Adobe Inc. v. Milen Radumilo
Claim Number: FA2110001967819
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 NAMES
The domain names at issue are <acrobat-reader.us>, <adobe-acrobat-reader.us>, <adobe-cloud.us>, <adobe-photoshop.us>, <adobe-support.us>, <adobetool.us>, <adoe.us>, <homeindesign.us>, <marketo.us>, <mixamo.us>, <photoshopportable.us>, <www-adobe-com.us>, and <www-adobe.us>, registered with CommuniGal Communication Ltd. and <adobe-flash-player.us> registered with Dynadot, LLC.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 5, 2021; the Forum received payment on October 5, 2021.
On October 7, 2021 and October 8, 2021, CommuniGal Communication Ltd. and Dynadot, LLC confirmed by e-mail to the Forum that the <acrobat-reader.us>, <adobe-acrobat-reader.us>, <adobe-cloud.us>, <adobe-flash-player.us>, <adobe-photoshop.us>, <adobe-support.us>, <adobetool.us>, <adoe.us>, <homeindesign.us>, <marketo.us>, <mixamo.us>, <photoshopportable.us>, <www-adobe-com.us>, and <www-adobe.us> domain names are registered with CommuniGal Communication Ltd. and Dynadot, LLC and that Respondent is the current registrant of the names. CommuniGal Communication Ltd. and Dynadot, LLC have verified that Respondent is bound by the CommuniGal Communication Ltd. and Dynadot, LLC registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On October 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@acrobat-reader.us, postmaster@adobe-acrobat-reader.us, postmaster@adobe-cloud.us, postmaster@adobe-flash-player.us, postmaster@adobe-photoshop.us, postmaster@adobe-support.us, postmaster@adobetool.us, postmaster@adoe.us, postmaster@homeindesign.us, postmaster@marketo.us, postmaster@mixamo.us, postmaster@photoshopportable.us, postmaster@www-adobe-com.us, postmaster@www-adobe.us. Also on October 12, 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 November 8, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 usTLD Dispute Resolution Policy (“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 usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Adobe Inc., uses its marks in connection with various computer software-related offerings. Complainant has rights in the ADOBE, ACROBAT, PHOTOSHOP, INDESIGN, MARKETO, and MIXAMO marks based upon registration with the United States Patent and Trademark Office (“USPTO”). Respondent’s <acrobat-reader.us>, <adobe-acrobat-reader.us>, <adobe-cloud.us>, <adobe-flash-player.us>, <adobe-photoshop.us>, <adobe-support.us>, <adobetool.us>, <adoe.us>, <homeindesign.us>, <marketo.us>, <mixamo.us>, <photoshopportable.us>, <www-adobe-com.us>, and <www-adobe.us> domain names are each confusingly similar to one or more of Complainant’s marks as they each wholly incorporate at least one of Complainant’s marks, merely adding hyphens, generic or descriptive terms, and/or the “.us” country-code top-level domain (“ccTLD”).
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use any of Complainant’s marks. Additionally, Respondent does not make use any of the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, leverages Complainant’s goodwill to redirect visitors to the domains to various commercial/monetized content.
Respondent registered or uses the disputed domain name in bad faith. Respondent offers the disputed domain names for sale at well above their costs of registration. Respondent is also a prolific cybersquatter with a history of registering and using infringing domain names. Additionally, Respondent uses the disputed domains to divert Internet traffic to various monetized content for commercial gain. Finally, Respondent had actual knowledge of Complainant’s rights in the marks when it registered the disputed domain names
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, based upon the uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <acrobat-reader.us>, <adobe-acrobat-reader.us>, <adobe-cloud.us>, <adobe-flash-player.us>, <adobe-photoshop.us>, <adobe-support.us>, <adobetool.us>, <adoe.us>, <homeindesign.us>, <marketo.us>, <mixamo.us>, <photoshopportable.us>, <www-adobe-com.us>, and <www-adobe.us> domain names.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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”).
Complainant has rights in the ADOBE, ACROBAT, PHOTOSHOP, INDESIGN, MARKETO, and MIXAMO marks based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides evidence of its USPTO registrations (e.g., ADOBE Reg. No. 1,475,793, registered Feb. 9, 1988; ACROBAT Reg. No. 1,833,219, registered Apr. 26, 1994; PHOTOSHOP Reg. No. 1,850,242, registered Aug. 16, 1994; INDESIGN Reg. No. 2,439,079, registered Mar. 27, 2001; MARKETO Reg. No. 3,369,973, registered Jan. 15, 2008; MIXAMO Reg. No. 3,794,372, registered May 25, 2010). The Panel finds that Complainant has rights in the relevant marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s domain names are each confusingly similar to one or more of Complainant’s marks as they each wholly incorporate at least one of Complainant’s marks, merely adding hyphens, generic or descriptive terms, and/or the “.us” ccTLD. Per Policy ¶ 4(a)(i), minor additions such as hyphens, generic/descriptive terms, and TLDs are generally insufficient to negate confusing similarity between a domain name and the mark it incorporates. 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.”); see also EMVCo, LLC c/o Visa Holdings v. Stephanie Wells, FA 1617890 (Forum June 11, 2015) (asserting, “‘ccTLDs’ are irrelevant to Policy ¶ 4(a)(i) analysis.”). The Panel finds that the disputed domain names are all confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”). The Panel finds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names and is not licensed or authorized to use any of Complainant’s marks. When no response is submitted and a respondent is not authorized to use a mark, WHOIS information may be used to determine whether a respondent is commonly known by a domain name per Policy ¶ 4(c)(iii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information identifies the registrant as "Milen Radumilo" and no information of record suggests that Respondent is authorized to use any of Complainant’s marks. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(iii).
The Panel finds that Respondent does not have rights in any marks similar to the disputed domain names. Lack of registration of a mark identical to a disputed domain name supports a finding that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Since there is nothing in the available evidence to suggest that Respondent has trademark rights in relevant marks, this Panel concludes that Respondent has not satisfied Policy ¶ 4(c)(i).
Additionally, Complainant contends that Respondent does not make use any of the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, but instead leverages Complainant’s goodwill to redirect visitors to various commercial/monetized content. Redirecting Internet traffic for commercial gain is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) and (iv). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy). Complainant argues that the disputed domains resolve to various commercial and otherwise monetized content unrelated to Complainant’s marks, providing screenshots of the websites resolving at each of the disputed domains. The Panel finds that Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(ii) or (iv) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant argues that Respondent registered or uses the disputed domain names in bad faith as Respondent offers the disputed domain names for sale at well above their costs of registration. A general offer to sell a disputed domain name may support a finding of bad faith per 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).”). Complainant notes that the domain names are listed for sale at various minimum offer prices, each of which is well above the cost of registration. This is evidence that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(i).
Complainant also argues that Respondent is a prolific cybersquatter with a history of registering and using infringing domain names. Previous registration of domain names incorporating third-party marks and/or UDRP decisions against a respondent may suggest bad faith pursuant to Policy ¶ 4(b)(ii). See H-D U.S.A., LLC v. zhangzongze / sweden / zhang jinxian / canada goose / harleydavidson / harley davidson, FA1410001587625 (Forum Dec. 10, 2014) (“The Panel agrees that the case relates to the same Respondent here, and Respondent’s history of bad faith suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii), especially given the presence of three domain names in this proceeding that incorporate the HARLEY-DAVIDSON mark.”). Complainant argues that Respondent owns a portfolio of thousands of domain names, many of which infringe upon third-party brands. Complainant also lists multiple UDRP decisions in which domain names were transferred from Respondent. This is evidence of bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant claims that Respondent uses the disputed domains to divert Internet traffic to various monetized content for commercial gain. Use of a disputed domain name to redirect users for commercial gain may be evidence of bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues that the disputed domains resolve to various commercial and otherwise monetized content unrelated to Complainant’s marks, providing screenshots of the websites resolving at each of the disputed domains. This is evidence that Respondent and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent had actual knowledge of Complainant’s rights in the marks when it registered the disputed domain names. Actual knowledge of a complainant’s rights in a mark supports a finding of bad faith under Policy ¶ 4(a)(iii) and may be shown by the totality of circumstances surrounding registration and use of the disputed domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Reapondent 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”). Complainant argues that the fame of Complainant’s marks and Respondent’s use of the domain names to redirect Internet traffic demonstrates that Respondent had actual knowledge of Complainant’s rights in the marks. The Panel agrees and finds Respondent registered and uses the domain names in bad faith under Policy ¶ 4(a)(iii).
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <acrobat-reader.us>, <adobe-acrobat-reader.us>, <adobe-cloud.us>, <adobe-flash-player.us>, <adobe-photoshop.us>, <adobe-support.us>, <adobetool.us>, <adoe.us>, <homeindesign.us>, <marketo.us>, <mixamo.us>, <photoshopportable.us>, <www-adobe-com.us>, and <www-adobe.us> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
November 11, 2021
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