national arbitration forum

 

DECISION

 

ADP, Inc. v.  Joe Collins / iba

Claim Number: FA1403001551312

PARTIES

Complainant is ADP, Inc. (“Complainant”), represented by Jocelyn M. Belloni of K&L Gates LLP, California, USA.  Respondent is Joe Collins / iba (“Respondent”), USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adp-db.com>, registered with Name.com, Inc.

 

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.

 

David E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2014; the National Arbitration Forum received payment on March 27, 2014.

 

On March 28, 2014, Name.com, Inc. confirmed by email to the National Arbitration Forum that the <adp-db.com> 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 April 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 28, 2014 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@adp-db.com.  Also on April 7, 2014, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 29, the Forum received a Joint Request to Stay the Proceeding until June 12, 2014. On June 12, 2014, Complainant requested to remove the stay and the Forum approved reinstatement on June 13, 2014.

 

On June 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant states that it is one of the world’s largest providers of business outsourcing solutions.  Since at least as early as 1977, Complainant and its predecessors in interest have used the ADP trademark in connection with a variety of goods and services.  Complainant also uses the mark as the second level domain in the domain name <adp.com>, which it uses for a website that markets and advertises Complainant’s business processing and outsourcing solutions.  Complainant claims common-law rights in the ADP mark, and owns numerous trademark registrations for the mark in the United States and other jurisdictions.

 

Complainant contends that the disputed domain name <adp-db.com> is identical or confusingly similar to its ADP mark.  Complainant states that Respondent is not affiliated with Complainant, and has not been granted any license or permission to use Complainant’s mark.  Complainant asserts that Respondent has neither used nor prepared to use the disputed domain name in connection with a bona fide offering of goods and services; has never been known by the domain name, and has no trademark rights in the name; and is not making a legitimate noncommercial or fair use of the domain name.  Complainant asserts that Respondent has used the domain name in email messages attempting to solicit the sale of database lists, falsely posing as Complainant or suggesting an affiliation with or sponsorship by Complainant.  Complainant further asserts that Respondent had actual and constructive knowledge of Complainant’s mark when it registered the disputed domain name, and that Respondent registered and is using the domain name for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s mark.  Complainant also notes that the domain name was registered through a proxy service in an attempt to conceal Respondent’s identity.  On these grounds, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.

 

DISCUSSION

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

The disputed domain name incorporates Complainant’s registered mark ADP, with a hyphen and the generic term “db” (presumably meaning “database”) and the “.com” top-level domain appended thereto.  These changes are insufficient to distinguish the domain name from Complainant’s mark.  See, e.g., LEGO Juris A/S v. Zhijun Guo, D2009-0184 (Nat. Arb. Forum Apr. 3, 2009) (finding <legodb.com> confusingly similar to LEGO).  The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.

 

Rights or Legitimate Interests

 

Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).

 

The disputed domain name incorporates Complainant’s mark without authorization, and apparently its sole use has been in misleading and likely fraudulent email messages.  Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests.  Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.

 

Registration and Use in Bad Faith

 

Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith.  Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.”  Under paragraph 4(b)(iv), bad faith may be shown by evidence that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

 

Respondent’s registration of a domain name that incorporates Complainant’s well-known mark, together with the use of that domain name in promotional, likely fraudulent email messages falsely suggesting a connection with Complainant, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.  See, e.g., FIL Limited v. John Smith / Privacy.Protect.org, D2013-1577 (WIPO Oct. 23, 2013) (finding bad faith based upon use of domain name to pose as Complainant for financial gain); Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith based upon use of domain name in a phishing scheme aimed at Internet users seeking Complainant’s goods and services).  Respondent’s use of a proxy registration service to conceal its identity, while not in itself determinative evidence of bad faith, lends further support to this conclusion.  The Panel finds that the disputed domain name was registered and has been used in bad faith.

 

DECISION

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

 

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

 

 

David E. Sorkin, Panelist

Dated:  June 18, 2014

 

 

 

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