ADP, LLC v. Pham Dinh Nhut
Claim Number: FA1507001631011
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwportaladp.com>, registered with April Sea Information Technology Company Limited.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically July 28, 2015; the Forum received payment July 28, 2015. The Complaint was received in both Vietnamese and English.
On August 3, 2015, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <wwwportaladp.com> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the name. April Sea Information Technology Company Limited verified that Respondent is bound by the April Sea Information Technology Company Limited registration agreement and 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 11, 2015, the Forum served the Vietnamese Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of August 31, 2015, 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@wwwportaladp.com. Also on August 11, 2015, the Vietnamese 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 September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant Makes the Following Allegations in this Proceeding:
Complainant uses the ADP mark in connection with its business as a leading provider of business outsourcing solutions and human resource services. Complainant has rights in the ADP mark through extensive registration of the mark with trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,133,370, registered April 15, 1980). Respondent’s disputed <wwwportaladp.com> is identical or confusingly similar to Complainant’s ADP mark. Respondent’s mere addition of the prefix “www” and the generic term “portal” do not distinguish the domain from Complainant’s ADP mark.
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent has not been commonly known by the disputed domain name based on WHOIS information, which lists Respondent as “Pham Dinh Nhut.” Second, Respondent’s use of the disputed <wwwportaladp.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The <wwwportaladp.com> domain name resolves to a website displaying click-through links to third-party websites, many of which direct users to Complainant’s competitors.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s confusingly similar domain resolves to a website hosting commercial links to competitors, thereby disrupting Complainant’s business. Further, Respondent exploits the similarity between the <wwwportaladp.com> domain name and Complainant’s ADP mark to confuse and attract Internet users for commercial gain. Finally, based on the fame of Complainant’s marks and the use made of the domain name, Respondent shows actual knowledge of Complainant’s rights in the ADP mark.
Respondent Makes the Following Allegations in this Proceeding:
Respondent did not submit a Response in this proceeding.
Language of the Proceeding:
The Panel notes that the Registration Agreement is written in Vietnamese, thereby making the language of the proceedings Vietnamese. However, the Panel notes after review of the applicable rules on language of the proceedings under the UDRP:
Pursuant to Rule 11(a), the Panel determines that the language requirement was satisfied through the Vietnamese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant established rights and legitimate interests in the mark contained within the disputed domain name; Respondent has shown no rights to or legitimate interests in the mark or the domain name.
Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark.
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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (Nat. Arb. 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.”).
Identical or Confusingly Similar:
Complainant contends that its rights in the ADP mark are firmly established through registration of the mark with multiple trademark agencies including the USPTO (e.g., Reg. No. 1,133,370, registered April 15, 1980). See Compl., at Annex H. Panels consistently find that a complainant’s registration of a mark with the USPTO is sufficient to demonstrate rights in the mark, even where a complainant and respondent operate or reside in separate countries. See State Farm Mutual Automobile Insurance Company v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1579014 (Nat. Arb. Forum Oct. 8, 2014) (finding that although Respondent resides in Australia, it is irrelevant under Policy ¶ 4(a)(i) as Complainant need not register its mark in the country where Respondent resides). The Panel finds that Respondent has no rights in the ADP mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s disputed <wwwportaladp.com> domain name is identical or confusingly similar to the ADP mark in which Complainant claims to have rights. Respondent’s domain name differs from Complainant’s ADP mark through the addition of the letters “www,” the generic term “portal,” and the generic top-level domain (“gTLD”) “.com.” Panels have held that addition of the prefix “www” does not distinguish a domain from the mark that follows. See Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (“…Respondent’s <www-amazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark, as the domain name merely adds the prefix “www-” to Complainant’s AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”); Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding the respondent's <wwwdana.com> domain name confusingly similar to the complainant's registered DANA mark because the complainant's mark remains the dominant feature). Panels have similarly held that addition of generic words does not defeat a claim of confusing similarity. See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) (finding that the addition of the generic word “Net” to the complainant’s ICQ mark, makes the <neticq.com> domain name confusingly similar to the complainant’s mark). Finally, panels have regularly found that addition of a gTLD is not relevant when analyzing confusing similarity. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Accordingly, the Panel finds that the distinguishing features of Respondent’s <wwwportaladp.com> domain name are not sufficient to differentiate the domain from Complainant’s ADP mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered the disputed domain name, which is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 claims that Respondent is not commonly known by the disputed domain name. To support this contention, Complainant points to WHOIS information, which lists the registrant of the disputed domain name as “Pham Dinh Nhut.” In addition, no information in the record indicates that Respondent has been commonly known by the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence to the contrary. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name, to resolve to a website hosting click-through links, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Indeed, Respondent’s disputed domain name resolves to a website displaying several click-through links, including links titled “Payroll Services” and “Online Payroll.” See Compl., at Attached Appendix K. Panels have found that a disputed domain name resolving to a website hosting links that compete with a complainant is not a bona fide offer of goods and services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel therefore finds that Respondent’s use of the <wwwportaladp.com> does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent registered and is using the disputed <wwwportaladp.com> domain name in bad faith. Complainant argues that Respondent disrupts Complainant’s business through resolving to a website, which hosts links that compete with Complainant’s business. See Compl., at Attached Appendix K. Panels have decided a respondent’s registration and use is in bad faith where the respondent’s domain name resolved to a website hosting competing links. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”) This Panel therefore finds that Respondent disrupted and competed with Complainant’s business in bad faith under Policy ¶ 4(b)(iii).
Complainant similarly contends that Respondent uses the confusing similarity between the ADP mark and the disputed domain name to attract and confuse Internet users for Respondent’s own commercial gain. Again, Respondent uses the disputed <wwwportaladp.com> domain name to resolve to a website that hosts various click-through links. See Compl., at Attached Appendix K. Panels have found a respondent to have acted in bad faith where the respondent exploited the confusing similarity between the domain and a complainant’s mark to attract internet users to a commercial website. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel accordingly finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ADP mark. Complainant argues that Respondent's display of competing links at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel here finds that Respondent shows actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <wwwportaladp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 18, 2015.
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