ADP, LLC v. ReachLocal Hostmaster
Claim Number: FA1911001869607
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, United States. Respondent is ReachLocal Hostmaster (“Respondent”), California, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <workforcenowadp.biz>, registered with Name.com, Inc..
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 1, 2019; the Forum received payment on November 1, 2019.
On November 4, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <workforcenowadp.biz> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 November 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 25, 2019 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@workforcenowadp.biz. Also on November 4, 2019, 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 November 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (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.
A. Complainant
Complainant, ADP, LLC., has been one of the largest providers of business outsourcing solutions since 1977. Complainant has rights in the ADP WORKFORCE NOW mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,938,761 registered Mar. 29, 2011). Respondent’s <workforcenowadp.biz> domain name is confusingly similar to Complainant’s ADP WORKFORCE NOW mark as it includes the mark in its entirety, inverting the words and adding the “.biz” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <workforcenowadp.biz> domain name. Respondent is not commonly known by and is not a licensee or authorized to use Complainant’s ADP WORKFORCE NOW mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s disputed domain name resolves to an inactive webpage and engages in a phishing scheme.
Respondent registered and uses the <workforcenowadp.biz> domain name in bad faith. Respondent uses the disputed domain name in connection with a phishing scheme. Additionally, Respondent must have had actual knowledge of Complainant’s rights in the ADP WORKFORCE NOW mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, ADP, LLC., has been one of the largest providers of business outsourcing solutions since 1977. Complainant has rights in the ADP WORKFORCE NOW mark through its registration with the USPTO (e.g., Reg. No. 3,938,761 registered Mar. 29, 2011). Respondent’s <workforcenowadp.biz> domain name is confusingly similar to Complainant’s ADP WORKFORCE NOW mark.
Respondent registered the <workforcenowadp.biz> domain name on September 28, 2019.
Respondent lacks rights or legitimate interests in the <workforcenowadp.biz> domain name. Respondent’s disputed domain name resolves to an inactive webpage.
Respondent registered and uses the <workforcenowadp.biz> 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 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ADP WORKFORCE NOW mark based upon its registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <workforcenowadp.biz> domain name is confusingly similar to Complainant’s mark as it incorporates the ADP WORKFORCE NOW mark in its entirety, inverting the words and adding the “.biz” gTLD. Mere inversion of words in a complainant’s mark and addition of a gTLD does not distinguish a domain name for purposes of Policy ¶ 4(a)(i).
Complainant contends Respondent lacks rights or legitimate interests in the <workforcenowadp.biz> domain name. Respondent is not commonly known by the disputed domain name. Respondent is not a licensee or authorized to use Complainant’s ADP WORKFORCE NOW mark. Where a response is absent, the WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “ReachLocal Hostmaster” and there is no other evidence to suggest that Respondent was authorized to use the ADP WORKFORCE NOW mark. Therefore, Respondent is not commonly known by the disputed domain name per ¶ 4(c)(ii).
Respondent fails to use the <workforcenowadp.biz> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent fails to make an active use of the disputed domain name. A respondent’s failure to make an active use of a domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) Complainant provides screenshots of Respondent’s disputed domain name resolving webpage which says “The webpage cannot be found.”
Complainant next argues that Respondent uses the <workforcenowadp.biz> domain name to engage in a fraudulent phishing scheme. A respondent’s participation in a phishing scheme does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) Here, Complainant asserts that Respondent uses the disputed domain name in connection with a phishing scheme. However, Complainant fails to provide any evidence to support this assertion.
Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration of the <workforcenowadp.biz> domain name; therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii). Furthermore, Respondent fails to make an active use of the domain name.
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 <workforcenowadp.biz> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 13, 2019
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