Adobe Inc. v. Milen Radumilo
Claim Number: FA2109001966719
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobe-tutorial.com>, registered with Tucows Domains Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 28, 2021; the Forum received payment on September 28, 2021.
On September 29, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <adobe-tutorial.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 October 1, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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-tutorial.com. Also on October 1, 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 October 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 provides an array of computer software-related services. Complainant has rights in the ADOBE trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,475,793, registered on February 9, 1988). Respondent’s <adobe-tutorial.com> domain name is identical or confusingly similar to Complainant’s ADOBE trademark, as it incorporates the trademark in its entirety, only adding a hyphen, the generic word “tutorial” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <adobe-tutorial.com> domain name. Complainant has not authorized or licensed Respondent to use the ADOBE trademark, nor is Respondent commonly known by the disputed domain name. Further, Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving website presents users with unrelated hyperlinks.
Respondent registered and uses the <adobe-tutorial.com> domain name in bad faith. The disputed domain name is currently for sale for a price well above the cost of registration. Respondent has also been found to have used other disputed domain names in bad faith. Further, Respondent attempts to attract users for commercial gain, presenting users with unrelated hyperlinks that divert from Complainant’s business. Finally, Respondent had actual notice of Complainant’s rights in the trademark, evidenced by the notoriety and fame of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,475,793 ADOBE (word), registered February 9, 1988 for goods in class 9;
No. 1,988,712 ADOBE (word), registered July 23, 1996 for services in class 42;
No. 3,029,061 ADOBE (word), registered January 10, 2012 for services in class 41;
No. 4,083,556 ADOBE (word), registered January 10, 2012 for services in class 42;
No. 4,087,358 ADOBE (word), registered January 17, 2012 for services in class 42; and
No. 4,091,792 ADOBE (word), registered January 24, 2012 for services in class 42.
The Complainant has also provided evidence of national Canadian trademark registrations, as well as an International Trademark Registration for the word trademark ADOBE.
The disputed <adobe-tutorial.com> domain name was registered on August 31, 2021.
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 Complainant asserts rights in the ADOBE trademark through its registration of the trademark with mutliple trademark agencies, including the USPTO (e.g., Reg. No. 1,475,793, registered on February 9, 1988). Registering a trademark with trademark agencies around the world, including the USPTO, is sufficient to establish rights in a trademark under Policy ¶ 4(a)(i). See Recreational Equipment, Inc. v. Liu Chan Yuan, FA 2107001954773 (Forum Aug. 9, 2021) (“Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i)”); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) (“Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world.”). Therefore, the Panel finds that Complainant has sufficiently established rights in the trademark.
The Complainant argues that Respondent’s <adobe-tutorial.com> domain name is identical or confusingly similar to Complainant’s ADOBE trademark, as it incorporates the trademark in its entirety, only adding a hyphen, a general term and the “.com” gTLD. The addition of a hyphen and a gTLD does not sufficiently differentiate a disputed domain name from a mark. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Additionally, adding a generic term to the trademark that is related to the services provided is not sufficient to distinguish the disputed domain name from the mark. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). In this case, the added term “tutorial” means a paper, book, film, or computer program that provides practical information about a specific subject, and will therefore only indicate that the disputed domain name is for a special informative web site, provided by the Complainant, and related to the goods and services offered under the ADOBE trademark. The Panel therefore finds that Respondent’s domain name is confusingly similar to Complainant’s ADOBE trademark.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant first contends that Respondent lacks rights and legitimate interests in the <adobe-tutorial.com> domain name because Respondent is not authorized to use the ADOBE trademark, nor is Respondent commonly known by the disputed domain name. When no response is submitted, relevant WHOIS information may demonstrate that a respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Furthermore, lack of authorization to use a trademark serves as further indication that a respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS Information shows Respondent is known as “Milen Radumilo” and there is no evidence to suggest that Complainant authorized Respondent to use the ADOBE trademark in any way. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <adobe-tutorial.com> domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website presents users with hyperlinks unrelated to Complainant’s business. Past panels have agreed that using a disputed domain name to divert users to a website that offers unrelated hyperlinks is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Here, the resolving website clearly redirects users to miscellaneous websites, unrelated to Complainant’s business. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods and services or noncommercial or fair use.
The Complainant asserts that Respondent acted in bad faith because the <adobe-tutorial.com> domain name is currently for sale. Offering a disputed domain name for sale may evidence bad faith pursuant to Policy ¶ 4(b)(i). See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”). In the present case, Complainant provides evidence that the disputed domain name is for sale, and the Panel finds that Respondent’s attempt to sell the disputed domain name – clearly incorporating the Complainant’s trademark - evidences bad faith.
Complainant also contends that Respondent has been previously found to act in bad faith in other cases. A respondent’s history of bad cybersquatting can indeed be indicative for upcoming/present cases. See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith). Therefore, as the Panel agrees that Respondent has a long history of cybersquatting, the Panel finds this as one of the basis for determination of bad faith.
Additionally, Complainant argues the Respondent further acted in bad faith because the <adobe-tutorial.com> domain name resolves to a website that confuses users, presenting them with unrelated hyperlinks, potentially for Respondent’s own commercial gain. Using a disputed domain name to host unrelated hyperlinks for the Respondent’s own commercial gain may serve as an indication of bad faith, if the said domain name includes, or is a version of, someone else’s trademark. See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). In this case, as mentioned, Complainant has provided a screenshot of the resolving website, where the unrelated third-party hyperlinks are presented. The Panel therefore finds that Respondent financially benefits from hosting these third-party hyperlinks, and finds that Respondent acted in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent acted in bad faith because Respondent had actual notice of Complainant’s rights in the ADOBE trademark. Past panels have looked at the use of the complainant’s mark, as well as the notoriety of complainant’s mark to determine the respondent’s actual notice. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). In the present case, Respondent registered the disputed domain name incorporating Complainant’s trademark in its entirety, and Complainant provides evidence of the notoriety and fame of the trademark. The Panel therefore agrees that Respondent had actual notice of Complainant’s rights in the mark, and finds that Respondent acted in bad faith.
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-tutorial.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: November 4, 2021
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