DECISION

ADP of North America Inc. v. Horoshiy, Inc. a/k/a Horoshiy

Claim Number:  FA0407000304896

PARTIES

Complainant is ADP of North America, Inc. (“Complainant”), represented by Susan E. Hollander, of Manatt, Phelps & Phillips LLP, 1001 Page Mill Road, Building 2, Palo Alto, CA 94304.  Respondent is Horoshiy Inc. a/k/a Horoshiy (“Respondent”), F.D. Rooseveltweg, #518, Curacao, Netherlands Antilles.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com>, registered with Nameking.com, Inc.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 28, 2004; the Forum received a hard copy of the Complaint on July 30, 2004.

On August 3, 2004, Nameking.com, Inc. confirmed by e-mail to the Forum that the domain names <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> are registered with Nameking.com, Inc. and that Respondent is the current registrant of the names. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 9, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 30, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@adptaxpartner.com, postmaster@adpeasypay.com, postmaster@adpflexdirect.com, postmaster@adpipay.com, postmaster@adpipaystatements.com, and postmaster@adptme.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 8, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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."  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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> domain names are confusingly similar to Complainant’s ADP mark.

2. Respondent does not have any rights or legitimate interests in the <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> domain names.

3. Respondent registered and used the <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is one of the largest independent computing service firms in the world.  As evidence, Complainant earned more than $7 billion in revenues and serves approximately 500,000 clients worldwide.

In connection therewith, Complainant successfully registered the ADP mark with the United States Patent and Trademark Office (“USPTO”) and was granted registration numbers 2,338,000 (issued Apr. 4, 2000) and 1,133,370 (issued Apr. 15, 1980).  Complainant uses the ADP mark in connection with a variety of goods and services, including “computer hardware; computer software for use in payroll processing, unemployment compensation management . . . [and] payroll tax deposit filing and reporting.” 

Complainant also filed a registration application for the FLEXDIRECT mark with the USPTO on March 10, 2003 (Ser. No. 78/223564).  Complainant is using the FLEXDIRECT mark in connection with a “magnetically encoded stored value card for flexible spending accounts for health care, dependant care, and transit reimbursement incentive plans.”

Respondent has registered the domain names <adptaxpartner.com> (Reg. Mar. 12, 2004), <adpeasypay.com> (Reg. Feb., 11 2004), <adpflexdirect.com> (Reg. Feb. 12, 2004), <adpipay.com> (Reg. Jan. 12, 2004), <adpipaystatements.com> (Reg. Nov. 27, 2002), and <adptme.com> (Reg. Dec. 11, 2003).   

The domain name <adptaxpartner.com> links to a website that contains hyperlinks to a variety of third-party websites offering “Bottom Dollar Prices on Turbo Tax,” among other tax-related goods or services.

The domain names <adpipay.com>, <adpeasypay.com>, <adpipaystatements.com>, and <adpflexdirect.com> each connect to nearly identical webpages that contain hyperlinks to third-party websites offering “popular payroll packages,” and automated “expense management.”

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Registering a mark with a governmental authority is sufficient to establish rights in a mark under the Policy.  Having provided evidence of its registration of the ADP mark with the USPTO, Complainant has established rights in the mark under Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

Each of the disputed domain names contain Complainant’s ADP mark, which is significant under the Policy for determining the similarity between the mark and the domain names.  See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name); see also Magnum Piering, Inc. v. Mudjackers & Wilson, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name).

Domain names that incorporate a third party’s mark in its entirety and that merely add terms that describe the goods or services provided by the third party under the mark have been consistently found to be confusingly similar to the mark under the Policy.  The domain names <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, and <adpipaystatements.com> have merely added the terms “tax partner,” “easy pay,” “flexdirect,” “I pay,” and “pay statements,” which clearly relate to Complainant’s payroll processing, unemployment compensation management, and payroll tax deposit filing offered under its ADP mark.  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum April 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the terms “traffic school,” “defensive driving,” and “driver improvement,” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (“Respondent's <aigassurance.com> domain name is confusingly similar to Complainant's AIG mark because the disputed domain name appropriates Complainant's entire mark and adds the generic or descriptive term 'assurance' to the end of the mark. The addition of this generic or descriptive term does not significantly differentiate the domain name from the mark under Policy ¶ 4(a)(i) because the term 'assurance' relates directly to Complainant's business of providing insurance services.”).

The domain name <adptme.com> incorporates Complainant’s ADP mark and merely has appended the letters “tme” to the domain name.  Complainant argues that the domain name is confusingly similar to the ADP mark because the “term ‘tme’ suggests the word ‘time’ which is clearly meant to evoke Complainant’s payroll and financial services.”  Complaint at 4.  The link Complainant constructs between the letters “tme” and Complainant’s payroll and financial services is attenuated and is surely not as clear as Complainant asserts.  Yet, the Panel finds that the domain name <adptme.com> is confusingly similar to Complainant’s ADP mark since the domain name incorporates the mark in its entirety, Complainant has asserted a plausible connection between the domain name and Complainant’s services, and Respondent has failed to respond to the Complaint.  See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The lack of a Response allows the Panel to accept all reasonable allegations set forth in the Complaint as true. See Allergan Inc. v. MedBotox Inc., FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint. Under these circumstances it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.”); see also Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true).

The fact that Respondent has not challenged Complainant’s assertion that Respondent lacks rights and legitimate interests is itself evidence that Respondent lacks those rights and interests in the disputed domain names.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

There are two forms of evidence in the record that bare on whether Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  First, the Complaint contains the assertion that Respondent is not commonly known by the domain names.  Second, the WHOIS information lists Respondent’s name as “Horoshiy, Inc,” not any of the disputed domain names.  Therefore, the Panel finds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that, the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. West Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (finding that since Respondent listed its name as being “Ilyoup Paik a/k/a David Sanders” in the WHOIS domain name registration information, Respondent was not commonly known by the domain name <awvacations.com>); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the notion that a respondent is commonly known by a domain name, the notion must be rejected).  

Using a domain name that is confusingly similar to a third party’s mark to link Internet users to commercial websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  In the instant case, the domain names <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com> and <adptme.com> each contain webpages that feature links to commercial websites.  Therefore, Respondent is not using the foregoing domain names in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that respondent was not using domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent used the names to divert Internet users to a website that offered competing services with those offered by the complainant under its marks); see also Glaxo Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that respondent was not using the domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the trademark pursuant to Policy ¶ 4(c)(iii) because respondent used the domain name to take advantage of Complainant's mark by diverting Internet users to a competing commercial site).

Complainant has established that Respondent lacks rights and legitimate interests in the domain names <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> pursuant to Policy ¶ 4(a)(ii). 

Registration and Use in Bad Faith

Bad faith registration and use is established under Policy ¶ 4(b)(iv) when a respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark.  The fact that Respondent has registered a total of six domain names that incorporate confusingly similar variations of Complainant’s ADP mark, Respondent has failed to challenge the assertions set forth in the Complaint, and Respondent is diverting Internet users to commercial websites, is strong evidence that Respondent is in violation of Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market).

Additionally, bad faith registration and use is established under Policy ¶ 4(b)(ii) when a respondent prevents the owner of a trademark from reflecting the mark in a corresponding domain name.  In this case, Respondent registered and is using six domain names that fully incorporate Complainant’s ADP mark and merely add terms that describe the goods or services Complainant provides, evidences a pattern of preventive conduct.  See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also Time Warner Inc. & EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names emiwarnermusic.com, emiwarner.org, emiwarner.net, warneremi.net and warneremi.org in bad faith when Respondent registered the domain names immediately after an announced merger between Time Warner Inc. and EMI Group. Respondent had also registered 15 other domain names belonging to Complainant, evidencing a pattern of preventative conduct.); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on Complainant’s trademark(s) is evidence of a pattern of conduct); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

Complainant has established that the domain names <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> have been registered and used in bad faith pursuant to Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED with respect to the domain names <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com>.

Accordingly, it is Ordered that the <adptaxpartner.com>, <adpeasypay.com>, <adpflexdirect.com>, <adpipay.com>, <adpipaystatements.com>, and <adptme.com> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  September 21, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1038.html