Adobe Inc. v. Hulmiho Ukolen
Claim Number: FA2202001984933
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Hulmiho Ukolen (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <photoshop-adobe.com> (the “disputed domain name”), registered with Gransy, s.r.o. (the “Registrar”).
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.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 18, 2022; the Forum received payment on February 18, 2022.
On February 22, 2022, the Registrar confirmed by e-mail to the Forum that the <photoshop-adobe.com> disputed domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Gransy, s.r.o. 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 February 22, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 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@photoshop-adobe.com. Also on February 22, 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 March 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the ADOBE and PHOTOSHOP trademarks through its registration of various trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g., ADOBE, United States Trademark Registration No. 1,475,793, registered on February 9, 1988, in international class 9; PHOTOSHOP, United States Trademark Registration No. 1,850,242, registered on August 16, 1994, in international class 9; and ADOBE PHOTOSHOP, United States Trademark Registration No. 1,651,380, registered on July 23, 1991, in international class 9) (hereinafter collectively referred to as the “ADOBE Mark”, or “PHOTOSHOP Mark”, or “ADOBE PHOTOSHOP Mark”).
Complainant claims that its ADOBE PHOTOSHOP Mark has been used in commerce in connection with various computer software-related offerings for more than 30 years. The ADOBE Mark has been used in commerce since at least as early as 1986 in the United States, and the PHOTOSHOP Mark has been used in commerce since at least as early as 1990 in the United States. Complainant further claims that it has spent significant time, money and resources promoting its ADOBE PHOTOSHOP Mark and, as a result, consumers have come to associate the ADOBE Mark, the PHOTOSHOP Mark, and the ADOBE PHOTOSHOP Mark exclusively with Complainant and its high-quality goods and services.
Complainant further contends that Respondent’s <photoshop-adobe.com> disputed domain name is confusingly similar to Complainant’s ADOBE PHOTOSHOP Mark since Respondent uses the trademark, merely adding a hyphen between the “ADOBE Mark” and the “PHOTOSHOP Mark”, followed by the “.com” generic top-level domain (“gTLD”).
Complainant also contends that Respondent lacks rights or legitimate interests in the <photoshop-adobe.com> disputed domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the ADOBE PHOTOSHOP Mark, and that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent uses the disputed domain name to resolve to a parked landing page that offers pay-per-click hyperlinks.
Finally, Complainant asserts that Respondent registered and used the <photoshop-adobe.com> disputed domain name in bad faith as Respondent had actual knowledge of the ADOBE PHOTOSHOP Mark when registering the disputed domain name and that Respondent has engaged in a pattern of bad faith registration as Respondent has been subject to previous UDRP decisions.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has rights in the ADOBE PHOTOSHOP Mark based on its trademark registrations with the USPTO for the ADOBE Mark, the PHOTOSHOP Mark, and the ADOBE PHOTOSHOP Mark. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). In addition, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ADOBE PHOTOSHOP Mark, that Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that Complainant has rights in the ADOBE PHOTOSHOP Mark under Policy ¶ 4(a)(i) based upon its registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a mark per the Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ADOBE, PHOTOSHOP, and ADOBE PHOTOSHOP Mark per Policy ¶ 4(a)(i). Registration of a disputed domain name that, as here, incorporates two marks, or uses one mark, and then adds a hyphen, followed by a gTLD does not distinguish the disputed domain name from the trademark per Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (finding the combination of a complainant’s marks does not allow a respondent to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)), see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum August 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.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum April 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”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name or any name similar to it. Complainant has not authorized, licensed, or otherwise permitted Respondent to use the ADOBE PHOTOSHOP Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(ii) based upon Respondent’s pattern of bad faith domain name registration. Evidence of previous UDRP decisions against a respondent establishes a pattern of bad faith registration and creates a presumption of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s 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 has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy ¶ 4(b)(ii). Here, Complainant has provided the Panel with previous UDRP cases in which Respondent was the named respondent in those cases. Therefore, the Panel concludes that Respondent has engaged in a pattern of bad faith.
Second, the Panel finds that Respondent registered and used the <photoshop-adobe.com> disputed domain name in bad faith as it resolves to a parked webpage that offers pay-per-click hyperlinks. Use of a disputed domain name to resolve to a parked webpage with various hyperlinks, including some that compete with a complainant’s business may be evidence of bad faith per Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Respondent's use of the disputed domain name to resolve to third party, sponsored hyperlinks, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv). Here, Complainant has provided the Panel with a copy of Respondent’s <photoshop-adobe.com> disputed domain name’s resolving webpage that shows links to sponsored services that compete with Complainant’s ADOBE PHOTOSHOP Mark.
Third, the ADOBE PHOTOSHOP Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the ADOBE PHOTOSHOP Mark, and this constitutes bad faith under Policy ¶ 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its ADOBE PHOTOSHOP Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar domain name is sufficient to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <photoshop-adobe.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: March 28, 2022
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