ADP, LLC v. Ryan G Foo / PPA Media Services
Claim Number: FA1508001631726
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of K&L Gates LLP, California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <loginadp.com>, registered with Internet.bs Corp.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 3, 2015; the Forum received payment on August 3, 2015.
On August 05, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <loginadp.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name+. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2015 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@loginadp.com. Also on August 10, 2015, 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 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant has registered the ADP trademark with the USPTO (e.g., Reg. No. 3,054,139, registered Jan. 31, 2006). The mark is used in connection with an expansive variety of products and services, including, but not limited to worldwide integrated computing solutions; human resources, payroll, talent management, tax and benefits administration solutions; providing assistance to customers to aid with regulatory and legislative compliance; educational services and training programs in numerous fields; research and analytical services; information services for use in connection with its various businesses; and integrated securities transaction processing and inventor communications services for the financial services industry. The disputed domain name is confusingly similar to the ADP trademark because the domain name contains the entire mark and differs only by the addition of the generic term “login” and the gTLD “.com.”
(ii) Respondent has no rights or legitimate interests. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. Respondent has failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, the domain name resolves to a webpage displaying links to Complainant’s competitors.
(iii) Respondent has engaged in bad faith registration and use of the disputed domain name. Respondent has offered the disputed domain name for sale to the public. Respondent is disrupting Complainant’s business by displaying competing hyperlinks on the resolving webpage. Respondent is attempting to commercially benefit from a likelihood of confusion. Lastly, due to the fame of Complainant’s mark, Respondent had actual notice of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name <loginadp.com> was registered on February 17, 2010.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used 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 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.”).
Complainant has registered the ADP trademark with the USPTO (e.g., Reg. No. 3,054,139, registered January 31, 2006). The mark is used on or in connection with an expansive variety of products and services, including, but not limited to worldwide integrated computing solutions; human resources, payroll, talent management, tax and benefits administration solutions; providing assistance to customers to aid with regulatory and legislative compliance; educational services and training programs in numerous fields; research and analytical services; information services for use in connection with its various businesses; and integrated securities transaction processing and inventor communications services for the financial services industry. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant argues that the disputed domain name is confusingly similar to the ADP trademark. Complainant notes that the disputed domain name contains the entire mark and differs only by the addition of the generic term “login” and the gTLD “.com.” As a general rule, the gTLD “.com” can never distinguish a domain name from the mark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have established a confusing similarity where the domain name contains the entire mark and merely adds a generic term. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel finds that the disputed domain name is confusingly similar to the ADP trademark.
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), 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 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the ADP trademark in domain names. The Panel notes that “Ryan G Foo” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the disputed domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that the disputed domain name resolves to a webpage displaying hyperlinks to Complainant’s competitors. The Panel notes that the disputed domain name resolves to a webpage containing links that read, among other things, “ADP Login,” “Small Business Payroll,” “Online Payroll Services,” “Payroll Companies,” and “ADP Payroll.” Prior panels have declined to award a respondent rights under Policy ¶¶ 4(c)(i) or (iii) where the domain name resolves to a webpage displaying links to the complainant’s competitors. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). As the Panel finds that the links on the resolving webpage lead to Complainant’s competitors, it declines to grant Respondent rights under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(i) by offering the disputed domain name for sale to the public. Complainant notes that the resolving webpage displays a message reading “AdpTotalPay.com is for sale!” Prior panels have found bad faith under Policy ¶ 4(b)(i) where the respondent has offered the domain name at issue for sale to the public. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). Accordingly, the Panel finds evidence of such an offer to indicate bad faith registration and use as the Panel also finds that Respondent primarily intended for such an offer when registering the disputed domain name. See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant believes that use of the disputed domain name to display competing hyperlinks is disruptive. The Panel again notes that the disputed domain name resolves to a webpage with messages reading, among other things, “ADP Login,” “Small Business Payroll,” “Online Payroll Services,” “Payroll Companies,” and “ADP Payroll.” Prior panels have found bad faith under Policy ¶ 4(b)(iii) where the disputed domain name resolves to a webpage displaying links to the complainant’s competitors. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (“Respondent’s disputed domain name resolves to a parking website which provides click through revenue to Respondent and which displays links to travel-related products and services that directly compete with Complainant’s business. Accordingly, Respondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). As the Panel finds that the disputed domain name resolves to a webpage with competing hyperlinks, it finds bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant believes that a likelihood of confusion exists because the disputed domain name resolves to a webpage containing links to various third-party websites that sell the same or similar services to those sold under the ADP trademark (competing hyperlinks). Further, Complainant argues that Respondent must be profiting from this behavior in some manner. Again, the Panel notes the aforementioned evidence regarding competing hyperlinks. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name resolves to a webpage with competing hyperlinks. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). As the Panel finds that the disputed domain name resolves to a webpage with competing hyperlinks, and that Respondent is profiting, it finds bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant also contends that in light of the fame and notoriety of its ADP trademark, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the marks. The Panel here infers due to the fame of the Complainant’s mark and the use manner of the disputed domain name that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <loginadp.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: September 16, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page