Ultimate Software v. Above.com Domain Privacy
Claim Number: FA1705001732514
Complainant is Ultimate Software (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com>, registered with Above.com Pty Ltd.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2017; the Forum received payment on May 19, 2017.
On May 23, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names are registered with Above.com Pty Ltd. and that Respondent is the current registrant of the names. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@altipro.com, postmaster@ulti-pro.com, postmaster@ultipri.com, postmaster@wwwultipro.com. Also on May 25, 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 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is in the business of selling and supporting human resource related software.
Complainant registered its ULTIPRO mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,863,610, registered Nov. 22, 1994.
Respondent’s <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> are identical or confusingly similar to Complainant’s mark. Each domain name incorporates a misspelled or hyphenated version of Complainant’s ULTIPRO mark and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its ULTIPRO mark in any fashion and Respondent is not commonly known by the disputed domain names. Further, Respondent has used some or all of the domain names to resolve to websites displaying competing links to third-party sites or other websites containing more hyperlinks. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent has registered and is using the at-issue domain names in bad faith. Respondent attempts to disrupt the business of Complainant—under Policy ¶ 4(b)(iii)—by including competitors’ links on the resolving webpage. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the ULTIPRO mark by creating confusion as to the source of its website by using the marks of Complainant. Respondent’s actual notice of Complainant’s rights in the mark, use of typosquatting and use of a privacy service to conceal its true identity is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ULTIPRO mark as evidenced by its registration of such mark with the USPTO.
Complainant’s rights in the ULTIPRO mark existed prior to Respondent’s registration of the at-issue domain names.
The at-issue domain names are each confusingly similar to Complainant’s ULTIPRO trademark.
Respondent uses the at-issue domain names to address a website that displays links to services which compete with Complainant, presumably for commercial gain.
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 at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the ULTIPRO trademark demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO).
Each of the at-issue domain names incorporates Complainant’s ULTIPRO mark or a hyphenated or misspelled version of such mark. In one instance the generic term “www” is prefixed to Complainant’s trademark. Each of the at-issue domain names is terminated with the top-level domain name “.com”. Notwithstanding the slight difference between each domain name and Complainant’s trademark, none of the at-issue domain names differs from Complainant’s trademark such that it is not confusingly similar to the Complainant’s ULTIPRO mark. Therefore, the Panel finds that Respondent’s <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names are each confusingly similar to Complainant’s ULTIPRO trademark pursuant to Policy ¶ 4(a)(i). See Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015) (stating, “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.”); see also, Bank of Am. Corp. v. InterMos, FA 95092 (Forum Aug. 1, 2000) (stating, “The domain name [<wwwbankofamerican.com>] in question is confusingly similar to the Complainant’s mark. It takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet.”); see also, Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also, Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Respondent lacks both rights and legitimate interests in respect of the at‑issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
WHOIS information for the <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names lists “ABOVE.COM PTY LTD.” as their registrant. There is no evidence before the Panel which otherwise indicates that Respondent is known by any at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <altipro.com>, <ulti-pro.com>, <ultipri.com>, or the <wwwultipro.com> domain name pursuant to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.)
Respondent uses the at-issue domain names to address a website that displays links to services which compete with Complainant, presumably for commercial gain. Such links include “EMPLOYEE PAYROLL,” “HR PAYROLL,” and “INTUIT PAYROLL SERVICES”. Using the trademark confusingly similar <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names in such manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Given the foregoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent registered and used the at-issue domain name in bad faith. As discussed below particular Policy ¶ 4(b) circumstance as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy as to the at-issue domain name.
First, as mentioned above, regarding rights and interests, the websites addressed by the confusingly similar at-issue domain names contain links to services that compete with those offered by Complainant. Such use of the domain name is disruptive to Complainant’s business and demonstrates Respondent’s bad faith registration and use of the at-issue domain names under Policy ¶ 4(b)(iii). See State Farm Mutual Automobile Insurance Company v. Niang, huai, FA1412001594788 (Forum Jan. 16, 2015) (“The at-issue domain name’s website includes advertisements for third parties, some which may sell insurance and banking services similar to those offered by Complainant. Using the at-issue domain name to display competing advertisements disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii)). Respondent’s use of the at-issue domain names, actual or intended, to attract internet traffic and commercially benefit from the goodwill associated with Complainant’s ULTIPRO trademark also shows Respondent’s bad faith under 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.”)
Additionally, Respondent engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name wishing and hoping that internet users will inadvertently type the malformed string when searching for products or services associated with the target trademark, or will otherwise confuse a misspelled trademark laden domain name with its target trademark. Here, Respondent misspells Complainant’s trademark in three of the at-issue domain names and in the case of <wwwultipro.com> prefixes the correctly spelled ULTIPRO trademark with “www” –hoping that internet users seeking Complainant will endeavor to type the often used “www.” subdomain before Complainant’s ULTIPRO trademark, but fail to type its period. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names knowing that Complainant had trademark rights in the ULTIPRO trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s use of the trademark in each of the four at-issue domain names. It is thus clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some inoffensive reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering 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 <altipro.com>, <ulti-pro.com>, <ultipri.com>, and <wwwultipro.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 21, 2017
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