ADP, LLC v. DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation
Claim Number: FA1708001744730
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM Domain Admin / Whois Foundation (“Respondent”), represented by William A. Delgado of WILLENKEN WILSON LOH & DELGADO LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myaccessadp.com>, registered with NameKing.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.
Eduardo Magalhães Machado as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2017; the Forum received payment on August 15, 2017.
On August 16, 2017, NameKing.com Inc. confirmed by e-mail to the Forum that the <myaccessadp.com> domain name(s) is/are registered with NameKing.com Inc. and that Respondent is the current registrant of the names. NameKing.com Inc. has verified that Respondent is bound by the NameKing.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 August 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@myaccessadp.com. Also on August 17, 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.
A timely Response was received and determined to be complete on September 1, 2017.
On September 06, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eduardo Magalhães Machado 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has continuously used the famous and distinctive ADP mark since at least 1977 and owns the ADP and ADP ACCESS trademarks through its registrations with the United States Patents and Trademark Office (“USPTO”) (e.g. Reg. No. 3,054,139 registered Jan, 31, 2006 and Reg. No 3,768,501 registered Mar, 30,2010), establishing its rights in the marks. Complainant uses the ADP and ADP ACCESS marks in connection with 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. Respondent’s <myaccessadp.com> (registered on August 23, 2014) is confusingly similar to the ADP and ADP ACCESS marks. The disputed domain name incorporates in its entirety Complainant’s mark and is virtually identical to the ADP Access Mark, adds the generic term “my” and adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Disputed domain name is also confusingly similar to Complainant’s subdomain names <myaccess.adp.com> and <my.adp.com>
Respondent has no right or legitimate interests in the disputed domain name. There is no evidence to show that Respondent has ever been known by or operated a business under the name “MYACCESSADP” nor does Respondent have any trademark rights in that name. Respondent is not commonly known by the disputed domain name nor by Complainant’s MY ACCESSADO mark, as evidenced by the WHOIS information for the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or business names and has not permitted Respondent to apply for or use any domain name incorporating its trademarks. Further, Respondent is not using the disputed domain name in conjunction with a bona fide offering of goods or services or with a legitimate non commercial or fair use of the domain name. Instead, Respondent’s use of the domain name is merely taking advantage of the fame of Complainant’s mark and Complainant’s subdomain. Respondent also features pay-per-click commercial links and advertising.
Respondent registered and used <myaccessadp.com> in bad faith. Respondent registered the disputed domain name with knowledge of another party’s rights in trademark and/or service marks incorporated into that domain. Prior panels have found that Complainant’s ADP Marks are famous and well-known, and that use of Complainant’s trademarks constitutes bad faith registration. Further, Respondent had constructive and actual knowledge of Complainant’s rights when registering the disputed domain name. Constructive notice of Complainant’s rights and Respondent’s subsequent registration and use of a confusingly similar domain name creates a legal presumption of bad faith pursuant to the Policy ¶ 4(a)(iii). Taken together, it is highly likely that Respondent was aware, or should have been aware, of the ADP Marks prior to registering the disputed domain name. Moreover, the fact that Respondent selected, registered and used the <myaccessadp.com> domain name in bad faith and for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s marks. Lastly, the use of a privacy service to conceal its identity, together with the lack of any indication that Respondent intends to use the disputed domain name for a legitimate purpose, indicates registration in bad faith.
B. Respondent
Respondent is a foreign company who owns a portfolio of generic and descriptive domain names which is acquired through lawful and fair methods. According to Respondent, it has a well-known dispute resolution policy whereby it invites putative complainants to contact it regarding domain names that complainants believe violate a trademark.
Respondent has contacted Complainant to offer a voluntary transfer of the disputed domain name, but has not received any response.
Respondent does not contest any of Complainant’s allegations regarding the <myaccessadp.com> domain name. Rather, Respondent has agreed to transfer the disputed domain name <myaccessadp.com to Complainant, without admitting fault or liability and without responding substantively to the allegations raised by Complainant.
Complainant, ADP LLC is one of the world’s largest providers of business outsourcing solutions and provides its services to 650,000 clients over 110 countries worldwide. Moreover, over 80% of Fortune 500 companies and more than 90% of Fortune 100 companies utilize one or more of ADP’s services, making ADP one of the world’s largest providers of business outsourcing solutions. Complainant’s ADP Marks are used in commerce since at least as early as 1977 to identify its services and to distinguish Complainant’s services from those offered by competitors.
The ADP and ADP ACCESS trademarks have been extensively featured articles in both trade and general publications.
Complainant has used the mark ADP ACCESS since at least as early as 2008 and Respondent has registered the disputed domain name on August 23, 2014.
Complainant is also the owner of the domain names <adp.com>, <myaccess.adp.com> and <my.adp.com>.
PRELIMINARY ISSUE
Respondent does not contest any of Complainant’s allegations regarding the disputed domain name. Rather, in Respondent’s communication dated September 1, 2017, Respondent has agreed to transfer the disputed domain name to Complainant. However, although this Panel recognizes that in some cases where a respondent has consented to the transfer of the disputed domain name a panel may decide to forego the traditional UDRP analysis, based on the evidence of record, the Panel choses to decide the case on merits. See Sassybax, L.L.C. v. Texas International Property Associates, WIPO Case No. D2007-1190 (panel chose to decide case on merits despite respondent's consent to transfer). Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211.
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.
Under paragraph 4(a)(i) of the Policy, Complainant is required to establish that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
The Panel finds that Complainant has in ADP and ADP ACCESS trademarks for purposes of Policy ¶ 4(a)(i) and concludes the disputed domain name is clearly confusingly similar to Complainant’s mark.
As a matter of fact, the disputed domain name reproduces Complainant’s mark in full, with the mere addition of the generic term “my” and the generic Top-Level Domain “.com”, which are not sufficient to avoid confusion. Moreover, the elimination of spaces in marks is irrelevant for a confusingly similar analysis.
Thus, the Panel finds that paragraph 4(a)(i) has been satisfied.
Based on the evidence submitted, the Panel verifies that Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the disputed domain name nor by Complainant’s ADP and ADP ACCESS.
Moreover, Respondent has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. The Panel therefore concludes that Respondent is not commonly known by the disputed domain name under Policy Paragraph 4(a)(ii);
Further, Respondent's use of Complainant's trademarks in the disputed domain name to resolve to a parking page with pay-per-click links does not amount to a legitimate noncommercial or fair use, nor a bona fide offering of goods or services..
The Panel therefore concludes that Complainant’s contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name under Policy ¶ 4(a)(ii).
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the holder’s website or location.
Considering the wide recognition of Complainant’s ADP and ADP ACCESS trademarks as well as all evidence presented by Complainant, it is clear that Respondent was aware of Complainant’s trademark when it chose the disputed domain name.
As a matter of fact, when the disputed domain name was registered by Respondent, the trademarks ADP and ADP ACCESS were already registered and widely used in connection to Complainant's activities.
Thus, the Panel finds that Respondent has intentionally registered the disputed domain name with the sole objective of making a connection with Complainant’s trademarks.
In addition, Respondent's use of the disputed domain name in connection with a parking page displaying pay-per-click links further supports a finding of bad faith in the present case. The Panel notes that previous panels have found that using a confusingly similar domain name to display links to a complainant’s competitors from which a respondent is presumed to receive click-through revenue demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, the Panel concludes that Respondent’s use of privacy services are further indications of bad faith in the present case.
In view of the above, the Panel concludes that by using the disputed domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website, by creating a likelihood of confusion with Complainant's mark.
Therefore, based on the evidence of record, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myaccessadp.com> domain name be TRANSFERRED from Respondent to Complainant.
Eduardo Magalhães Machado, Panelist
Dated: September 20, 2017
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