DECISION

 

Ceridian HCM, Inc. v. Penpaka Sriwasumatrarutsamee

Claim Number: FA2310002064660

PARTIES

Complainant is Ceridian HCM, Inc. ("Complainant"), represented by Hannah Lutz of Taft Stettinius & Hollister LLP, Minnesota, USA. Respondent is Penpaka Sriwasumatrarutsamee ("Respondent"), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ceridianindex.com>, ("Disputed Domain Name") registered with DropCatch.com 1184 LLC.

 

PANEL

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 3, 2023; Forum received payment on October 3, 2023.

 

On October 4, 2023, DropCatch.com 1184 LLC confirmed by e-mail to Forum that the <ceridianindex.com> domain name is registered with DropCatch.com 1184 LLC and that Respondent is the current registrant of the name. DropCatch.com 1184 LLC has verified that Respondent is bound by the DropCatch.com 1184 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 October 4, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 24, 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@ceridianindex.com.

 

Also on October 4, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 25, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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.

 

RELIEF SOUGHT

Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the CERIDIAN mark established by its portfolio of trademark and service mark registrations described below and extensive use of the mark in its international business providing software business applications for the management of human resources; and promoting its business and providing sales and customer support on its own website at <www.ceridian.com>

 

Having its headquarters in the United States, Complainant submits that it also provides services in Europe, Canada, Australia, Mauritius, and Canada.

 

Complainant contends that its CERIDIAN mark has become recognized throughout the world, and claims to have approximately 85 trademark and service mark registrations in 13 countries including the United Kingdom and European Union.

 

Complainant alleges that the Disputed Domain Name <ceridianindex.com> is confusingly similar to the CERIDIAN mark in which it has rights because it contains the CERIDIAN mark in its entirety, with the only difference between the Disputed Domain Name and the mark being the addition of the short, generic term "index".

 

Complainant argues that it is sufficient that the Disputed Domain Name includes the CERIDIAN mark to render it confusingly similar. See Bloomberg Finance L.P. v. Jeffrey Bartell/ Hamptons Group, FA1704001726658 (Forum May 17, 2017) (finding that the domain name "bloombergnewswire.net" was confusingly similar to the "Bloomberg" mark, in part, because the domain name contained the "entire Bloomberg trademark.").

 

Complainant adds that the addition of the term "index" does not negate the confusing similarity of the Disputed Domain Name and the CERIDIAN mark.

 

Referring to a screen capture of Complainant's own website at <www.ceridian.com>, Complainant explains that it is a global human capital management software company and its software products include functionality relating to the storage, organization, and arrangement of customer data.

 

The term "index" refers to sequential arrangements of data and/or the act of creating or inputting data into such arrangement; in the context of Complainant's software services consumers understand "index" to refer to the data arrangement and management tools within Complainant's software.

 

Complainant argues because CERIDIAN is the initial and dominant term in the Disputed Domain Name, and because the additional term "Index" is likely to be viewed as a reference to Complainant's business, Internet users will be confused. See Dell Inc. v. Steven Hall, FA2202001985584 (Forum March 23, 2022) (finding "dellvisualresearch.com" domain confusingly similar to "Dell" trademark on bases that "DELL… is the initial, dominant, and only distinctive element of the disputed domain name… the other elements 'visual' and 'research' have no distinguishing character.")

 

Complainant next alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name, arguing that Respondent is not commonly, legitimately known by the Disputed Domain Name.

 

Complainant adds that its rights in the CERIDIAN mark precedes Respondent's registration of the Disputed Domain Name and Complainant has never given Respondent the authority to use the CERIDIAN mark, or any confusingly similar mark, in the Disputed Domain Name.

 

Furthermore, Complainant asserts that Respondent is not affiliated with Complainant in any way, nor has Respondent been licensed or authorized to use Complainant's CERIDIAN mark, or any confusingly similar trademark, in connection with any goods or services. Complainant adds that the fact Respondent was not authorized to use Complainant's mark indicates that Respondent is not commonly known by the Disputed Domain Name. See Bunge Limited, Bunge SA and Bunge Deutschland GmbH v. Ildar Nemezhanov, FA2208002009010 (Forum Oct. 5, 2022) ("lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed domain name.").

 

Likewise, the fact that Respondent has no affiliation with Complainant supports the presumption that Respondent does not have any rights or legitimate interest in the disputed domain. See Micros Systems, Inc./Oracle International Corporation v. Jaron Hunter, FA2007001904194 (Forum Aug. 18, 2020) ("A Complainant can make its prima facie case by alleging that it has no relationship with respondent and did not authorize respondent to use its trademark."). As such, it is contended, Respondent has no rights or legitimate interest in the Disputed Domain Name.

 

Complainant emphasizes that it rights in the CERIDIAN mark were established at least as early as 1992, and precede Respondent's registration of the disputed domain name by nearly two decades. See Charles Jourdan Holding AG v. AAIM, WIPO Case D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant's prior rights in the domain name precede the respondent's registration; (3) the respondent is not commonly known by the domain name in question).

 

Complainant refers to a screen capture of the website to which the Disputed Domain Name resolves, together with a translation of same into the English language, which are exhibited in an annex to the Complaint; and argues that the screen captures show that Respondent is using the Disputed Domain Name in connection with poorly written overviews of gambling strategies which promote hyperlinks to third-party online casinos.

 

Complainant submits that the exhibited screen captures prove that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial fair use. See e.g., Twentieth Century Fox Film Corporation v. Meridha enterprise / MD. Meraz Hossain, FA1306001504724 (Forum July 16, 2013) (domain which resolved to a website "that provides a poorly written overview of various gambling websites… proves that Respondent has failed to make a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use").

 

Complainant concludes that Respondent is not using the Disputed Domain Name for any bona fide purpose nor is the Disputed Domain Name being put to a legitimate noncommercial or fair use without intent to make a commercial gain or to tarnish the CERIDIAN trademark.

 

Complainant next alleges that the Disputed Domain Name was registered and is being used in bad faith, contending that CERIDIAN is a coined term with no set English meaning except as used in connection with Complainant's services and software, and as such, Respondent's actual knowledge of the mark may be presumed by virtue of its registration of the Disputed Domain Name which wholly incorporates the mark.

 

Complainant argues that the Disputed Domain Name is also confusingly similar to Complainant's own long-established domain names <ceridian.com> and <ceridianhcm.com>, and so it is therefore apparent that Respondent had actual knowledge of Complainant's rights in the CERIDIAN trademark. See Insperity, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA2304002039098 (Forum May 10, 2023) (finding that <insperitypremium.com> domain was registered in bad faith because actual knowledge of complainant's "Insperity" mark was evident, stating that the unique and whimsical term "Insperity" would "normally not be chosen by another person for inclusion in a domain name for any purpose other than to target Complainant.").

 

Complainant adds that obtaining a confusingly similar domain name with prior notice of a party's trademark rights constitutes bad faith. The Toronto-Dominion Bank v. TD Bank, FA1612001707002 (Forum Jan. 30, 2017) ("A respondent demonstrates bad faith registration and use of a domain name when it registers a domain knowing full well about complainant's trademark rights.").

 

Here, Respondent obtained the Disputed Domain Name, at the earliest, in November 2020, nearly two decades after Complainant began using its unique and distinctive mark.

 

Not only did Respondent have actual knowledge of Complainant's CERIDIAN trademark at the time it registered the Disputed Domain Name, it certainly had constructive knowledge of Complainant's CERIDIAN registered trademark. The fact that Complainant owns two federal trademark registrations for the mark CERIDIAN in the United States, as well as many other trademark registrations throughout the world, puts Respondent on constructive notice of the existence of Complainant's ownership of the CERIDIAN mark. See 15 U.S.C. § 1072 ("Registration of a mark on the principal register . . . shall be constructive notice of registrant's claim of ownership thereof.").

 

Complainant concludes that Respondent's infringing use of the CERIDIAN trademark in the Disputed Domain Name and in connection with its gambling-related posts and external links injures the goodwill that Complainant has worked to develop in its commercial relationships, as well as the goodwill that Complainant has built in its CERIDIAN mark since 1994.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a provider of business software specializing in human resource management applications for which it uses the CERIDIAN trademark and service mark and is the owner of a large portfolio of trademark and service mark registrations including the following registered in the USA:

·       United States registered trademark and service mark CERIDIAN, registration number 1868786, registered on the Principal Register on December 20, 1994 for goods and services in International Classes 9, 16, 35, 42;

·       United States registered trademark and service mark CERIDIAN, registration number 2890133, registered on the Principal Register on September 28, 2004, for goods and services in International Classes 9, 16, 35, 36, 41, 42,44.

 

Complainant owns the Internet domain names <ceridian.com> and <ceridianhcm.com>, which were registered on April 11, 1995 and February 20, 2013, respectively, and maintains its principal website at <www.ceridian.com> which allows interactive contact between its clients and its sales and customer support teams.

 

The Disputed Domain Name <ceridianindex.com> was registered on November 5, and currently resolves to a website which contains generic information about baccarat and other forms of gambling, and links to gambling websites.

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request for verification of the details of the registration of the Disputed Domain Name in the course of this proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

 

Complainant's Rights

Complainant has provided convincing, uncontested evidence that it has rights in the CERIDIAN mark, established by the ownership of the portfolio of trademark and service mark registrations described above and the reputation and goodwill that it has established in the mark by extensive use in its international software business providing applications for human resource management.

 

Confusing Similarity

The Disputed Domain Name <ceridianindex.com> consists of Complainant's CERIDIAN mark in its entirety, in combination with the word "index" and the generic Top Level Domain extension <.com>.

 

Complainant's distinctive CERIDIAN mark, which is a coined term, is clearly recognizable as the initial, dominant, and only distinctive element in the Disputed Domain Name. The addition of the generic word "index" the disputed domain name does not prevent a finding of confusing similarity between the Disputed Domain Name and Complainant's mark.

 

Similarly, the gTLD extension <.com> does not prevent a finding of confusing similarity because in the circumstances of this proceeding, it would be considered to be a necessary technical requirement for a domain name registration.

 

This Panel finds therefore that the Disputed Domain Name is confusingly similar to the CERIDIAN mark in which Complainant has rights, and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the Disputed Domain Name arguing that

·       Respondent is not commonly, legitimately known by the Disputed Domain Name;

·       Complainant's rights in the CERIDIAN mark, at least as early as 1992, long precede Respondent's registration of the Disputed Domain Name;

·       Complainant has never given Respondent the authority to use the CERIDIAN mark, or any confusingly similar mark, in the Disputed Domain Name;

·       Respondent is not affiliated with Complainant in any way;

·       nor has Respondent been licensed or authorized to use Complainant's CERIDIAN trademark, or any confusingly similar trademark, in connection with any goods or services.

·       The screen capture of the website to which the Disputed Domain Name resolves, together with a translation of same into the English language, which are exhibited in an annex to the Complainant show that Respondent is using the Disputed Domain Name in connection with poorly written overviews of gambling strategies which promote hyperlinks to third-party online casinos;

·       the screen captures prove that Respondent has failed to use the Disputed Domain Name to make a bona fide offering of goods or services or a legitimate noncommercial fair use.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant has adduced clear and convincing, uncontested evidence that it has registered trademark rights in the CERIDIAN mark dating back to December 20, 1994 which long predate the registration and first use of the Disputed Domain Name <ceridianindex.com> which was registered on November 5, 2020.

 

CERIDIAN is a distinctive mark. It is a coined word, having no meaning other than as Complainant's trademark and service mark. Therefore it is most improbable that the Disputed Domain Name which is almost identical to the mark, adding only the generic term "index", was chosen and registered for any reason other than because of its similarity to Complainant's mark.

 

This Panel finds therefore that on the balance of probabilities the Disputed Domain Name was registered in bad faith with the Complainant in mind to take predatory advantage of the Complainant's goodwill and reputation in the CERIDIAN mark.

 

Complainant's uncontested submission, supported by the exhibited screen capture and translation into the English language show that the Disputed Domain Name is being used as the address of a website on which Respondent purports to provide information about the game baccarat and hosts links to third party gambling sites.

 

On the balance of probabilities therefore Respondent is using the Disputed Domain Name to attract Internet traffic intended for Complainant and divert the traffic to Respondent's website from which Respondent receives pay-per-click revenue from the traffic availing of the links to the third party gambling websites.

 

Such use of Complainant's mark within the Disputed Domain Name to take predatory advantage of Complainant's registered trademark and service mark, as well as the goodwill and reputation established by Complainant, to attract, confuse and mislead Internet users and to divert their Internet traffic constitutes bad faith for the purpose of the Policy.

 

As this Panel has found that the Disputed Domain Name was registered and is being used in bad faith, the Complainant has succeeded in the third element of the test in Policy paragraph 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ceridianindex.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

_______________________________________________

 

James Bridgeman SC,

Panelist

Dated: October 26, 2023