ADP, LLC. v. Domain Admin / Whois Privacy Corp.
Claim Number: FA1701001713841
Complainant is ADP, LLC. (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ipayadp.com>, (‘the Domain Name’) registered with Internet Domain Service BS Corp.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 24, 2017; the Forum received payment on January 24, 2017.
On January 25, 2017, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <ipayadp.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp 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 January 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 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@ipayadp.com. Also on January 25, 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 February 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s contentions can be summarized as follows:
Complainant is one of the world’s largest providers of business outsourcing solutions. Since at least 1977 Complainant has used its distinctive ADP mark in relation to its services. The mark was registered in 1980. Complainant uses the domain name adp.com. It uses the mark ‘ADP IPayStatements’ in connection with an online portal for its customers’ employees to view, print, and save electronic copies of their pay statements. As well as these common law rights, Complainant owns numerous trade mark registrations incorporating its famous ADP mark.
The Domain Name does not route users to a single web site, instead it routes users to a variety of different sub domains and web sites. It routes to a parked web site containing links to Complainant’s competitors, which indicates bad faith registration and use. The Domain Name is also currently being offered for sale which is also clearly bad faith use and registration of a domain name. The Domain Name has been registered using a privacy service which also indicates that the Domain Name was registered in bad faith.
Respondent is not affiliated with Complainant and has not been granted any licence by Complainant to use the well known ADP marks.
The Domain Name wholly incorporates Complainant’s ADP mark and deviates from it only by the addition of ‘ipay’ which is clearly intended to create an association with Complainant’s ‘ADP iPayStatements’ trade mark and ipay.adp.com subdomain and is confusingly similar to Complainant’s ADP trade mark. The addition of .com does nothing to eliminate the confusing similarity.
Complainant’s registration of its ADP mark long preceded Respondent’s registration of the Domain Name in 2005.
Respondent has no rights or legitimate interests in the Domain Name which has not been used in relation to a bona fide offering of goods and services or a legitimate non commercial or fair use. Respondent is not commonly known by the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant or its group companies own many registered trade marks, inter alia, in the USA for the mark ADP for a wide variety of business services.
The Domain Name has been pointed to a web site featuring links to third party business services not connected to and some which compete with Complainant. The Domain Name has been offered for sale.
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's ADP mark (which is registered in the USA for business services and has been used since 1977), the phrase ‘ipay’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a phrase to a Complainant's mark. See Abbott Laboratories v Miles White, FA 1646590 (FORUM Dec 10, 2015)(holding that the addition of descriptive terms particularly terms that pertain to complainant’s business do not adequately distinguish a domain name from complainant’s mark). The Panel agrees that the addition of the descriptive term ‘ipay’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy particularly as Complainant uses ‘ipay.adp.com’ and ‘ADP ipaystatements’ in the course of its business.
The gTLD .com does not serve to distinguish the Domain Name from the ADP mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke, FA 726010 (FORUM July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Respondent has not provided any response in these proceedings. Respondent does not appear to have any trade marks associated with the name ADP. There is no evidence that it is commonly known by this name and it does not have any consent from Complainant to use this name. It does not appear to have used the Domain Name for any bona fide offering of services of its own.
The Domain Name has been pointed to a page featuring links to third party commercial sites including competitors of Complainant. See Ashley Furniture Industries, Inc. v domain admin/private registrations aktien gesellschaft, FA 1506001626253 (FORUM July 29, 2015)(Respondent was using the disputed domain name to resolve to a web page containing advertising links to sites which competed with those of the complainant. The panel found it did not constitute a bona fide offering or a legitimate non commercial or fair use).
Given the evidence that the Domain Name was registered after Complainant had established rights in the ADP mark and the Domain Name was offered for sale, there is no credible evidence why such names as the Domain Name would be appropriate for registration and such use and Respondent has given no credible explanation as to why it should be entitled to register a domain name consisting of a name similar to Complainant’s registered mark ADP and also to a sign used by Complainant in its business ‘ipay.adp.com. See University of Rochester v Park HyungJin, FA 1410001587458 (FORUM Dec. 9, 2014)(The Panel finds Respondent’s willingness to sell in excess of out of pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the Domain Name.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [Respondent has] registered or [has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i)).
Respondent has offered the Domain Name for sale on Sedo.com for with a minimum offer of 90$US and has given no satisfactory reason why it has a legitimate interest in a domain name including the distinctive trade mark belonging to Complainant and one of its trading styles, or why the Domain Name was offered for sale for a sum in excess of likely costs of domain name registration.
The use of the Domain Name to point to commercial sites including those of competitors of Complainant also suggests that Respondent is aware of Complainant and its business.
Accordingly, the Panel finds on the balance of probabilities that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant who is the owner of the trademark or to a competitor of Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names. See Staples Inc. v lin yanxiao, FA 1505001617686 (FORUM June 4, 2015) (Respondent’s offering to sell the domain name to a third party (in this case the general public) supports a finding of bad faith registration and use). The Panel, therefore, finds that bad faith has been demonstrated under s 4(b)(i) of the Policy. There is, therefore no need to consider further alleged grounds of bad faith registration and use.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ipayadp.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 22, 2017
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