Adobe Inc. v. wang jin fa
Claim Number: FA2204001991682
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is wang jin fa (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobe-upgrade.com>, registered with DNSPod, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her 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 April 8, 2022; the Forum received payment on April 8, 2022.
On April 12, 2022, DNSPod, Inc. confirmed by e-mail to the Forum that the <adobe-upgrade.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, 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 April 13, 2022, the Forum served the Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of May 3, 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@adobe-upgrade.com. Also on April 13, 2022, the Chinese and English language 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 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.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case including Respondent’s failure to respond, the Panel finds that the proceeding should be in English.
A. Complainant
Complainant uses its ADOBE mark in association with various computer software-related offerings.
Complainant maintains registration of its ADOBE mark with the United States Patent and trademark Office (USPTO) and with authorities in China.
The <adobe-upgrade.com> domain name is identical or confusingly similar to Complainant’s ADOBE mark because it incorporates Complainant’s ADOBE mark, while adding in a hyphen, the descriptive term “upgrade”, and the “.com” generic top-level domain (“gTLD”) to form a domain name.
Respondent does not have rights or legitimate interests in the <adobe-upgrade.com> domain name because Respondent is not commonly known by the domain name nor has Respondent been authorized to use Complainant’s ADOBE mark. Respondent is not using the domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent uses the domain name to distribute unauthorized copies of Complainant’s discontinued software.
Respondent registered and uses the <adobe-upgrade.com> domain name in bad faith because Respondent offers Complainant’s software in an attempt to distribute alleged malware. Respondent further has previously engaged in a pattern of bad faith registration because Respondent is the owner of another domain name utilizing Complainant’s FLASH mark. Respondent acted with actual knowledge of Complainant’s rights in the ADOBE mark due to the fame of Complainant’s mark and purportedly offering Complainant’s own products.
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 unauthorized ADOBE products for sale and facilitates the distribution of malware.
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 and/or the CTO 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 “upgrade” with all followed by the top level domain name “.com.” The differences between Respondent’s <adobe-upgrade.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-upgrade.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-upgrade.com> ultimately indicates that “wang jin fa” is the domain name’s registrant and there is nothing in the record indicating that Respondent might otherwise be known by the <adobe-upgrade.com> domain name or by ADOBE. 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 displaying Complainant’s ADOBE mark as well as other trademarks owned by Complainant. There, Respondent pretends to offer Complainant’s discontinued FLASH software. In fact, Respondent appears to actually be peddling malware rather than Complainant’s software. Respondent’s use of the <adobe-upgrade.com> domain name to distribute malware is in no way 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 Hilton Hotels Corp. v. Padonack, FA 1043687 (Forum Sept. 6, 2007) (holding that the use of a disputed domain name to host a website that attempted to download a virus when accessed did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name). Even if Respondent actually offered Complainant’s discontinued software there would still be no basis for finding such use to constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), a non-commercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
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-upgrade.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 the at-issue domain name to address a website that pretends to offer Complainant’s discontinued software. In fact, Respondent is dispensing malware to unsuspecting website visitors. Doing so demonstrates Respondent’s bad faith per Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products).
Next, Respondent registered an additional domain name containing another one of Complainant’s trademarks. To wit, Respondent registered <flash-upgrade.cn> which is clearly confusingly similar to Complainant’s well-known FLASH trademark. Respondent’s registration of multiple confusingly similar domain names indicates Respondent’s bad faith under Policy ¶ 4(b)(ii). See Deutsche Telekom AG v. Dana Dudones, FA 1798440 (Forum Sept. 7, 2018) (“Here the same registrant registered the seven disputed domain names over a two-day period [. . .] Thus the Panel finds that Respondent’s registration of multiple domain names in the present case evinces bad faith registration under Policy ¶ 4(b)(ii).”).
Moreover, Respondent registered the <adobe-upgrade.com> domain name knowing that Complainant had trademark rights in ADOBE. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from Respondent’s feigned offering of Complainant’s discontinued software on Respondent’s <adobe-upgrade.com> website. Respondent’s prior knowledge of Complainant's trademark further demonstrates that Respondent registered and used <adobe-upgrade.com> 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) (“[T]he 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-upgrade.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 11, 2022
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