Adobe Inc. v. DOMAIN IS FOR SALE AT WWW.DAN.COM ---- / DOMAIN ADMINISTRATOR
Claim Number: FA2201001979236
Complainant is Adobe Inc. (“Complainant”), represented by Vicki Nee of Perkins Coie LLP, District of Columbia, USA. Respondent is DOMAIN IS FOR SALE AT WWW.DAN.COM ---- / DOMAIN ADMINISTRATOR (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <creativecloudexpress.com>, (‘the Domain Name’) registered with Dynadot, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2022; the Forum received payment on January 5, 2022.
On January 10, 2022, Dynadot, LLC confirmed by e-mail to the Forum that the <creativecloudexpress.com> Domain Name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 January 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2022 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@creativecloudexpress.com. Also on January 11, 2022, 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 February 7, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark CREATIVE CLOUD registered in the USA for computer software with first use recorded as 2012. Complainant filed a federal trademark application for the CREATIVE CLOUD EXPRESS mark on August 18, 2021, three days before Respondent registered the Domain Name.
The Domain Name is confusingly similar to the Complainant’s CREATIVE CLOUD registered trade mark, adding only ‘express’ (reflecting the Complainant’s CREATIVE CLOUD EXPRESS for which it has applied for trade mark registration) and a gTLD “.com” which does not prevent said confusing similarity. It is also identical to the Complainant’s CREATIVE CLOUD EXPRESS unregistered mark save for the gTLD.
The Respondent does not have any rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The Domain Name has been offered for sale for US$ 990. The Respondent has registered the Domain Name with actual knowledge of the Complainant’s rights in order to sell the Domain Name for a sum in excess of registration costs which is registration and use in bad faith under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark CREATIVE CLOUD registered in the USA for computer software with first use recorded as 2012. Complainant filed a federal trademark application for the CREATIVE CLOUD EXPRESS mark on August 18, 2021, three days before Respondent registered the Domain Name.
The Domain Name has been offered for sale generally for $990.
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 Domain Name in this Complaint combines the Complainant’s CREATIVE CLOUD mark (registered in the USA for computer software with first use recorded as 2012) the generic term ‘express’ and the gTLD “.com”.
Panels have routinely held that the addition of a generic word to a complainant’s trade mark does not prevent confusing similarity between a domain name and the complainant’s mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).). Accordingly the Panel agrees that the addition of the generic term ‘express’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's CREATIVE CLOUD trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish the Domain Name from the Complainant’s CREATIVE CLOUD mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.
Rights or Legitimate Interests
The Respondent has not answered this Complaint to explain the background to the registration of the Domain Name and is not authorized by the Complainant. The Respondent does not appear to be commonly known by the Domain Name. 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 Domain Name containing the Complainant’s CREATIVE CLOUD mark has been offered for sale generally for a sum in excess of registration costs which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint and has not explained why it should be entitled to register a domain name including the Complainant’s mark which has a reputation for computer software (and reflecting the Complainant’s CREATIVE CLOUD EXPRESS mark for which it had filed a US trade mark application three days earlier) and a gTLD. The timing of the registration of the Domain Name three days after the Complainant filed to register its CREATIVE CLOUD EXPRESS trade mark in the USA demonstrates opportunistic bad faith.
Further the Domain Name containing the Complainant’s marks has been offered for sale generally for a sum in excess of costs of registration of the Domain Name. 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).”) See Deutsche Lufthansa AG v. Kenechukwu Okoli, FA 1821759 (Forum Jan. 13, 2019) (“The domain name’s website listed the domain name for sale for $9,150. Respondent also contacted Complainant directly to offer the domain name for sale. Doing so suggests bad faith registration and use of the <lufthansamiles.com> domain name pursuant to Policy ¶ 4(b)(i).”
As such, the Panel holds that the Complainant has made out its case that the Domain Name was registered and used in bad faith primarily for the purposes of sale for profit and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <creativecloudexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
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