ADP, LLC v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1508001632089
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), represented by Karen J. Bernstein of Bernstein IP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adpvantage.com>, registered with TLD Registrar Solutions Ltd.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 5, 2015; the Forum received payment on August 5, 2015.
On August 7, 2015, TLD Registrar Solutions Ltd. confirmed by e-mail to the Forum that the <adpvantage.com> domain name is registered with TLD Registrar Solutions Ltd. and that Respondent is the current registrant of the name. TLD Registrar Solutions Ltd. has verified that Respondent is bound by the TLD Registrar Solutions Ltd. 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 10, 2015, the Forum served the Complaint and all Annexes, including a 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@adpvantage.com. Also on August 10, 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 September 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 uses the ADP trademark in marketing a variety of products and services, including integrated computing solutions, human resources, payroll, talent management, tax and benefits administration products, assistance with regulatory and legislative compliance, educational services and training programs, research and analytical services and securities transaction processing and inventor communications services.
Complainant holds a registration for the ADP trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) (Registry No. 3,054,139, registered January 31, 2006).
Respondent registered the <adpvantage.com> domain name on May 24, 2012.
The domain name is confusingly similar to Complainant’s ADP trademark.
Respondent has not been commonly known by the domain name.
Respondent has not been licensed or otherwise permitted to use Complainant’s ADP mark.
The domain names resolve to a webpage displaying links to the websites of Complainant’s commercial competitors.
Respondent is attempting to benefit commercially from a likelihood of confusion caused among Internet users by its use of the domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has offered the domain name for sale to the public.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent knew of Complainant and its rights in the ADP mark when it registered the domain name.
Respondent has engaged in bad faith registration and use of the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 proceeding on the basis of Complainant's undisputed representations pursuant to ¶¶ 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to ¶ 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the ADP trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003):
Complainant's … trademark registrations [with the USPTO] establish Complainant's rights in the … mark.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <adpvantage.com> domain name is confusingly similar to Complainant’s ADP trademark. The domain name contains the entire mark and differs only by the addition of the generic term “vantage” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the addition of the generic top-level domain “.com” to the mark of another in creating a domain name is insufficient to differentiate that domain name from the mark).
See also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> domain name confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests). 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 has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both finding that, where a respondent fails to respond to a UDRP Complaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent has not been commonly known by the <adpvantage.com> domain name, and that Respondent has not been licensed or otherwise permitted by Complainant to use its ADP mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Admin / Whois Privacy Corp., which does not resemble the domain name. On this record we conclude that Respondent has not been commonly known by the contested domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding, based on the relevant WHOIS information and other evidence in the record, that a UDRP respondent was not commonly known by a contested domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii)).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <adpvantage.com> domain name to resolve to a webpage displaying hyperlinks to the websites of Complainant’s commercial competitors, and that Respondent seeks to profit from its use of the domain name. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007):
The disputed domain name, … resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the disputed <adpvantage.com> domain name as alleged in the Complaint disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008):
Respondent’s … domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to … 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).
We are also convinced by the evidence that Respondent’s use of a domain name which is confusingly similar to Complainant’s ADP trademark is an attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website featuring links to third-party websites that offered services similar to those of a UDRP complainant’s services).
Finally, under this head of the Policy, it is apparent that Respondent knew of Complainant and its rights in the ADP mark when it registered the contested domain name. This is additional proof of Respondent’s bad faith in registering the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in an identified mark when it registered a confusingly similar domain name).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <adpvantage.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 10, 2015
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