analyzing bad faith, the Panel may also look beyond the enumerated parameters of Policy ¶ 4(b) to the totality of the circumstances surrounding a particular dispute. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). In this proceeding, Complainant insists that Respondent had actual knowledge of Complainant’s rights due to the widespread notoriety of the ADP WORKFORCE NOW mark. A panel may infer actual knowledge from either the notoriety of a mark or a respondent’s use of the disputed domain name to operate within the same industry as a complainant. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel is convinced of the notoriety of the ADP WORKFORCE NOW mark by Complainant’s use of that mark in connection with its website, which states that as many as ten million employees receive paystubs from its services. The Panel also finds that the position of the ADP WORKFORCE NOW mark as the first result of a google search for “workforce now adp” is persuasive as to the notoriety of the mark. Furthermore, the Panel notes that Respondent uses the disputed domain name to host links in competition to Complainant’s services. Therefore, the Panel infers Respondent’s actual knowledge of Complainant’s rights and finds that Respondent registered 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 <worforcenowadp.com> domain name be TRANSFERRED from Respondent to Complainant .
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: August 11, 2017
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