WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

ADP, LLC v. WhoIs Agent, Domain Protection Services, Inc. / Sajid Mehmood, sajid

Case No. D2017-0462

1. The Parties

The Complainant is ADP, LLC of Roseland, New Jersey, United States of America (“United States”), represented by Venable, LLP, United States.

The Respondent is WhoIs Agent, Domain Protection Services, Inc. of Denver, Colorado, United States / Sajid Mehmood, sajid of Lahore, Punjab, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <mycardadp.org> is registered with Name.com, Inc. (Name.com LLC) (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2017. On March 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 8, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 13, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 17, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2017.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on April 24, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a provider of business outsourcing solutions. It generates over USD 11 billion in revenues every year and has approximately 650,000 clients in over 110 countries worldwide. The Complainant offers a full suite of human resources, payroll, tax, insurance and benefits administration services, as well as business management and computer security solutions.

The Complainant has been using its trademark and logo in connection with numerous products and services since the year 1977. The Complainant owns registrations for its trademark ADP in several jurisdictions around the world, including United States Trademark Registration No. 3054139 ADP, registered on January 31, 2006. The Complainant also owns the domain name <adp.com>.

The disputed domain name was registered on June 9, 2016.

The disputed domain name redirects to a website which shows different entries dedicated to goods and services offered by ADP, including the “Aline Card”, a reloadable Visa card.

5. Parties’ Contentions

A. Complainant

The Complainant states the following:

The disputed domain name is confusingly similar to the Complainant’s trademark ADP.

The disputed domain name is also nearly identical to ADP’s domain name <mycard.adp.com>, which resolves to a website dedicated to the Complainant’s “Aline Card By ADP”. The Complianant explains that the “Aline Card By ADP” is a reloadable prepaid Visa card that provides employers and employees a convenient, low-cost alternative to paychecks. Through the <mycard.adp.com> domain name, a consumer can activate its “ALINE Card By ADP”, log in to its account, locate ATM machines where its card may be used, and obtain other information about the Aline card by ADP.

According to the Complainant, when the Respondent registered the disputed domain name, Respondent had no right to use the ADP trademarks in the disputed domain name. Information provided by the Registrar of the disputed domain name indicates that the underlying registrant of the disputed domain name is Sajid Mehmood. No person or entity named Sajid Mehmood has authorization from the Complainant to use its ADP Marks, under any circumstance. In addition the Complainant states that Sajid Mehmood has no affiliation with ADP. In sum, the Respondent has no valid trademark or other rights in the ADP trademarks.

The Complainant also states that using the disputed domain name to resolve to a website with minimal passive content that features the ADP trademarks prominently, with a title exactly identical to one of ADP’s own domain names (<mycard.adp.com>), does not constitute a bona fide offering of goods or services, or legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain name misleads customers into believing it is associated with ADP by presenting content that intentionally mimics content from ADP’s websites.

The Respondent’s opportunistic registration and use of the disputed domain name is in bad faith. Previous panels have found that actual knowledge of a trademark is sufficient evidence of bad faith in registering the disputed domain name. According to the Complainant, it is undisputed that the Respondent was aware of the ADP’s trademarks when he registered the disputed domain name. The website at the disputed domain name expressly states, “ADP is engaged in the business of your success and is a registered trademark of ADP, LLC,” and “Total Pay and Total Pay Card are listed brand [sic] of ADP, Inc”. The website also contains links to ADP’s own website.

Finally, the Complainant states that the fact that the Respondent used a privacy service to conceal his identity, together with the lack of indication that he is using the disputed domain name for a legitimate purpose, further supports that the disputed domain name was registered in bad faith; the Respondent has no affiliation with ADP and could not have registered the disputed domain name for good faith reasons.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the disputed domain name identical or confusingly similar to that trademark.

The Panel finds that the Complainant has sufficiently established trademark rights in ADP. It is clear to the Panel that the disputed domain name, consisting of the Complainant’s trademark ADP with the addition of the terms “my” and "card" is confusingly similar to the Complainant’s trademark ADP.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Under the second requirement the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy lists certain circumstances in which a respondent may have rights or legitimate interests in a domain name. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or is likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant states that it has not authorized the Respondent to register or use the disputed domain name and that the Respondent is not affiliated with the Complainant. The Complainant has not licensed the Respondent to use its trademark. The disputed domain name is plainly not derived from the Respondent’s name. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.

In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the burden of production on the second element shifts to the Respondent. The Respondent is in default and has not provided any answer or justification for the registration of the disputed domain name.

The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

With respect to bad faith registration, the Panel finds that the evidence shows that the Respondent knew of the Complainant’s trademark at the time of registering the disputed domain name. Not only the disputed domain name reproduces the Complainant’s trademark ADP in full, but also it is almost identical to the Complainant’s <mycard.adp.com>.

It is the view of the Panel that, it is clear from the record that the Respondent was targeting the Complainant in registering the disputed domain name and creating the content that was addressed to ADP users. The content of the disputed domain name mentions several times the ADP trademark. It also contains several hyperlinks that redirect to “https://www.visaprepaidprocessing.com/ADP/PayRoll/Home/Index”, where there is information about the Aline card by ADP.

As stated in the Complaint, the disputed domain name <mycardadp.org> is similar to the Complainant´s domain name <mycard.adp.com>, a website dedicated to the Aline card by ADP. The Panel visited the website at the disputed domain name and was able to verify that all the links in said website seem to redirect to the Complainant’s website. However since the disputed domain name is not in control of the Complainant this can change at anytime. It is the view of the Panel that the content of the disputed domain name was designed to misrepresent Internet users that the disputed domain name is somehow affiliated with the Complainant.

The Panel is of the view that this unauthorized use of the Complainant’s trademark in the disputed domain name to perform the activities described above constitutes bad faith under paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mycardadp.org> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: May 7, 2017