ADP, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA1911001869609
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, United States. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adpworkforceniw.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 1, 2019; the Forum received payment November 1, 2019.
On November 4, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adpworkforceniw.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 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@adpworkforceniw.com. 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 December 2, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in This Proceeding:
Complainant, ADP, LLC., is 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). See Compl. Append. G. Respondent’s <adpworkforceniw.com> domain name is confusingly similar to Complainant’s mark as Respondent merely misspells the mark by replacing the letter “o” for the letter “i” and adds the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent lacks rights or legitimate interests in the <adpworkforceniw.com> domain name. Respondent is not commonly known by, is not a licensee, and is not 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 uses the disputed domain name to host links to unrelated third-party websites. Additionally, Complainant offers the disputed domain name for sale to the highest bidder.
Respondent registered and uses the <adpworkforceniw.com> domain name in bad faith as Respondent offers the disputed domain name for sale to the highest bidder. In addition, Respondent used a privacy service to conceal its identity. Respondent engages in typosquatting by substituting the letter “o” for the letter “i” in the ADP WORK FORCE NOW mark. Finally, Respondent must have had actual and constructive knowledge of Complainant’s rights in the ADP WORKFORCE NOW mark prior to registering the disputed domain name.
B. Respondent’s Contentions in this Proceeding:
Respondent did not submit a response in this proceeding. The Panel notes that Respondent registered the disputed domain name October 8, 2019. See Compl. Append. I.
Complainant established rights and legitimate interests in the protected mark contained in misspelled form within the disputed domain name.
Respondent has no such rights to or legitimate interests in the disputed domain name that contains Complainant’s protected mark in misspelled form.
Respondent registered and held a disputed domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and holds the disputed 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 Complainant to 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 to or legitimate interests in the domain name; and
(3) the domain name was registered and is being used and/or held in bad faith.
Given 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 will draw such inferences as the Panel 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 conclusions 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”).
Identical or Confusingly Similar:
Complainant asserts rights in the ADP WORKFORCE NOW mark based upon registration with the USPTO. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶4(a)(i). 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).”). Complainant provides copies of its registrations of the ADP WORKFORCE NOW mark with the USPTO (e.g., Reg. No. 3,938,761 registered Mar. 29, 2011). See Compl. Append. G. Accordingly, the Panel finds that Complainant established rights in the ADP WORKFORCE NOW mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <adpworkforceniw.com> domain name is confusingly similar to Complainant’s mark as it incorporates the ADP WORKFORCE NOW mark in its entirety, merely misspelling the mark and adding a gTLD. Misspelling a word and additing of a gTLD is not sufficient to distinguish a domain name for purposes of Policy ¶ 4(a)(i). See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶ 4(a)(i).”); see also Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds 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.”). Here, Complainant argues that Respondent misspells the mark by replacing the letter “o” for the letter “I” and adding the “.com” gTLD. Therefore, the Panel finds that the disputed domain name is confusingly similar to the ADP WORKFORCE NOW mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered the disputed domain name containing a misspelled version of Complainant’s protected mark and the domain name is confusingly similar to Complainant’s protected mark. Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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), then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in <adpworkforceniw.com> as Respondent is not authorized to use Complainant’s ADP WORKFORCE NOW mark and is not commonly known by the disputed domain name. Where no response is filed, the Panel may use WHOIS information to find support for the contention that a respondent is not commonly known by the disputed domain name, especially where a privacy service was engaged, 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See 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 to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that Respondent used a privacy service, but it was lifted as a result of the commencement of this proceeding. See Compl. Append. I. Therefore, the Panel notes that the WHOIS information of record identifies registrant as “Carolina Rodrigues / Fundacion Comercio Electronico.” No other evidence suggests that Respondent was authorized to use the ADP WORKFORCE NOW mark. Id. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant next argues that Respondent fails to use the <adpworkforceniw.com> domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use as Respondent’s disputed domain name resolves to a parked webpage containing unrelated links to third-party websites. A respondent’s use of a webpage to host hyperlinks unrelated to a complainant’s business does not constitute 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). See Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as 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 provided screenshots of the disputed domain name’s resolving webpage, which purportedly contains hyperlinks that are unrelated to the complainant’s business. See Compl. Append. J. Therefore, the Panel finds that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Complainant also contends that Respondent fails to use the <adpworkforceniw.com> domain name in connection with a bona fide offering of goods or services or any legitimate noncommercial or fair use as Respondent offers the disputed domain name for sale to the highest bidder. Auctioning a disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Complainant provides a screenshot of the disputed domain name’s auction page, which contains a link to “Buy this domain.” See Compl. Append. K. Therefore, the Panel finds that Respondent does not use the disputed domain name in connection with as bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or any fair use pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Complainant has rights and legitimate interests to the protected mark contained in the disputed domain name and that Respondent has no such rights or legitimate interests in it; Complainant satisfied the elements of the ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and used and/or held the <adpworkforceniw.com> domain name in bad faith as Respondent attempts to auction the disputed domain name. A respondent’s offer to sell a disputed domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).); see also Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Forum June 23, 2003) (finding that when the domain name itself notes that it is “available for lease or sale,” evidence that the domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(i) can be inferred from the fact that “the sole value of the [<wwwdinersclub.com] domain name is dictated by its relation to the complainant’s registered DINERS CLUB mark). Complainant provided screenshots of Respondent’s disputed domain name auction page, which contains a link to “Buy this domain.” See Compl. Append. K. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant next argues that Respondent registered and uses the disputed domain name in bad faith as Respondent engages in typosquatting. Typosquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent has also engaged in typosquatting, which is additional evidence of bad faith registration and use under Policy ¶ 4(a)(iii). Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).”). Complainant alleges that Respondent engages in typosquatting as Respondent’s disputed domain name changes only one letter in Complainant’s ADP WORKFORCE NOW mark. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration of the <adpworkforceniw.com> domain name. Actual knowledge of Complainant’s mark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). 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.”). Actual knowledge of another’s trademark rights can be inferred from the notoriety of the Complainant’s trademark under Policy ¶ 4(a)(iii) and the use being made of it. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith). Complainant argues Respondent’s use of its famous and notorious ADP WORKFORCE NOW mark demonstrates it had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or held the disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <adpworkforceniw.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 16, 2019.
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