ADP, LLC v. Melissa Jacobs
Claim Number: FA1705001730293
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of c/o Venable LLP, California, USA. Respondent is Melissa Jacobs (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adpnationalemploymentreport.com>, registered with GoDaddy.com, LLC.
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.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 5, 2017; the Forum received payment on May 5, 2017.
On May 5, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adpnationalemploymentreport.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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@adpnationalemploymentreport.com. Also on May 8, 2017, 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.
A timely Response was received and determined to be complete on May 30, 2017.
On June 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko 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.
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 its marks to promote its goods and services. Complainant has rights in the ADP (Reg. No. 3,054,139, registered Jan. 31, 2006) and ADP NATIONAL EMPLOYMENT REPORT (Reg. No. 3,336,930, registered Nov. 13, 2007) marks based on registration with the United States Patent and Trademark Office (“USPTO”). See Compl., at Attached Appendix H. Respondent’s domain name, <adpnationalemploymentreport.com>, is identical to Complainant’s ADP NATIONAL EMPLOYMENT REPORT mark as it contains the mark in its entirety and appends the generic top-level-domain (“gTLD”) “.com” to make it resolve. Additionally, Respondent’s domain name is confusingly similar to Complainant’s ADP mark as it contains the mark in its entirety.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by <adpnationalemploymentreport.com> nor has Complainant authorized Respondent to register a domain name reflecting Complainant’s marks. Respondent failed to use the disputed domain name in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. Instead, the <adpnationalemploymentreport.com> domain name diverts Internet users to a competitor of Complainant. See Compl., at Attached Appendix K & L.
Respondent registered and uses the <adpnationalemploymentreport.com> domain name in bad faith. Respondent’s registration and use of a domain name that reflects Complainant’s marks to redirect to a website offering competing services disrupts Complainant’s business. See Compl., at Attached Appendix K & L. Further, Respondent had actual and constructive knowledge of Complainant’s marks at time of registration. Lastly, Respondent inactively held the disputed domain name.
B. Respondent
Respondent consents to the transfer of the disputed domain name <adpnationalemploymentreport.com> that was registered on June 4, 2014. See Compl., at Attached Appendix J.
Preliminary Issue: Consent to Transfer
In the response, Respondent expressed her consent to transfer the <adpnationalemploymentreport.com> domain name to Complainant.
Previous Panels of both the Forum and WIPO have taken different views as to whether the requested remedy has to be granted based on the unilateral consent to transfer from Respondent, or the Panel must still review the case on the merits to make its determination. As summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), section 4.10: “Scenarios in which a panel may find it appropriate to do so (note: still find it appropriate to proceed to a substantive decision on the merits) include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.”
Based on the records of the present case, the Panel finds that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. Despite the note in the Respondent’s Response to Complaint, “The Complainant's representative today has indicated the Complainant may have an interest in a settlement outside of the arbitration process, but no other options have been received as of the time of this submission”, there is no indication anywhere in the case records that Complainant would consider a settlement.
Furthermore, Respondent disclaims any bad faith in her Response, alleging that the domain name was available for sale and its choice was arbitrary with no Compainant’s mark in her mind.
This Panel believes that a decision as to whether the requested remedy has to be granted, or the Panel must proceed with a full review of the case under the three elements of the Policy has to be made in view of the totality of circumstances in each particular case. Such a position is supported by decisions of previous Panels. See, for example, Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), where the Panel stated that:
“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.”
The Panel thus decides to proceed with a full review of the case on the merits.
Complainant is one of the world’s largest providers of business outsourcing solutions, providing its services to 650,000 clients in over 110 countries worldwide, who has since at least as early as 1977, continuously used its ADP mark in connection with an expansive variety of products and services, including, but not limited to, educational services and training programs in numerous fields, research and analytical services, and information services for use in connection with its various businesses. The ADP Marks are also used in connection with a full suite of human resource, payroll, tax and benefits administration services, worldwide integrated computing solutions, and integrated securities transaction processing and investor communications services for the financial services industry. See Compl., at Attached Appendix C.
Previous Panels in UDRP cases involving the ADP mark have recognized this mark as famous and well-known. See e.g., ADP, LLC v. Ryan G Foo / PPA Media Services, FA1508001631726 (Forum Sept. 16, 2015)
Complainant uses its ADP trademark as the second level of a top level domain name (adp.com). The <adp.com> website markets and advertises Complainant’s ADP brand of business processing and outsourcing solutions. Complainant has provided a mass of evidence showing that the page has been visited by over half a billion Internet users over the past nine years, establishing a high degree of fame and recognition among consumers of relevant services. See Compl., at Attached Appendixes D and E.
Based on the provided numerous evidence, Complainant has established common law rights in the ADP Marks. Complainant has also shown that it owns numerous United States trademark registrations for marks incorporating the ADP marks, particularly U.S. trademark registrations for “ADP NATIONAL EMPLOYMENT REPORT” (U.S. Registration Nos. 3336930 and 3415990).
Complainant is also a holder of numerous foreign registrations and applications throughout the world for marks consisting of or incorporating the sign “ADP”. See Compl., at Attached Appendix I.
Respondent registered the disputed domain name on June 4, 2014, which is more than 30 years after Complainant secured its registered trademark rights before the USPTO (1980) and almost 40 years since Complainant’s first use of its marks in commerce in 1977.
The disputed domain name is used for re-routing Internet users to the website <gusto.com> offering services similar to those of Complainant. See Compl., at Attached Appendix L.
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.
Complainant established its rights in the ADP and ADP NATIONAL EMPLOYMENT REPORT marks based on common law rights deriving from extensive and continuous use. Moreover, Complainant asserts its rights in the ADP mark (Reg. No. 3,054,139, registered Jan. 31, 2006) and ADP NATIONAL EMPLOYMENT REPORT mark (Reg. No. 3,336,930, registered Nov. 13, 2007) based on registration with the USPTO. See Compl., at Attached Appendix H (Part one of Complainant’s trademark registrations).
Registration of a mark with a trademark authority, such as the USPTO, is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
It is therefore found Complainant has established rights in the ADP and ADP NATIONAL EMPLOYMENT REPORT marks under the Policy.
The disputed domain name is identical to Complainant’s ADP NATIONAL EMPLOYMENT REPORT mark as it contains the mark in its entirety and appends the gTLD “.com” to make it resolve. Additionally, the domain name in question is confusingly similar to Complainant’s ADP mark as it contains the mark in its entirety and simply adds descriptive terms and a gTLD. Previous Panels have traditionally found that the addition of a gTLD is irrelevant in an identical/confusing similarity analysis. Likewise, the addition of descriptive terms relevant to a complainant’s business fails to sufficiently differentiate a domain name from a mark per Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”); see also Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The disputed domain fully incorporates both of Complainant’s marks under the mentioned Federal Registrations.
The Panel respectively finds that <adpnationalemploymentreport.com> is identical to Complainant’s ADP NATIONAL EMPLOYMENT REPORT and confusingly similar to Complainant’s ADP marks. Thus, the provisions of Policy ¶ 4(a)(i) have been satisfied.
Complainant contends that Respondent is not commonly known by the disputed domain name. Respondent has not provided any evidence or arguments to rebut these contentions. Absent information in the record of the case to suggest otherwise, the provided WHOIS information, which lists “Melissa Jacobs” as the registrant (See Compl., at Attached Appendix J.), supports finding that Respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).
Furthermore, Complainant contends that it did not authorize Respondent to use the mark or register a domain name incorporating Complainant’s marks. Respondent has never objected against this in her Response. Therefore, Respondent has never been legitimately known by Complainant’s marks. In past decisions, Panels found these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration).
Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The Panel further finds that the type of use of the disputed domain name demonstrated in the case records does not constitute a bona fide offering of goods and services, or a legitimate noncommercial or fair use. Instead, the <adpnationalemploymentreport.com> domain name diverts Internet users to a competitor of Complainant. See Compl., at Attached Appendix K, L (WHOIS information and screenshots of the competitor’s website <www.gusto.com>). Using an identical or confusingly similar domain name to redirect users to a competitor of a complainant is clear evidence of a failure to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), and does not constitute a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
It is respectively found that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) & (iii).
Previous Panels have held that bad faith may be inferred from the registration of a domain name incorporating a well-known trademark. As already noted, the evidence provided in this case and the findings of previous panels in proceedings involving Complainant’s ADP marks, clearly show that this is also the case in the present dispute. See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000), where the Panel found that “Registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark reveals bad faith”. Moreover, incorporation of a well-known mark in a domain name by registrant having no legitimate connection to the holder of such a mark suggests that any use of such a domain name would be in bad faith. See America Online Inc. v. Chinese ICQ Network, D2000- 0808 (WIPO Aug. 31, 2000).
Complainant contends that Respondent had both actual and constructive knowledge of Complainant’s ADP and ADP NATIONAL EMPLOYMENT REPORT marks at the time of registration. Given the fame of the marks in question and the mere fact that Respondent’s domain name redirects Internet users seeking Complainant to a third-party that offers competing services similar to those of Complainant (See Compl., at Attached Appendix L.), one would conclude that Respondent was well aware about Complainant and its marks at the time of registration of the disputed domain name. Thus, the choice of the domain name was made with Complainant’s marks in mind in order to profit from substantial goodwill associated with them. It is hard to disagree that Respondent’s use of the disputed domain name demonstrates nothing else, but Respondent’s actual knowledge of Complainant’s marks and further supports the finding that Respondent registered and uses the domain name in bad faith per Policy ¶ 4(a)(iii).
The Panel further finds that the type of use of the <adpnationalemploymentreport.com> domain name demonstrated in the case records, particularly the use of the domain name to redirect Internet users seeking Complainant to a competitor of Complainant operating at <www.gusto.com> and offering competing payroll, benefits, and HR services (See Compl., at Attached Appendix L.), constitutes a clear example of bad faith. Previous Panels have recognized use of a domain name reflecting a complainant’s mark to redirect them to a competitor’s business as evidence of bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Lastly, failure to make a demonstrable use of a disputed domain name is further evidence of Respondent’s bad faith per Policy ¶ 4(a)(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 that Respondent has registered and is using the disputed domain name in bad faith. Therefore, the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adpnationalemploymentreport.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: June 16, 2017
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