ADP, LLC v. Web Visable / Webvisable, Inc.
Claim Number: FA1705001732556
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Web Visable / Webvisable, Inc. (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adp-benefits.com>, <adpbusinessservices.com>, <adphealthbenefits.com>, <adphroutsourcing.com>, <adphrservices.com>, <adppayrol.com>, <payrollbyadp.com>, <adp-hr.com>, <adp-peo.com> and <adpsmallbusinessservices.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2017; the Forum received payment on May 19, 2017.
On May 21, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adp-benefits.com>, <adpbusinessservices.com>, <adphealthbenefits.com>, <adphroutsourcing.com>, <adphrservices.com>, <adppayrol.com>, <payrollbyadp.com>, <adp-hr.com>, <adp-peo.com> and <adpsmallbusinessservices.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 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@adp-benefits.com, postmaster@adpbusinessservices.com, postmaster@adphealthbenefits.com, postmaster@adphroutsourcing.com, postmaster@adphrservices.com, postmaster@adppayrol.com, postmaster@payrollbyadp.com, postmaster@adp-hr.com, postmaster@adp-peo.com, postmaster@adpsmallbusinessservices.com. Also on May 24, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 16, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
Complainant ADP, LLC (“ADP” or “Complainant”) is one of the world’s largest providers of business outsourcing solutions. Since at least as early as 1977, ADP has continuously and pervasively used its famous and distinctive ADP mark (“ADP Marks”) 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. Complainant and its predecessors have used the ADP Marks in commerce continuously since at least as early as 1977 to identify its services and to distinguish Complainant’s services from those offered by competitors. As a result, the public has come to associate the ADP Marks with the high quality services that Complainant offers.
Significantly, Complainant uses the 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. ADP launched its website at the <adp.com> domain name in June of 1991, and has received over 513 million page views since 2008.
This widespread usage of the ADP Marks to identify Complainant is consistent with Complainant’s extensive advertising and marketing to promote the ADP Marks. The ADP Marks also appear prominently on Complainant’s advertising materials, and are also promoted on social media websites, including Facebook, LinkedIn, and Twitter. ADP brand services are provided throughout the United States and the world.
ADP is one of the world’s largest providers of business outsourcing solutions, and provides its services to 650,000 clients in over 110 countries worldwide. Moreover, over 80 percent of FORTUNE 500® companies and more than 90 FORTUNE 100 companies utilize one or more of ADP’s services, making ADP one of the world’s largest providers of business outsourcing solutions. ADP is also the largest provider of HR services in North America, Europe, Latin America and the Pacific Rim.
The ADP Marks have been extensively featured in numerous articles in both trade and general publications, including throughout the United States and on ADP’s various websites, and the ADP Marks are prominently featured in literature and advertising materials by ADP’s numerous business units. As a result of widespread public recognition and renown of the ADP Marks, the marks have become identified in the minds of consumers exclusively with ADP’s superior products and services. Thus, the ADP Marks have become an asset of substantial value and a symbol of ADP’s goodwill. Complainant has recently generated approximately $11 billion in annual revenue through providing Complainant’s ADP brand services.
From July 2015 to June 2016 alone, ADP spent over $30 million in advertising its ADP Marks worldwide. Moreover, a search on the most popular Web search engines <google.com>, <yahoo.com>, and <bing.com> for the term “ADP” returns the Complainant’s website as the # 1 hit. This is but one indication of the scope of recognition achieved by the ADP mark.
By means of its widespread use of ADP as a brand, Complainant has established common law rights in the trademark ADP. Complainant also owns numerous United States Trademark Registrations for marks incorporating its famous and distinctive ADP marks, which are summarized in the Annexation to the Complaint, as well as numerous trademark registrations around the world. For example, Complainant owns U.S. Trademark Reg. No. 1133370 for the mark for “data processing services” in International Class 42, and Trademark Reg. No. 4427964 for the mark ADP for “computerized database management services” and “statistical information services for business purposes,” among other specified services. The mark was registered on April 15, 1980 and first used in April of 1978. The ADP mark was registered on November 5, 2013, and first used in November of 1969.
The ADP trademark is distinctive and famous. The foregoing U.S. registrations carry with them a conclusive presumption that Complainant has the exclusive right to use the ADP mark for the services listed in the registrations. 15 U.S.C. § 1115(b). Notably, Registration Nos. 1133370, 2338000, 3054139, 3119378, and 3076111 are incontestable. Several of Complainant’s United States registrations for the ADP Marks are summarized in the Annexation to the Complaint.
In addition, Complainant owns numerous foreign registrations and applications throughout the world for marks consisting of or incorporating ADP.
The United States Supreme Court has recognized a spectrum of distinctiveness of trademarks that ranges from “generic” or “descriptive” marks, at the low end of the distinctiveness spectrum, to “suggestive” marks at the middle of the spectrum, to “arbitrary” or “fanciful” marks at the high end of the distinctiveness spectrum. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). On this spectrum, “[t]he latter three categories of marks, [suggestive, arbitrary and fanciful] because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive.” Id.; see also Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 699–700 (2d Cir. 1961).
Complainant has broad rights in the ADP mark because “ADP” is an arbitrary, or at least a suggestive term. At most, the name hints at Complainant's services, but the mark is certainly not descriptive of Complainant's business outsourcing solutions.
Even assuming arguendo that the ADP mark lacked “inherent distinctiveness,” it now has acquired distinctiveness through nearly forty years of use and extensive promotion. Indeed, any argument about distinctiveness is now moot under U.S. law. The United States Patent and Trademark Office has granted the mark “incontestable” status thus conferring upon the mark the status of distinctive as a matter of law. In short, the ADP mark is a distinct identifier of a well-known, leading provider of business processing and outsourcing solution services, and the ADP mark is entitled to very broad protection.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix). [a.] The Disputed Domain Name is Identical and Confusingly Similar to
Complainant’s ADP Marks and Complainant’s Domain Name. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
Respondent is the registrant of the domain names <adp-benefits.com>; <adpbusinessservices.com>; <adphealthbenefits.com>; <adphroutsourcing.com>; <adphrservices.com>; <adppayrol.com>; <payrollbyadp.com>; <adp-hr.com>; <adp- peo.com>; < adpsmallbusinessservices.com> (the “Disputed Domain Names”). Upon information and belief, the Disputed Domain Names do not route users to any website; instead, they are all “parked.”
Respondent is not affiliated with Complainant, and has not been granted any license or permission by Complainant to use the well-known ADP Marks.
Complainant’s right to exclude others from using the ADP Marks is extensive, as evidenced by the strength of the ADP Marks, Complainant’s pervasive use of the ADP Marks for many years, and Complainant’s many trademark registrations, including at least five incontestable registrations before the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Delta Corp. Identity, Inc. and Delta Airlines, Inc. v. Stanley Vartanian d/b/a MIG Travel, FA0603352 (Forum Jan. 12, 2006) (trademark registration with USPTO is sufficient to sustain Complainant’s right in the mark; ordering transfer of the <deltaairline.us> domain name); Ferrari S.p.A. v. The Parts Exchange.com, Inc., FA0271108 (Forum July 5, 2004) (under U.S. trademark law, registering mark creates a presumption that they are inherently distinctive and have acquired secondary meaning; ordering transfer of the <ferrari.us> domain name); Men’s Warehouse Inc. v. Wick, FA117861 (Forum Sept. 16, 2002) (same).
Each of the Disputed Domain Names wholly incorporate Complainant’s famous ADP Marks, and deviate only by the addition of descriptive words or letters clearly intended to create an association with Complainant’s well-known ADP Marks. A domain name that wholly incorporates a federally registered mark is prima facie confusingly similar, despite the addition of other words, and satisfies Policy ¶4(a)(i). See Kellogg North America Co. v. Henry Chan, FA0237507 (Forum Apr. 8, 2003) (“[T]he fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity. . . .”); Oki Data Ams., Inc. v. ASD, Inc., D2001- 0903 (WIPO Nov. 6, 2001) (same); see also Wellness Int’l Network, LTD v. Apostolics.com, FA 0096189 (Forum Jan. 16, 2001) (<wellness- international.com> found confusingly similar to Complainant’s WELLNESS INTERNATIONAL NETWORK mark). Thus, Respondent’s incorporation of terms which reference the business that ADP is well known for—terms such as, “benefits,” “business services,” “health benefits,” “hr outsourcing,” “hr services,” “payroll,” “hr,” “peo2,” and “small business services” – does not diminish Respondent’s unauthorized use of the ADP Marks.
Furthermore, Complainant’s rights in the ADP Marks were established well prior to the registration of the Disputed Domain Names. Indeed, Complainant’s registration of the ADP mark with the USPTO in 1980 long preceded Respondent’s registration of the Disputed Domain Names on November 10, 2014 and May 12, 2015. Prior to Respondent’s registration of the Disputed Domain Names, Complainant had already established rights in the ADP Marks through registration of these marks with the USPTO and continuous use in commerce since 1977. See Am. Online, Inc. v. Thomas P. Culver Enters., D2000-0564 (WIPO June 18, 2001) (successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Ferrari S.p.A. v. The Parts Exchange.com, Inc., FA 0271108 (Forum July 5, 2004) (under U.S. trademark law, registering marks creates a presumption that they are inherently distinctive and have acquired secondary meaning; ordering transfer of the domain name <ferrari.us>); Delta Corporate Identity, Inc. and Delta Airlines, Inc v. Stanley Vartanian d/b/a MIG Travel, FA 0603352 (Forum Jan. 12, 2006) (trademark registration with USPTO is sufficient to sustain Complainant’s right in the mark; ordering transfer of the domain name <deltaairline.us>).
Finally, the addition of the “.com” gTLD does nothing to eliminate the confusing similarity. Broadnet Teleservices, LLC v. Sun, Michael, FA1506001625931 (Forum July 23, 2015) (“the addition of a generic gTLD does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the trademark.”); see also Kinnser Software, Inc. v. Domain May Be For Sale, Check Afternic.com Domain Admin / Whois Protection, FA1505001618122 (Forum June 16, 2015) (finding <kinnser.org> identical to complainant’s KINNSER mark, noting that the “addition of a gTLD renders a disputed domain name identical to a mark under Policy ¶4(a)(i).”).
Taken together, it is clear that the Disputed Domain Names are virtually identical and confusingly similar to Complainant’s ADP Marks and Domain Name; accordingly, the first prong of the Policy is satisfied.
[b.] Respondent Has No Rights or Legitimate Interests in the Disputed Domain Names. UDRP Rule 3(B)(ix)(2); UDRP Policy ¶4(a)(ii).
Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to Policy ¶4(a)(ii), as defined in Policy ¶4(c). As of the date of filing this Complaint, Respondent has not made a legitimate use of, nor has it made demonstrable preparations to legitimately use, the Disputed Domain Names in connection with a bona fide offering of goods and services.
First, pursuant to UDRP Policy ¶4(c)(ii), there is no evidence to show that Respondent has ever been known by or operated a business under the name “ADP” (which appears prominently in each of the Disputed Domain Names, e.g. <payrollbyadp.com>) nor does Respondent have any trademark rights in that name. Nothing in the WHOIS contact information supports a finding that Respondent is commonly known by the name “ADP” or any other name associated with the Disputed Domain Names. The absence of WHOIS information creates the inference that Respondent is not commonly known by any of the Disputed Domain Names. See Tercent Inc. v. Yi, FA0139720 (Forum Feb. 10, 2003) (WHOIS information indicating respondent is not commonly known by the disputed domain name weighs against respondent in determining legitimate interests); see also Bank of Am. Corp. v. Bermudez, FA0944280 (Forum Apr. 30, 2007) (the absence of WHOIS information to indicate respondent is commonly known by the disputed domain demonstrates respondent is not known by the disputed domain name).
Moreover, Respondent has a website associated with the registrant name in the WHOIS information. Respondent markets itself as a “digital marketing & web solutions company.” Respondent’s own website does not display the mark “ADP” in any way. Moreover, nothing about Respondent’s website suggests that it has a legitimate interest in doing business as “ADP” or that its services are in the HR, payroll, or benefits space.
Complainant, on the other hand, has offered its goods and services in connection with the well-known ADP Marks since 1977. By contrast, the Disputed Domain Names were registered no sooner than November 10, 2014—more than thirty five years after Complainant’s first United States trademark registration for ADP issued. Further, Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks or business names and has not permitted the Respondent to apply for or use any domain name incorporating its famous ADP trademarks. Thus, Respondent does not have rights or legitimate interests in the Disputed Domain Names, pursuant to UDRP Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (no rights or legitimate interest where respondent not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing complainant’s distinct and famous NIKE trademark).
Second, Respondent has not used and is not using the Disputed Domain Names in conjunction with a bona fide offering of goods or services or with a legitimate non- commercial or fair use of the domain name UDRP Policy ¶¶4(c)(i) and 4(c)(iii). Instead, Respondent is using the Disputed Domain Names to resolve to parked websites containing a series of links that direct users to third-party advertisers, including Complainant’s competitors. The failure to make any use of the above-listed domain names shows that Respondent lacks legitimate rights in the same. See also Twitter, Inc. v. duan xiang wang, FA1609001695021 (Forum Oct. 27, 2016) (inactive holding does not establish rights and legitimate interests). Further, the use of a confusingly similar domain name for a website displaying links that are unrelated to Complainant “is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain.” Nucor Corporation v. LUIS ALONZO MURO, FA 1580989 (Forum Oct. 26, 2014); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); The Coca- Cola Company v. Whois Privacy Service, D2010-0088 (WIPO Mar. 16, 2010) (no rights or legitimate interests in <cokezone.com> used for a parked website containing sponsored links; ordering transfer); The Royal Bank of Scot. Group Plc v. Demand Domains, FA 714952 (Forum Aug. 2, 2006) (operation of a commercial web directory displaying various links to third-party websites not a bona fide offering of goods or services because respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Based on the foregoing, it is clear that Respondent lacks any rights or legitimate interests in the Disputed Domain Names. Accordingly, the second prong of the Policy is satisfied.
[c.] The Disputed Domain Names Have Been Registered and Are Being Used in Bad Faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii).
There can be no doubt that the Disputed Domain Names were registered and are being held in bad faith.
First, bad faith exists where a respondent registers a domain with knowledge of another party’s rights in trademarks and/or service marks incorporated into that domain. See e.g., Amazon.com, Inc. v. Korotkov, D2002-0516 (WIPO Aug. 13, 2002) (determining that the complainant’s AMAZON mark was so well-known that it was “inconceivable respondent was unaware of the trademark, its connotations and its commercial attractiveness” when registering <ammazon.com>; ordering transfer). Respondent’s prior knowledge of Complainant’s mark, in the present instance, is indisputable. Prior panels have found that Complainant’s ADP Marks are famous and well-known, and that use of Complainant’s trademarks constitutes bad faith registration. See e.g., ADP, LLC v. Ryan G Foo / PPA Media Services, FA1508001631726 (Forum Sept. 16, 2015) (“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 . . . .”); ADP, LLC v. kawano kazuhiro / SAKURA Internet Inc., FA1501001602227 (Forum Mar. 6, 2015) (“[T]he Panel holds that . . . reproducing the famous trademark ADP mark in the disputed domain name in order to attract Internet users to an inactive website is considered as being a use in bad faith).
Further, Respondent had constructive and actual knowledge of Complainant’s rights when registering the Disputed Domain Names. See Orange Glo Int’l v. Blume, FA0118313 (Forum Oct. 4, 2002) (“[Registration on the Principal Register] confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also 15 U.S.C. § 1072. Constructive notice of Complainant’s rights and Respondent’s subsequent registration and use of a confusingly similar domain name creates a legal presumption of bad faith pursuant to Policy ¶4(a)(iii). See 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”); Perot Sys. Corp. v. Perot.net, FA0095312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question was obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Moreover, Respondent registered the Disputed Domain Names in 2014 and 2015, more than twenty years after Complainant registered its <adp.com> domain name (June 1991).
Taken together, it is highly likely that Respondent was aware, or should have been aware, of the ADP Marks prior to registering the Disputed Domain Names. The fact that Respondent proceeded to register the Disputed Domain Names suggests registration in bad faith. See Caesars World, Inc. v. Forum LLC, D2005-0517 (WIPO Aug. 1, 2005) (given the reputation of complainant and its presence on the Internet, respondent was or should have been aware of the marks prior to registering the disputed domain name); see also Westminster Bank plc v. Sampat Business Development, FA145847 (Forum Dec. 26, 2008) (by utilizing the “NATWEST” mark, Respondent created a high “likelihood of confusion” for unsuspecting Internet users); Pfizer, Inc. v. Suger, D2002- 0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name.”).
Second, the absence of any use at all may be evidence of bad faith. See DTTM Operations LLC v. PMG Consultant, D2016-1218 (WIPO Aug. 4, 2016) (“The Panel notes that the disputed domain name resolves to a parked webpage that is tantamount to ‘passive holding’ of the disputed domain name. This kind of activity may constitute evidence of bad faith use, as per the consensus view of paragraph 3.2 of WIPO Overview 2.0.”).
Similarly, the fact that Respondent selected, registered, and used the Disputed Domain Name in bad faith and for commercial advantage to capitalize on the substantial goodwill associated with Complainant’s ADP Marks is indisputable. Use of a domain name to a parked website displaying links to Complainant’s competitors, and deriving click-through revenue from the same, is further evidence of bad faith. See, e.g., Lockheed Martin Corporation v. First Strike / Joe Quinn, FA1345534 (Forum Nov. 2, 2010) (holding respondent ultimately responsible for the content shown via domain name operated by parking service provider and finding bad faith); Vance Int’l, Inc. v. Abend, FA970871 (Forum June 8, 2007) (“respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche . . . . The key fact here is that respondent, in collaboration with the domain parking service providers, is exploiting complainant’s goodwill.”).
Third, Respondent’s failure to make any use of the Disputed Domain Name, and the lack of any indication that Respondent will use the domain for a legitimate purpose, demonstrates Respondent’s bad faith registration and use of the domain. See, e.g., Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (passive holding of a domain name permits an inference of registration and use in bad faith).
Taken together, the evidence clearly supports a finding of bad faith under UDRP Policy ¶4(b).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the ADP marks based upon its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,054,139, registered Jan. 31, 2006). Registration with the USPTO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant has established rights in the ADP marks.
Complainant claims Respondent’s domain names are confusingly similar because each wholly incorporates Complainant’s ADP mark, add various descriptive terms and letters, and adds the gTLD “.com.” Adding generic or descriptive terms to a mark does not sufficiently distinguish a domain name from a mark to prevent a finding of confusing similarity under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. 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). Respondent’s domain names are confusingly similar to Complainant’s ADP mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 claims Respondent is not commonly known by the disputed domain names and Complainant has not authorized Respondent to register domain names reflecting its mark. Where there is no response, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name, See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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). The WHOIS information of record lists the registrant as “Web Visable / Webvisable, Inc.” There is not obvious connection between the registrant’s name and the disputed domain names. Respondent is not commonly known by the disputed domain names.
Complainant claims Respondent failed to use the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names each resolve to a parking page containing pay-per-click hyperlinks to third parties, some of which directly compete with Complainant. Parking a domain name does not constitute 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). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶4(c)(i) and Policy ¶4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain names to create a likelihood of confusion about any affiliation between Complainant and Respondent, and capitalizes on this confusion for commercial gain by displaying pay-per-click links on the resolving webpages for the disputed domain names. Using domain names to create a likelihood of confusion and offering pay-per-click links to a complainant’s competitors supports a finding respondent acted in bad faith under Policy ¶4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Bank of Am. Fork v. Shen, FA 699645 (Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites). Respondent uses the confusingly similar domain names to resolve to a parked page that displays pay-per-click links to third parties (including Complainant’s competitors). It seems clear Respondent acted in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent had actual notice of Complainant’s rights in the ADP mark at the time Respondent registered the disputed domain names. The non-exclusive nature of the listed examples of bad faith under Policy ¶4(b) allows for bad faith to be found under Policy ¶4(a)(iii) by other means. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also 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.”). Respondent actually knew about Complainant’s rights because Respondent registered the disputed domain names more than twenty years after Complainant registered its <adp.com> domain name in 1991 and Complainant’s mark is well known. The wide variety of descriptive words shows Respondent simply had to know about Complainant’s business. Respondent acted in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent failed to make an active use of the disputed domain names. Inactive holding of a disputed domain name is evidence of bad faith pursuant to Policy ¶4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). The Screenshots provided by Complainant demonstrate that all of the disputed domain names resolve to a similar webpage containing links to third-party services. Respondent has not claimed to use the domain names as an email server or an ecommerce front end (for example). This constitutes bad faith registration and use of the disputed domain names.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <adp-benefits.com>, <adpbusinessservices.com>, <adphealthbenefits.com>, <adphroutsourcing.com>, <adphrservices.com>, <adppayrol.com>, <payrollbyadp.com>, <adp-hr.com>, <adp-peo.com> and <adpsmallbusinessservices.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 23, 2017
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