Adobe Inc. v. mahdi pourzaferani / FiveM Store
Claim Number: FA2103001935199
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is mahdi pourzaferani / FiveM Store (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobe-store.com>, registered with 1API GmbH.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 2, 2021; the Forum received payment on March 3, 2021.
On March 4, 2021, 1API GmbH; confirmed by e-mail to the Forum that the <adobe-store.com> domain name is registered with 1API GmbH; and that Respondent is the current registrant of the name. 1API GmbH; has verified that Respondent is bound by the 1API GmbH; 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 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2021 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@adobe-store.com. Also on March 8, 2021, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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" 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, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Adobe Inc., offers numerous computer software programs for creatives and professionals.
Complainant has rights in the ADOBE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Complainant further argues that it has established common law rights in the ADOBE STORE mark. Respondent’s <adobe-store.com> domain name is confusingly similar to Complainant’s ADOBE mark, merely adding a hyphen, the generic term “store” along with the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <adobe-store.com> domain name as it is not commonly known by the at-issue domain name and is neither an authorized user nor licensee of the ADOBE mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. Instead, Respondent uses the domain name to sell software which directly competes with Complainant’s own products.
Respondent registered and uses the <adobe-store.com> domain name in bad faith. Respondent diverts internet users from Complainant’s business to its own commercial website, where it sells software which competes directly with Complainant’s own products. Complainant also points to Respondent as having a history of bad faith domain name registration. Further, Respondent engaged in typosquatting when registering the disputed domain name, as it wholly incorporates the ADOBE STORE mark and merely adds a hyphen within the mark. Finally, Respondent possessed actual knowledge of Complainant’s rights in the ADOBE and ADOBE STORE marks prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the ADOBE mark.
Respondent has not been authorized to use Complainant’s trademark.
Respondent registered the at-issue domain name after Complainant acquired rights in ADOBE.
Respondent uses the at-issue domain name to address a website that offers products for sale that compete with Complainant’s product line.
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."
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 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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the ADOBE mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain name contains Complainant’s ADOBE trademark followed by a hyphen and the generic term “store,” with all followed by the top level domain name “.com.” The slight differences between Respondent’s <adobe-store.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that the <adobe-store.com> domain name is confusingly similar to Complainant’s ADOBE mark. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
The WHOIS information for <adobe-store.com> ultimately indicates that “mahdi pourzaferani / FiveM Store” is the domain name’s registrant and there is nothing in the record indicating that Respondent might otherwise be known by the <adobe-store.com> domain name. Given the foregoing, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s confusingly similar domain name addresses a website that offers software products for sale that compete with products offered under the ADOBE trademark. The website also includes a banner displaying ADOBE logos and dropdown menus likewise displaying ADOBE marks. Respondent’s use of the <adobe-store.com> domain name to compete with Complainant is not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent’s <adobe-store.com> domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present that compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent uses its confusingly similar <adobe-store.com> domain name to compete with Complainant’s business by exploiting the confusion between Complainant’s mark and Respondent’s domain name to direct internet users to Respondent’s <adobe-store.com> website. The Panel thus finds that Respondent registered and used the <adobe-store.com> domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Next, Respondent has been previously associated with at least five other domain names that wholly incorporate the trademarks of two entities, both of which are software companies like Adobe. Respondent’s pattern of bad faith domain name registration is suggestive of Respondent’s bad faith in the instant proceeding pursuant to Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”).
Respondent is also engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark or domain name belonging to another, and then uses the string in a domain name wishing and hoping that internet users will accidentally type the malformed string when searching for products or services associated with the target trademark, and/or will otherwise confuse the misspelled trademark laden domain name with the target trademark or related domain name. Here, Respondent inserts a hyphen into Complainant’s <adobestore.com> domain name, one of Complainant’s official domain names, and uses the intentional misspelling to inappropriately capitalize on Complainant’s ADOBE mark. Respondent’s typosquatting, in itself, is evidence of Policy ¶ 4(a)(iii) bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).
Finally, Respondent registered the <adobe-store.com> domain name knowing that Complainant had trademark rights in ADOBE. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from the liberal use of Complainant’s trademarks on the <adobe-store.com> website, and from Respondent’s offering of products for sale via such website that compete with those products offered by Complainant. The Panel thus finds that Respondent intentionally registered the at-issue domain name to improperly exploit its misappropriated trademark value, rather than for some benign reason, and further that Respondent’s prior knowledge of Complainant's trademark demonstrates that Respondent registered and used its <adobe-store.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adobe-store.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 1, 2021
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