ADP, LLC v. Pham Dinh Nhut
Claim Number: FA1704001725079
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Pham Dinh Nhut (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adptotalsource.org>, registered with April Sea Information Technology Company Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 4, 2017; the Forum received payment on April 4, 2017. The Complaint was submitted in English.
On April 6, 2017, April Sea Information Technology Company Limited confirmed by e-mail to the Forum that the <adptotalsource.org> domain name is registered with April Sea Information Technology Company Limited and that Respondent is the current registrant of the names. April Sea Information Technology Company Limited has verified that Respondent is bound by the April Sea Information Technology Company Limited 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, 2017, the Forum served the Vietnamese language Complaint and all Annexes, including a Vietnamese Written Notice of the Complaint, setting a deadline of May 2, 2017 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@adptotalsource.org. Also on April 12, 2017, the Vietnamese language 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 May 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant, ADP, LLC, is a worldwide provider of business outsourcing solutions based in San Francisco, California, USA. In connection with this business, Complainant uses the ADP and TOTALSOURCE marks to promote its goods and services. Complainant has rights in the marks based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., ADP—Reg. No. 1,133,370, registered Apr. 4, 2000; TOTALSOURCE—Reg. No. 2,970,336, registered Jul. 19, 2005; ADP TOTALSOURCE—Reg. No. 4,095,486, first use Mar. 1, 2000, filed Jan. 4, 2011, registered Feb. 7, 2012). See Compl., at Attached App. I. Respondent’s domain name, <adptotalsource.org>, is identical to Complainant’s marks as it contains the ADP TOTALSOURCE mark in its entirety, less the space, and appends the generic top-level domain (“gTLD”) “.com” to form a domain name.
Respondent lacks rights or legitimate interests in <adptotalsource.org>. Respondent has not been commonly known by the disputed domain name, nor has Complainant authorized Respondent to register a domain name containing its mark. Further, Respondent has failed to use <adptotalsource.org> in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or otherwise fair use. Instead, the disputed domain name resolves to a page containing pay-per-click advertising in competition with Complainant’s business. See Compl., at Attached App. L.
Respondent should be considered to have registered and used <adptotalsource.org> in bad faith. Respondent attracted Internet users seeking Complainant to Respondent’s page for commercial gain through a parking page containing pay-per-click advertising. Further, Complainant contends Respondent inactively held the domain, and that Respondent had constructive and actual knowledge of Complainant’s mark at time of the domain name’s registration—all additional evidence supporting a finding of bad faith registration and use per Policy ¶ 4(a)(iii)
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <adptotalsource.org>, was registered February 24, 2009
The Panel finds that the disputed domain name, <adptotalsource.org>, is confusingly similar to Complainant’s valid and subsisting trademark, ADP; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
The Panel further finds that the this proceeding will continue in the English language. Complainant has made an adequate showing that Respondent is in command of the English language and, therefore, English is an appropriate langue in which to conduct this proceeding.
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 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 (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.”).
The Panel finds that the disputed domain name, <adptotalsource.org>, is confusingly similar to Complainant’s valid and subsisting trademark, ADP. Complainant has adequately pled it rights and interests in and to this trademark.
Respondent arrives at the disputed domain name by taking two, related trademarks held by Complainant, ADP and TOTAL SOURCE, putting them together, deleting spaces and adding the g TLD “.org.” This is insufficient to distinguish the disputed domain name from the two, related trademarks.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the dispute domain name. Respondent has no license or permission to register the disputed domain name. The WHOIS information of record identifies Respondent as “Pham Dinh Nhut.” As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
The Panel also finds that Respondent has failed to use <adptotalsource.org> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or otherwise fair use. Instead, the domain name resolves to a parked page containing pay-per-click advertising in competition with Complainant’s business. See Compl., at Attached App. L. Use of a confusingly similar domain name to host links unrelated to a complainant for profit is non-indicative of rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
The panel, therefore, finds that Respondent failed to use <adptotalsource.org> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or otherwise fair use because the website merely includes pay-per-click links. As such, Respondent has no rights or legitimate interests in or to the dispute domain name.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent has attracted Internet users seeking Complainant to Respondent’s page for commercial gain through a parking page containing pay-per-click advertising. See Compl., at Attached App. L. Use of a confusingly similar domain name to resolve to a website containing pay-per-click links for a respondent’s commercial gain is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”).
The Panel, therefore, finds Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Also, Complainant contends that Respondent has inactively held <adptotalsource.org>. Inactive holding of a confusingly similar domain name is further evidence of a respondent’s bad faith registration and use per Policy ¶ 4(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel, therefore, finds the disputed domain name is inactively held, and this fact is further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Last, Complainant contends Respondent had actual knowledge of Complainant’s mark at the time of the domain name’s registration. Registration of a confusingly similar domain name after a mark has been registered with a trademark authority creates the presumption of bad faith registration per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Digi Int’l v. DDI Sys., FA124506 (Forum Oct. 24, 2002) (“There is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”). Here, Respondent has registered a domain name containing Complainant’s marks, placed Complainant’s marks on the resolving page, and placed links to Complainant’s competitors on the resolving website.
As such, given the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s marks per Policy ¶ 4(a)(iii) and engaged in bad faith use and registration of 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 <adptotalsource.org> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 13, 2017
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