ADP, LLC v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1508001631864
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <portaladp.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.), Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2015; the Forum received payment on August 4, 2015.
On August 5, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <portaladp.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@portaladp.com. Also on August 7, 2015, 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 31, 2015, 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.
Complainant
Complainant uses its famous ADP mark in connection with an expansive variety of products and services, including, but not limited to worldwide integrated computing solutions, human resources, payroll, talent management, and tax and benefits administrative solutions. Complainant has registered the ADP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,054,139, registered January 31, 2006), which demonstrates Complainant’s rights in its mark. The <portaladp.com> domain name is confusingly similar to Complainant’s ADP mark as it incorporates Complainant’s mark in its entirety, deviating only by the addition of the generic term “portal” and the generic top-level domain (“gTLD”), “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use Complainant’s mark or any variant thereof. Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Respondent’s disputed domain name resolves to a parked website displaying Complainant’s trademark and a series of links that direct users to third-party advertisers, many of which are Complainant’s competitors.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(i) by listing the disputed domain name for sale. Respondent has used the disputed domain name primarily for the purpose of disrupting Complainant’s business, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iii). Specifically, Respondent’s disputed domain name resolves to a webpage that displays a series of links that direct Internet users to Complainant’s competitors. Respondent uses the disputed domain name to intentionally attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <portaladp.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(e), 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 (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.”).
Complainant uses the ADP mark in connection with an expansive variety of products and services, including, but not limited to worldwide integrated computing solutions, human resources, payroll, talent management, and tax and benefits administrative solutions. Complainant has registered the ADP mark with the USPTO (e.g., Reg. No. 3,054,139, registered January 31, 2006). Complainant contends that such USPTO trademark registrations demonstrate Complainant’s rights in its mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i), even though Respondent reportedly resides or operates in St. Vincent and the Grenadines. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Nat. Arb. Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant argues that the <portaladp.com> domain name is confusingly similar to Complainant’s ADP mark as it incorporates Complainant’s mark in its entirety, deviating from the mark only by the addition of the generic term “portal” and the gTLD “.com”. Past panels have found the addition of a generic term to be insufficient in overcoming a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Further, as in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis), past panels have held that gTLD additions are irrelevant to Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
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 (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 contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Complainant states that it has not authorized or licensed Respondent to use its mark or any variant thereof. The WHOIS information lists “Domain Admin / Private Registrations Aktien Gesellschaft” as registrant and Respondent has not submitted any evidence for the Panel’s consideration. Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Complainant alleges that Respondent’s disputed domain name resolves to a parked website displaying Complainant’s trademark and a series of links that direct users to third-party advertisers, many of which are Complainant’s competitors. Past panels have concluded that using a resolving website to display links to products and services that compete directly with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant has proved this element.
Complainant argues that Respondent has engaged in bad faith pursuant to Policy ¶ 4(b)(i) by listing the disputed domain name for sale for valuable consideration in excess of any out-of-pocket costs. Complainant has provided a screenshot of the WHOIS record, showing that Respondent listed the disputed domain name for sale for $25,053.00. Past panels have found bad faith under Policy ¶ 4(b)(i) where the respondent requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). Accordingly, the Panel finds that Respondent has demonstrated bad faith per Policy ¶ 4(b)(i).
Complainant alleges that Respondent has used the disputed domain name primarily for the purpose of disrupting Complainant’s business, thereby engaging in bad faith under Policy ¶ 4(b)(iii). Specifically, Respondent’s disputed domain name resolves to a webpage that displays a series of links that direct Internet users to Complainant’s competitors. Past panels have found that a respondent’s use of a disputed domain name to promote businesses directly competing with a complainant constitutes bad faith pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). As such, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant contends that Respondent uses the disputed domain name to intentionally attract Internet users to Respondent’s website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark. Complainant argues that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv) by displaying hyperlinks to products and services that are in direct competition with Complainant’s business. Past panels have found bad faith pursuant to Policy ¶ 4(b)(iv) where a respondent’s disputed domain name provides links to Complainant’s competitors and Respondent presumably commercially benefited from the misleading domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. 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.’”). Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent registered the disputed domain name with constructive and/or actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii). Specifically, Complainant alleges that Respondent knew, or should have known, of Complainant’s rights in its famous ADP marks at the time of the registration of the disputed domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a bad faith finding, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <portaladp.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Karl V. Fink (Ret.), Panelist
Dated: September 8, 2015
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