Paychex of New York is a “leading provider of integrated human capital management solutions for human resources, payroll, insurance, and benefits outsourcing services” for small to medium-sized businesses. Its PAYCHEX trademark was registered in 1995.
The company filed a UDRP against the domain PaychexForMoms.com which was registered in 2024. The domain’s registrant and Respondent did not formally respond. However, the Forum panel accepted a statement they sent, with the following:
“Paychex For Moms, INC.
… my name is Carolyn DeBerry, and I am the Owner and Founder of: Paychex For Moms, INC., I recieved your Letter of Complaint, Paychex For Moms Domain name was signed-up with GoDaddy in 2016 by my Web-Designer, and Renewed in November 2021, Annually and Registered with Orbit Trademark in November of 2021, and filed with the USPTO in November 2021 (Serial # 97285870) and filed with Attorney Bill Hulsey, Trademark, of whom who have process my request for Brand.
I am submitting my personal phone # …, please call me to discuss this further! So I don’t know the business name mentioned in this Letter you submitted too me, I only know that I submitted my Domain name on Search engine during my Web-Design and filing paperwork with Orbit Trademark “who also “DID a Domain Search, as well as “GoDaddy” did a Domain Search also I was with “BlueHost” who also did a Domain Search” and with these others Business entities, too Obtain my Website, ” that during my Domain name filing “NO OTHER Domain name as my Business name showed-up, dating-back to 2016. “I also “RECIEVED” my INCOPORATION Licensed in 2024!…” look forward in speaking with you soon!”
It seems absurd that the Respondent’s alleged search did not turn up a trademark that includes PAYCHEX in it. The mentioning of GoDaddy and BlueHost alongside the Orbit Trademark further complicates things. After all, the Complainant’s domain name, Paychex.com, was registered in 1991.
Oddly, the Forum panelist decided that the Respondent’s business, being legitimately registered, entitles it to the domain. Final decision: Deny the transfer of the domain PaychexForMoms.com, with a note that a court of law would be appropriate to handle this case.
Copyright © 2025 DomainGang.com · All Rights Reserved.Paychex of New York, LLC v. Carolyn Deberry
Claim Number: FA2503002145917
PARTIES
Complainant is Paychex of New York, LLC (“Complainant”), represented by Kaleigh P. Morrison of Nixon Peabody LLP, New York, USA. Respondent is Carolyn Deberry (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is paychexformoms.com, registered with GoDaddy.com, LLC.
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 19, 2025. Forum received payment on March 19, 2025.
On March 19, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the paychexformoms.com domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 20, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2025 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@paychexformoms.com. Also on March 20, 2025, 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.
On April 2, 2025, Forum received an informal email from Respondent. In accordance with paragraph 10 of the Rules, the Panel decided to admit the informal communication as a submission in the proceeding and that it was not necessary to invite any further submission from Complainant by way of response.
Having received no formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any formal response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant, Paychex of New York, LLC, is a leading provider of integrated human capital management solutions for human resources, payroll, insurance, and benefits outsourcing services for small to medium-sized businesses. Complainant owns registrations with the United States Trademark Office (“USPTO”) for the PAYCHEX and PAYCHEX-formative marks for use in connection with computer software for payroll services, payroll preparation, processing, administration, and management services, insurance administration and counseling, and related goods and services.
Complainant owns the domain paychek.com, registered in 1991, and operates its primary website at “www.paychex.com”.
Respondent’s paychexformoms.com domain name is confusingly similar to Complainant’s registered trademark PAYCHEX because it incorporates Complainant’s mark in its entirety.
Respondent does not meet the criteria in Paragraph 4(a)(ii) of the Policy for demonstrating rights or legitimate interests in the domain name. Rule 3(b)(ix)(2); UDRP Policy ¶ 4(a)(ii).
There is no evidence that Respondent is or has been commonly known by the domain name. In addition to the Respondent contact information provided to the Registrar for the domain name which makes clear the Registrant, an individual, is not commonly known as the domain name, the website itself that is hosted at the domain name provides conflicting, and often confusing, information about who or what is operating and using the domain name. At the top of the website, it states “PAYCHEX For MOMS c/o Premier Signature” which would indicate that the entity Premier Signature is operating the website at the domain name, which would indicate they are not commonly known as the domain name. In another area of the website, there is a statement that PAYCHEX For MOMS is a 501(c)(3), a not-for-profit tax exempt organization, but no such entity was found in a search of the IRS tax exempt organizations.
Regardless of whether Respondent is or has formed any type of legal entity with the name PAYCHEX FOR MOMS, that alone cannot be enough to be considered “commonly known” as the domain name to grant Respondent a legitimate interest in the domain name because using such a name is not legitimate, is without authorization from Complainant, and infringes Complainant’s rights to the PAYCHEX mark. See Midjourney, Inc. v. Midjourney Group / The Midjourney AI, FA2406002103820 (Forum July 29, 2024) (“the evidence available to the Panel suggests that Respondent, in an effort to wrap itself in an air of legitimacy to give cover to its registration of the domain name, adopted a pair of rough equivalents of Complainant’s corporate name, …, and respondent did not have rights or legitimate interests in the disputed domain name”).
Respondent is in no way connected with Complainant, has no relationship, affiliation, endorsement, or association with Complainant. Respondent has no authority, license, permission, or other arrangement from Complainant to use Complainant’s registered mark PAYCHEX in the domain name or to use any of Complainant’s intellectual property on any website, or in connection with any goods or services, including to provide paychecks or payroll services, and is therefore not commonly or legitimately known by the domain name.
Respondent is not making a bona fide offering of goods or services with, or a legitimate noncommercial or fair use of, the domain name under Paragraphs 4(c)(i) or (iii) of the UDRP. Respondent is using the domain name to host a website where Respondent infringes Complainant’s exclusive rights to the PAYCHEX mark by promoting an “Income Club Membership” under the infringing mark PAYCHEX FOR MOMS, which fully incorporates Complainant’s PAYCHEX mark, whereby individuals select a membership, pay a certain fee, and allegedly will receive “pay outs” on a bi-weekly basis based on whichever membership level they initially paid into. Respondent’s payment scheme is akin to a bi-weekly paycheck or providing payroll services for members. Complainant provides payroll services, among other services, under its PAYCHEX mark and Respondent’s payment scheme is a direct infringement of Complainant’s rights.
Respondent is using the domain name in furtherance of a “paycheck” scheme which infringes Complainant’s exclusive rights to its PAYCHEX mark. Accordingly, the domain name was registered and is being used in bad faith. Respondent had constructive notice of, and likely actual knowledge, Complainant’s rights in PAYCHEX when the domain name was registered. Respondent continues using the domain name in bad faith by promoting its infringing conduct. Because of the inclusion of Complainant’s distinctive PAYCHEX mark in the domain name, there is no plausible circumstance in which Respondent could legitimately use the domain name for a paycheck replacement service (or scheme) without creating a likelihood of confusion with or damaging Complainant’s PAYCHEX name and mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or services. The use of Complainant’s well-known PAYCHEX Mark without the permission of Complainant is enough to determine that Respondent registered and is using the domain name in bad faith.
B. Respondent
As noted, Respondent failed to submit a formal Response in this proceeding. Forum received the following email from Respondent on April 2, 2025:
“Paychex For Moms, INC.
… my name is Carolyn DeBerry, and I am the Owner and Founder of: Paychex For Moms, INC., I recieved your Letter of Complaint, Paychex For Moms Domain name was signed-up with GoDaddy in 2016 by my Web-Designer, and Renewed in November 2021, Annually and Registered with Orbit Trademark in November of 2021, and filed with the USPTO in November 2021 (Serial # 97285870) and filed with Attorney Bill Hulsey, Trademark, of whom who have process my request for Brand.
I am submitting my personal phone # …, please call me to discuss this further! So I don’t know the business name mentioned in this Letter you submitted too me, I only know that I submitted my Domain name on Search engine during my Web-Design and filing paperwork with Orbit Trademark “who also “DID a Domain Search, as well as “GoDaddy” did a Domain Search also I was with “BlueHost” who also did a Domain Search” and with these others Business entities, too Obtain my Website, ” that during my Domain name filing “NO OTHER Domain name as my Business name showed-up, dating-back to 2016. “I also “RECIEVED” my INCOPORATION Licensed in 2024!…” look forward in speaking with you soon!”
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and 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 formal 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has shown that it has rights in the PAYCHEX mark through numerous registrations with the USPTO (e.g., Reg. No. 5,207,869, registered on May 23, 2017 for inter alia services in Class 35, namely:
“Payroll preparation; payroll processing services; payroll administration and management services; accounting services; payroll tax preparation; professional employer organization services in the nature of employee leasing, human resources business process outsourcing, and travel and expense management services; human resources management and consulting services; human resources services for others, namely, preparing employee handbooks, safety manuals, management manuals, and job descriptions, developing personnel policies and procedures for employee recruiting, selection, and performance appraisals, and assisting with recruiting, on-boarding, and management of employees; providing information in the field of human resources, employment administration, and employee management; business expense management services; employee expense management services)”.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0 “), section 1.7.c
The Panel finds Respondent’s paychexformoms.com domain name to be confusingly similar to Complainant’s PAYCHEX mark, only differing by the addition of the words “for moms” which is insufficient to distinguish the domain name from Complainant’s mark. The inconsequential “.com” generic top-level domain (“gTLD”) may be ignored under this element. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
According to the WHOIS information, the paychexformoms.com domain name was registered on May 8, 2024, many years after the registration of Complainant’s mark. It resolves to a website headlined:
“PAYCHEX For MOMS c/o Premier Signature. We’re an Income Club Membership that pays out CASH Commissions… A money making Breakthrough that provides you “GUARANTEED” RESULTS! There’s absolutely “NO WORK On Your Part!” JOIN TODAY”.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the paychexformoms.com domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”):
“4.8 May a panel perform independent research in assessing the case merits?
Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.”
Respondent’s informal email to Forum claims that she filed a trademark application with the USPTO in 2021, Serial No. 972858870. The Panel has conducted a search of the USPTO database, which shows that Application Serial No. 972858870 is awaiting examination. It was filed on February 25, 2022 in the name of “Carolyn Deberry dba Paychex for Moms LLC” in Class 35 for:
“Cooperative advertising and marketing services by way of solicitation, customer service and providing marketing information via web sites on a global computer network”.
The Panel considers the name in which the application was filed to be evidence that Respondent, as an individual, has been doing business as and is commonly known by the domain name, even though Respondent has acquired no trademark or service mark rights, and accordingly has acquired rights to or legitimate interests in the domain name within the ambit of Policy ¶ 4(c)(ii).
The Panel finds that Respondent has rights or legitimate interests in respect of the domain name.
Complainant has not established this element.
Registration and Use in Bad Faith
In light of the Panel’s finding in relation to the second element, it is unnecessary to consider this element.
The proper forum to resolve Complainant’s allegations of trademark infringement is a court with relevant jurisdiction.
DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the paychexformoms.com domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: April 12, 2025
