(and fails) to shoehorn trademark dispute into UDRP — Paychex tries

The payroll firm has a legitimate reason to go following this domain, but it doesn’t qualify as cybersquatting under the UDRP.

Payroll and Human Resources firm Paychex (NASDAQ: PAYX) has failed to take down a website that uses the Paychex brand. The dispute is an example of a firm trying to use the Uniform Domain Name Dispute Resolution Policy (UDRP), which is designed to combat cybersquatting, to settle a trademark dispute.

The firm filed the dispute against PaychexForMoms .com. The site describes itself as a “Women Christian Downline Network Organization.” I can’t tell exactly how it works, but given the description that it offers “A money making Breakthrough that provides you “GUARANTEED” results! There’s absolutely “NO WORK On Your Part!”, and promises a payback greater than you make, one could surmise that it’s basically a pyramid scheme.

What seems clear from the domain registrant’s non-formal response is that she has no idea who the firm Paychex is and didn’t register the domain to trade off its brand:

…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!”

Given the domain registrant’s activities around the brand, it’s clear that she didn’t register the domain to cybersquat on Paychex’s brand. She’s using the domain name for her business.

So while Paychex might have a legitimate trademark dispute with the registrant, it doesn’t qualify as cybersquatting under UDRP.

Panelist Alan Limbury noted, “The proper forum to resolve Complainant’s allegations of trademark infringement is a court with relevant jurisdiction.”

Nixon Peabody LLP represented Paychex.