ADP, LLC v. Domain Admin Hush Whois Protection Ltd.
Claim Number: FA1708001744765
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Domain Admin / Hush Whois Protection Ltd. (“Respondent”), Seychelles.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myadpaccess.com>, registered with Key-Systems GmbH.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2017; the Forum received payment on August 15, 2017.
On August 17, 2017, Key-Systems GmbH confirmed by e-mail to the Forum that the <myadpaccess.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@myadpaccess.com. Also on August 21, 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 September 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <myadpaccess.com> domain name is confusingly similar to Complainant’s ADP ACCESS mark.
2. Respondent does not have any rights or legitimate interests in the <myadpaccess.com> domain name.
3. Respondent registered and uses the <myadpaccess.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, ADP, LLC, is a worldwide provider of business outsourcing solutions. In connection with this business, Complainant uses the ADP ACCESS mark to promote its goods and services. Complainant holds a registration for the ADP ACCESS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,768,501, registered Mar. 30, 2010).
Respondent registered the <myadpaccess.com> domain name on May 21, 2015, and uses it to resolve to a parked website displaying Complainant’s trademarks and pay-per-click links to third-party advertisers.
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.”).
The Panel finds that Complainant has rights in the ADP ACCESS mark for purposes of Policy ¶ 4(a)(i) based upon its registration with the USPTO. See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <myadpaccess.com> domain name simply appends the generic term "my" and the gTLD “.com” to Complainant’s ADP ACCESS mark. The addition of a generic term and a generic top-level-domain name are insufficient to distinguish a domain name from a complainant’s mark. See State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <myadpaccess.com> domain name is confusingly similar to Complainant’s ADP ACCESS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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 argues that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s ADP mark. The WHOIS information of record lists “Domain Admin / Hush Whois Protection Ltd.” as the registrant of the <myadpaccess.com> domain name, respondent to incorporate its NAVISTAR mark in any domain name registration). Thus, the Panel finds that there is no evidence to support a finding that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent).
Complainant contends that Respondent has failed to use the <myadpaccess.com> domain name in connection with a bona fide offer of goods or services, or for a legitimate noncommercial or fair use. Complainant demonstrates that the disputed domain name resolves to a parked page displaying pay-per-click links to third-party advertisers. This use does not constitute a legitimate noncommercial or fair use of a domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”). The Panel finds that Respondent has failed to make a bona fide offering of goods or services and thus lacks rights and legitimate interests in the disputed domain name.
Complainant also shows that Respondent lists the disputed domain name for sale. Offering a disputed domain name for sale indicates a respondent’s lack of rights and legitimate interests in the domain name per Policy ¶ 4(a)(ii). See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”). Here, Respondent offers the disputed domain name for a price of $12,488.00. The Panel therefore finds further evidence that Respondent lacks rights and legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s offer of the disputed domain name for sale represents bad faith per Policy ¶ 4(a)(i) when the price offered is in excess of the out-of-pocket costs of registration. See George Weston Bakeries Inc. v. McBroom, FA 933276 (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). The price of $12,488.00 is more than Respondent’s out-of-pocket costs to register the disputed domain name. Therefore, the Panel finds bad faith under Policy ¶ 4(b)(i).
Respondent uses the disputed domain name to resolve to a parked website displaying Complainant’s trademarks and pay-per-click links to third-party advertisers for Respondent’s commercial gain. The Panel finds that this is an attempt to create confusion as to the ownership or source of the website for commercial gain, which constitutes bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the ADP ACCESS mark prior to registration. Actual knowledge of a complainant’s rights in a mark can be determined by the domain name and the use made of it. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Respondent wholly incorporated Complainant’s ADP ACCESS mark into the disputed domain name and used it to directly compete with Complainant, which the Panel finds is further evidence of Respondent bad faith.
The Panel finds that Complainant has satisfied 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 <myadpaccess.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 14, 2017
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