ADP, LLC v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1908001859001
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adppeopleflow.com>, registered with Dynadot, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2019; the Forum received payment on August 23, 2019.
On August 26, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <adppeopleflow.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 August 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 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@adppeopleflow.com. Also on August 28, 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 September 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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. Complainant is one of the world’s largest providers of business outsourcing solutions. Complainant has rights in the ADP mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., ADP - Reg. No. 3,054,139, registered Jan. 31, 2006) and its trademark applications of the ADP PEOPLEFLOW mark with various trademark authorities, including the Canadian Intellectual Property Office (“CIPO”) (e.g., App. No. TMA1978317).
2. Respondent’s <adppeopleflow.com>[i] is identical or confusingly similar to Complainant’s ADP and ADP PEOPLEFLOW marks, as Complainant merely add a “.com” generic top-level domain (“gTLD”).
3. Respondents has no rights or legitimate interests in the <adppeopleflow.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s marks.
4. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is offering the domain name for sale.
5. Respondent registered and uses the <adppeopleflow.com> domain name in bad faith, as Respondent is offering the domain name up for sale. Next, Respondent registered the domain name opportunistically.
6. Respondent also registered the domain name with a privacy service. Finally,
7. Respondent had actual and constructive knowledge of Complainant’s rights in the ADP and ADP PEOPLEFLOW marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ADP mark. Respondent’s domain name is confusingly similar to Complainant’s ADP mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <adppeopleflow.com> domain name and that Respondent registered and uses 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 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 mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,054,139, registered Jan. 31, 2006). Registration with the USPTO is sufficient to demonstrate rights in a mark under 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).”). Although Complainant claims rights in the ADP PEOPLEFLOW marks through its applications with various trademark offices around the world, a pending application does not confer rights. Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”). Therefore, for the purpose of this proceeding, the Panel holds that Complainant does not have rights in the ADP PEOPLE FLOW mark, but does have rights in the ADP mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <adppeopleflow.com> is identical or confusingly similar to Complainant’s mark, as Respondent merely adds the generic term “people flow” and a gTLD to Complainant’s mark. The mere addition of genetic terms and a gTLD to an otherwise recognizable mark does not sufficiently distinguish a domain name from a complainant’s mark under Policy ¶ 4(a)(i). MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Therefore, Respondent’s <adppeopleflow.com> is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <adppeopleflow.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <adppeopleflow.com> domain name as Respondent is not commonly known by the domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by a 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). Additionally, lack of authorization to use a complainant’s mark indicates that the respondent lacks rights or legitimate interest in a 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 of record identifies the Respondent as “Super Privacy Service LTD c/o Dynadot” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the <adppeopleflow.com> domain name. Therefore, the Panel holds that Respondent has no rights or legitimate interests in the <adppeopleflow.com> domain name as Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <adppeopleflow.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is offering the domain name for sale. Merely parking a domain name incorporating the mark of another with information inferring the domain name is for sale may is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”). Complainant has provided a screenshot of the <adppeopleflow.com> domain name’s resolving webpage, displaying “Contact us for any business inquires” and space to enter in contact information, which Complainant argues infers the domain name is for sale. The Panel agrees and holds that Respondent fails to use the <adppeopleflow.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s <adppeopleflow.com> domain name was registered and is used in bad faith as Respondent is offering the domain name up for sale. Registration and use of a domain name incorporating the mark of another to merely park it with information inferring the domain name is for sale is evidence of bad faith under Policy ¶ 4(b)(i). See Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith). Complainant provided a screenshot of the <adppeopleflow.com> domain name’s resolving webpage, displaying “Contact us for any business inquires” and space to enter in contact information, which suggests the domain name is for sale. Therefore, the Panel finds Respondent’s <adppeopleflow.com> domain name was registered and is used in bad faith under Policy ¶ 4(b)(i).
Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the ADP mark at the time of registering the <adppeopleflow.com> domain name. Actual knowledge of a complainant’s rights in a mark can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant has provided overwhelming evidence of the notoriety of the ADP mark; thus the Panel holds that Respondent had actual knowledge of Complainant’s right in the ADP mark when it registered the <adppeopleflow.com> domain name.
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 <adppeopleflow.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 26, 2019
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