ADP, LLC v. Zhichao Yang
Claim Number: FA1708001744762
Complainant is ADP, LLC (“Complainant”), represented by Susan E. Hollander of Venable LLP, California, USA. Respondent is Zhichao Yang (“Respondent”), People’s Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myadpacess.com>, registered with NameSilo, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically August 15, 2017; the Forum received payment August 15, 2017.
On August 16, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <myadpacess.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC verified that Respondent is bound by the NameSilo, LLC registration agreement and 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 17, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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@myadpacess.com. Also on August 17, 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 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant is a global provider of a vast array of business-related products and services, including education, research, human resources, and payroll services. Complainant uses the ADP mark in conjunction with its business practices. Complainant registered the ADP mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,133,370, registered Apr. 15, 1980). See Compl., at Attached Appendix K. Additionally, Complainant registered the ADP mark with government entities throughout North and South America, Asia, Africa, Australia, and Europe. See Compl., at Attached Appendix L. Respondent’s <myadpacess.com> is confusingly similar to Complainant’s ADP mark because it incorporates the mark in its entirety, adding the generic term “my,” a deliberate misspelling of the term “access,” and the “.com” generic top level domain (“gTLD”).
Respondent lacks rights and legitimate interests in <myadpacess.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the ADP mark in any way and Respondent is not affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <myadpacess.com> resolves to a parked webpage offering pay-per-click links to Complainant’s goods and services and to those in direct competition with Complainant. See Compl., at Attached Appendix N.
Respondent registered and is using <myadpacess.com> in bad faith. The disputed domain name attracts Internet users to Respondent’s website, presumably for Respondent’s own commercial gain. Respondent registered <myadpacess.com> with actual knowledge of Complainant and its rights to the ADP mark.
Respondent did not submit a Response. The Panel notes that Respondent registered <myadpacess.com> August 14, 2015. See Compl., at Attached Appendix M.
FINDINGS:
Complainant established rights and legitimate interests in the mark contained in its entirety along with mis-spelled associated words within the disputed domain name.
Respondent knowingly registered and used the disputed domain name that is
confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the mark or the disputed domain name and 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar
Complainant is a global provider of a vast array of business-related products and services, including education, research, human resources, and payroll services. Complainant uses the ADP mark in conjunction with its business practices. Complainant registered the ADP mark with USPTO (e.g., Reg. No. 1,133,370, registered Apr. 15, 1980). See Compl., at Attached Appendix K. Additionally, Complainant claims it registered the ADP mark with government entities throughout North and South America, Asia, Africa, Australia, and Europe. See Compl., at Attached Appendix L. Registrations with USPTO and other government entities show rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds that Complainant’s registrations are sufficient to show rights in the ADP mark.
Complainant contends that Respondent’s <myadpacess.com> is confusingly similar to Complainant’s ADP mark because it incorporates the mark in its entirety, adding the generic term “my,” a deliberate mis-spelling of the term “access,” and the “.com” gTLD. The addition of generic terms and gTLD do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016). The Panel finds that the disputed domain name is confusingly similar to Respondent’s <myadpacess.com>> disputed domain name that contains Complainant’s entire mark, differing only by the addition of a generic or descriptive phrase and top-level domain. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that contains in its entirety mis-spelled versions of words associated with Complainant’s protected mark and business and that is confusingly similar to the mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 asserts that Respondent lacks rights and legitimate interests in <myadpacess.com>. In support of its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Zhichao Yang.” A respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the name [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the ADP mark in any way and that Respondent is not affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. To support its contention, Complainant demonstrates that Respondent’s <myadpacess.com> resolves to a parked webpage hosting pay-per-click links to Complainant’s goods and services, along with some in direct competition with Complainant. See Compl., at Attached Appendix N. Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) and 4(c)(iii) where the respondent is using the disputed domain name to host generic links to third-party websites, some of which directly compete with Complainant’s business. Provide Commerce, Inc. v. e on Craze, FA1506001626318 (Forum Aug. 11, 2015). Thus, this Panel finds that Respondent did not provide a bona fide offering of goods or services or make a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant maintains that Respondent registered and is using <myadpacess.com> in bad faith. Respondent’s <myadpacess.com> resolves to a parked webpage hosting click-through links to third-party goods and services. See Compl., at Attached Appendix N. Complainant contends that the disputed domain name attracts Internet users to Respondent’s website, presumably for Respondent’s commercial gain. Bad faith under Policy ¶ 4(b)(iv) has been found where the respondent’s domain name resolved to a website that hosted links to third-party websites offering services similar to the complainant’s services. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000). This Panel may find that Respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to Complainant’s mark to offer links to third-party websites that offered services similar to those offered by Complainant. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006).
Respondent registered <myadpacess.com> with actual knowledge of Complainant and its rights to the ADP mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” Panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant also contends that in light of the fame and long-standing use of Complainant's ADP mark, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant's rights in the mark. 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).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <myadpacess.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <myadpacess.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 25, 2017
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