Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Automatic Data Processing, Inc., Roseland, NJ, USA ("Complainant") represented by Barbara L. Friedman, of McCutchen, Doyle, Brown & Enersen. The Respondent is Access Electronics, Simi Valley, CA, USA ("Respondent").

The domain name at issue is "automaticdataprocessing.com" registered with Registrars.com.

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 22, 2001; the Forum received a hard copy of the Complaint on January 22, 2001.

On January 23, 2001, Registrars.com confirmed by e-mail to the Forum that the domain name "automaticdataprocessing.com" is registered with Registrars.com and that the Respondent is the current registrant of the name. Registrars.com has verified that Respondent is bound by the Registrars.com 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 January 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 12, 2001 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@automaticdataprocessing.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 February 19, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin 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 the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant asserts that Respondent’s domain name, automaticdataprocessing.com, is identical or confusingly similar to Complainant’s mark, AUTOMATIC DATA PROCESSING, INC. In addition, Respondent has no rights or legitimate interests in relation to the domain name at issue. And finally, Respondent registered and used its domain name in bad faith.

B. Respondent

Respondent has not submitted a response in this matter.

Complainant, Automatic Data Processing, Inc., has used its mark continuously since its incorporation in 1961. Complainant is the world’s largest provider of payroll services and human resource information systems. Complainant also provides transaction processing and brokerage services for the securities industry. Currently, Complainant employs more than 40,000 persons worldwide. Complainant spends millions of dollars each year in advertising and promoting its marks, products, services, and image, which generates substantial goodwill for its mark in the marketplace. Accordingly, Complainant’s mark has significant commercial value, distinctiveness, and secondary meaning.

Respondent, Access Electronics, maintains no trademark or service mark, and no trademark or service mark applications or registrations anywhere in the world for its domain name. Respondent registered its domain name thirty-seven years after Complainant began using its mark. To date, Respondent’s only use of the domain name at issue has been to offer it for sale.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Under the Policy, Complainant must demonstrate that it has rights in the mark, and that the domain name at issue is identical or confusingly similar to that mark.

Here, Complainant’s rights are evidenced by its registered mark, AUTOMATIC DATA PROCESSING, INC. Respondent’s domain name, automaticdataprocessing.com,

is found to be identical to Complainant’s well-established mark. See Croatia Airlines v. Kwen Kijong, AF 0302 (eResolution Sept. 25, 2000) (finding that the domain name "croatiaairlines.com" is identical to the Complainant's trademark "Croatia Airlines"); see also American Golf Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that the domain name <americangolf.net> is identical and confusingly similar to Complainant’s AMERICAN GOLF marks).

Further, Respondent’s domain name is found to be confusingly similar because a reasonable Internet user would assume that the Respondent’s domain name is somehow affiliated with the Complainant’s famous mark. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

The Panel finds that the Respondent is not commonly known by the domain name at issue, nor is Respondent using its domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Policy ¶ 4(c)(i)-(iii). See Adamovske Strojirny v Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where the Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).

Moreover, Respondent has asserted no rights or legitmate interests in the domain name at issue. Consequently, Respondent’s failure to show evidence sufficient to refute Complainant’s contentions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in regard to the domain name in question. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

The Panel finds Respondent registered its domain name in bad faith because Respondent had to have been aware of Complainant’s famous mark prior to registration.

See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

In addition, Respondent’s "passive holding" of the domain name at issue demonstrates bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); see also DCI S.A. v. Link Commercial Corp. D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of paragraph 4 (a) (iii) of the Policy).

Finally, Complainant has shown Respondent registered its domain name primarily for the purpose of selling or otherwise transferring the domain name registration to Complainant, or Complainant’s competitor. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also American Anti-Vivisection Soc’y v. "Infa dot Net" Web Services, FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith").

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, automaticdataprocessing.com, be transferred from Respondent to Complainant.