ADP, LLC v. Zhichao Yang
Claim Number: FA1708001744745
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myadpacces.com>, registered with NameSilo, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2017; the Forum received payment on August 15, 2017.
On August 16, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <myadpacces.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 August 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@myadpacces.com. Also on August 21, 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 September 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, ADP, LLC, is a leading provider of business outsourcing solutions and uses its ADP and ADP ACCESS marks to promote this business. Complainant has rights in its ADP ACCESS mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,768,501, registered Mar. 30, 2010).
2. Respondent’s <myadpacces.com>[1] domain name is confusingly similar to Complainant’s ADP ACCESS mark because it prepends the mark with the generic term “my”, eliminates the spacing and the letter “s”, and appends the generic top-level domain (“gTLD”) “.com”.
3. Respondent does not have rights or legitimate interests in the <myadpacces.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use the ADP ACCESS marks in any fashion and Respondent is not commonly known by the disputed domain name.
4. Respondent is not using the <myadpacces.com> domain name in connection with any bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Instead, <myadpacces.com> resolves to a parked webpage displaying pay-per-click hyperlinks. Respondent’s domain name also contains a typosquatted minor change to Complainant’s mark.
5. Respondent has registered and is using the domain name in bad faith. Respondent’s use of the <myadpacces.com> domain name to resolve to a parked webpage suggests Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the ADP ACCESS mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant.
6. Further, Respondent had actual knowledge of Complainant’s rights in the ADP and ADP ACCESS marks at the time of registration due to the fame of the marks. Respondent also engaged in typosquatting and utilized a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ADP ACCESS marks. Respondent’s domain name is confusingly similar to Complainant’s ADP ACCESS mark. Complainant has established Respondent lacks rights or legitimate interests in the use of the <myadpacces.com> domain name and that Respondent registered and uses the 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(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 registered its ADP ACCESS mark with the USPTO (Reg. No. 3,768,501, registered Mar. 30, 2010). Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Therefore, the Panel holds that Complainant has rights in the ADP ACCESS mark.
Respondent’s <myadpacces.com> domain name is confusingly similar to Complainant’s ADP ACCESS mark because the name prepends the mark with the generic term “my”, eliminates the spacing and one letter “s”, and appends the generic top-level domain (“gTLD”) “.com”. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Thus, the Panel holds that Respondent’s <myadpacces.com> domain name is confusingly similar to Complainant’s ADP ACCESS mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <myadpacces.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the <myadpacces.com> domain name. The record reflects the following. Complainant has not licensed or otherwise authorized Respondent to use its ADP ACCESS mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and 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). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). A privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. The WHOIS information of record lists “Domain Administrator,” as the registrant prior to the lifting of the privacy service, and “Zhichao Yang” is listed as the registrant, currently. Therefore, the Panel holds that Respondent is not commonly known by <myadpacces.com> per Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use of the <myadpacces.com> domain name because the resolving webpage is parked and displays pay-per-click hyperlinks. Use of a domain name which incorporates a complainant’s mark to merely display pay-per-click advertisements cannot be construed as a bona fide offering of goods or services or any legitimate noncommercial or fair use. See 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). Here, Complainant has provided evidence of the webpage resolving from <myadpacces.com> which displays competing hyperlinks such as “Access Payroll,” “Access ADP,” “ADP,” and “Payroll Management Software.” Therefore, the Panel agrees that this evidence supports that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the <myadpacces.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s <myadpacces.com> is a typosquatted version of Complainant’s ADP ACCESS mark. Typosquatting is the practice of taking advantage of Internet users’ misspellings or typographical errors and is evidence that a respondent lacks rights and legitimate interests in a domain name per Policy ¶ 4(a)(ii). See indyMac Bank F.S.B. v. Ebeyer, FA 175292 (Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website). The <myadpacces.com> domain name is a simple misspelling of Complainant’s ADP ACCESS mark, and Internet users may be prone to making such an error. As such, the Panel holds that Respondent has engaged in typosquatting and concludes that Respondent lacks rights and legitimate interests in <myadpacces.com> per Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent has registered and is using the <myadpacces.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the ADP ACCESS mark. Use of a domain name containing a mark in which another party has rights to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Complainant has provided screenshot evidence of the <myadpacces.com> resolving parked website which displays pay-per-click hyperlinks for goods and services that compete with Complainant’s business. Therefore, the Panel concludes that Respondent creates confusion for pecuniary gain, and therefore has registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s ADP marks, it is inconceivable that Respondent could have registered the <myadpacces.com> domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in a mark prior to registering a domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (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). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). The record supports Complainant’s contents that the ADP ACCESS and related marks have created significant good will and consumer recognition and have been in use by Complainant since 1977. Furthermore, Respondent’s incorporation of Complainant’s entire mark, although misspelled, is evidence of Respondent’s actual knowledge of Complainant’s rights in the mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights when <myadpacces.com> was registered and subsequently used.
Complainant contends that Respondent’s typosquatting behavior is evidence of bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myadpacces.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 28, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page