Paychex of New York, LLC v. Matt Enderle / MAXTECH
Claim Number: FA2304002039261
Complainant is Paychex of New York, LLC (“Complainant”), represented by Kristen M. Walsh of Nixon Peabody LLP, New York, USA. Respondent is Matt Enderle / MAXTECH (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paychexpay.com> (“Domain Name”), registered with eNom, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on April 7, 2023; Forum received payment on April 7, 2023.
On April 10, 2023, eNom, LLC confirmed by e-mail to Forum that the <paychexpay.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, LLC 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 April 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2023 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@paychexpay.com. Also on April 12, 2023, 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On May 5, 2023 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 is a leading provider of integrated human capital management solutions for human resource, payroll, insurance, and benefits outsourcing services for small to medium-sized businesses. Complainant asserts rights in the PAYCHEX mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,929,611, registered October 24, 1995). The <paychexpay.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the PAYCHEX mark in its entirety with the addition of the generic word “pay” and the generic top level domain (“gTLD”) “.com”.
Respondent lacks rights or legitimate interests in the <paychexpay.com> domain name. Respondent is not commonly known by the Domain Name, nor has Respondent been authorized by Complainant to use the PAYCHEX mark. Respondent has not used the Domain Name in connection with a bona fide offering of goods or services. Instead, Respondent’s resolving website is blank.
Respondent registered and uses the <paychexpay.com> domain name in bad faith. Respondent is creating a likelihood of confusion as to the source or affiliation or the resolving webpage as the Domain Name resolves to a blank parking page with a blue P favicon similar to that used by Complainant. Furthermore, Respondent had actual knowledge of Complainant’s rights to the PAYCHEX mark prior to registering the Domain Name given the reputation of Complainant and the use of the blue P favicon.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. On April 13, 2023 Respondent sent an e-mail to Forum, the relevant portion being set out below:
“Thanks for sending this over.
We are happy to comply as this was for an internal penetration test for our internal staff and restricted access to only . This was not intended to be a misrepresentation to the public in any way.
We did get a notification of someone attempting to purchase this domain from us, was that you or someone at your firm?”
Respondent provides no documentary support for any of the statements made in the e-mail, nor does it explain why a Domain Name containing Complainant’s PAYCHEX mark was selected for an internal penetration test.
In certain cases where the Respondent has clearly consented to the transfer of the Domain Name to the Complainant, Panel is authorized to forgo traditional UDRP analysis. In the present case, while Respondent is clearly seeking a resolution of the proceeding, it is not clear whether they are prepared to consent to the transfer of the Domain Name to the Complainant and as such it is not appropriate to issue an order for relief without being satisfied that the elements of the UDRP are satisfied.
Complainant holds trademark rights for the PAYCHEX mark. The Domain Name is confusingly similar to Complainant’s PAYCHEX mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the 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 formal 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 PAYCHEX mark based on registration with the USPTO (e.g., Reg. No. 1,929,611, registered October 24, 1995). 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 Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <paychexpay.com> domain name is confusingly similar to Complainant’s PAYCHEX mark as it fully incorporates the PAYCHEX mark and adds the word “pay” and the “.com” gTLD. The addition of generic or descriptive terms and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Colin LeMahieu v. NANO DARK, FA 1786065 (Forum June 9, 2018) (finding that the addition of a generic term and the generic top-level domain “.com” insufficient to differentiate the <nanodark.com> domain name from the NANO mark); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then 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) and 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the PAYCHEX mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); 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). The WHOIS lists “Matt Enderle / MAXTECH” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Respondent’s e-mail stating that the Domain Name was registered for the purpose of an internal penetration test contains no documents supporting the statement nor any explanation of why an entity would register a Domain Name incorporating the PAYCHEX Mark for a penetration test. Even if it were the case that the Domain Name were registered for the purpose of a penetration test such a purpose does not, by itself, entitle a party to register a domain name corresponding to another party’s mark. The Domain Name is inactive and there is no other evidence of any intention to use the Domain Name for any purpose, be it a bona fide offering or legitimate non-commercial use. In the absence of any additional evidence (none available in the present case) inactive holding of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, July 6, 2021, Respondent had actual knowledge of Complainant’s PAYCHEX mark. The Panel finds Respondent’s explanation for the registration of the Domain Name unsupported and implausible. The Complainant has used the PAYCHEX mark, a coined word with no obvious meaning for over 20 years. Respondent does not provide any supporting explanation, nor is an obvious explanation, for an entity to register a domain name that wholly incorporates to the PAYCHEX mark (a coined word) and a word that relates to the payment services offered by Complainant other than to take advantage of Complainant’s reputation in the PAYCHEX Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel notes that the actions of Respondent in this matter do not fall under the arguments set out in Policy ¶ 4(b). However, these arguments are merely illustrative rather than exclusive to support a finding of bad faith. See Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are mere illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). It is well accepted that the elements of Policy ¶ 4(b) are not exclusive and that a Panel may consider all of the circumstances of a given case, including passive holding, in making its bad faith analysis. See Telstra Corporation Limited v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000) (after considering all the circumstances of a given case, it is possible that a “[r]espondent’s passive holding amounts to bad faith.”); Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”)
Respondent has, without providing a supported alternative explanation (or active use), registered a domain name that wholly incorporates the coined PAYCHEX mark. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii) and, after considering the totality of the circumstances (including the nature of the PAYCHEX mark and the addition of a word relating to the services offered by Complainant) and in the absence of any formal Response or supported explanation for such inactivity by the Respondent, the Panel finds that this inactive holding of the Domain Name amounts to use in bad faith per Policy ¶ 4(a)(iii).
The Panel finds 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 <paychexpay.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 8, 2023
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