Adobe Systems Inc. v. TYLER ROBINSON / HASZTASZ
Claim Number: FA1706001734225
Complainant is Adobe Systems Inc. (“Complainant”), represented by Craig A. Beaker of Perkins Coie, District of Columbia, USA. Respondent is TYLER ROBINSON / HASZTASZ (“Respondent”), Poland.
REGISTRAR AND <VOCOBETA.COM> DOMAIN NAME
The domain name at issue is <vocobeta.com>, registered with eNom, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 1, 2017; the Forum received payment on June 1, 2017.
On June 5, 2017, eNom, LLC confirmed by e-mail to the Forum that the <vocobeta.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 June 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2017 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@vocobeta.com. Also on June 7, 2017, 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 July 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, Adobe Systems Inc., is a computer software company. Complainant’s mark, VOCO, was first used on November 3, 2016 in connection with a state-of-the-art audio software tool that allows users to edit and create speech. Respondent’s <vocobeta.com> domain name[1] is confusingly similar to complainant’s mark as it includes the entirety of the VOCO mark in combination with the descriptive term “beta” and the generic top level domain (“gTLD”) “.com.”
2. Respondent does not have rights or legitimate interests in the <vocobeta.com> domain name. Respondent is not commonly known by the <vocobeta.com> domain name and Complainant has not granted respondent permission or license to use the VOCO mark for any purpose.
3. Respondent is not using the <vocobeta.com> domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the domain to divert users away from Complainant’s website and to redirect them to a website that appears to be affiliated with or endorsed by Complainant.
4. Respondent has registered and used the <vocobeta.com> domain name in bad faith. Respondent is using the <vocobeta.com> domain name to pass itself off as Complainant thereby creating confusion as to the affiliation Respondent has with Complainant.
5. In addition, Respondent appears to engage in a phishing scheme to collect users personal information. Finally, Respondent had actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the VOCO mark. Respondent’s domain name is confusingly similar to Complainant’s VOCO mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <vocobeta.com> domain name and that Respondent registered and uses the 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 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 un<vocobeta.com> 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims it has rights in the VOCO mark. However, Complainant acknowledges that it has not registered the VOCO mark. Registration of a mark with a governmental entity is not necessarily required to establish rights in a mark under Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Therefore, the Panel may consider whether Complainant has established rights in the VOCO mark per Policy ¶ 4(a)(i) as they may exist under the common law.
In order to establish common law rights, it must be shown by a complainant that a mark has been used in commerce to such an extent that it has established a secondary meaning. See Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015) (holding, “Relevant evidence of secondary meaning includes continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce . . . .”). Here, Complainant has provided evidence in the form of screenshots of Internet articles referencing the mark and Complainant of its use of the VOCO mark in connection with its software product. Complainant also has shown that the mark has received widespread media recognition in the form of a YouTube video referencing Complainant’s VOCO product exceeding 1,250,000 views. Further, Complainant has provided evidence that a search engine query for “voco software” returns references to Complainant’s product. Accordingly, the Panel agrees that in light of Respondent’s failure to dispute the Complaint, Complainant has set forth minimally sufficient evidence of common law rights dating back to the mark’s first use in November 2016.
Complainant next claims that Respondent’s <vocobeta.com> domain name is identical or confusingly similar to the VOCO mark as it includes the entirety of the VOCO mark in combination with the descriptive term “beta.” Respondent also adds the gTLD “.com.” The omission of spacing and the addition of a gTLD are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (“Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Similarly, the inclusion of the descriptive term “beta” in the <vocobeta.com> domain name does not mitigate the confusing similarity between <vocobeta.com> and Complainant’s VOCO mark because the domain name merely adds a generic terms to the mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where a domain name contains a complainant’s entire mark and differs only by the addition of a generic or descriptive phrase). Therefore, the Panel finds that the <vocobeta.com> domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <vocobeta.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in <vocobeta.com> as Respondent is not commonly known by the <vocobeta.com> domain name, nor has Complainant authorized Respondent to use the VOCO mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a 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 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 of record identifies Respondent as “Tyler Robinson / Hasztasz.” Additionally, the lack of evidence in the record to indicate that the Respondent had been authorized to register a domain name using Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the <vocobeta.com> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by a domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <vocobeta.com> domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the <vocobeta.com> domain name is shown by Respondent’s failure to use the domain name to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent is using the <vocobeta.com> domain name to divert users away from Complainant’s website and to redirect them to a website that appears to be affiliated with or endorsed by Complainant in order to gather users’ personal information. Because Respondent has not contradicted this claim, it is accepted by the Panel. This type of phishing scheme does not constitute a bona fide offering of goods or services. See Google Inc. v Ryan G Foo / PPA Media Services, FA 1625734 (Forum Aug. 10, 2015) (finding that the use of a domain name to perpetrate a phishing scheme evidences that a respondent lacks rights or legitimate interests in the domain name”). Complainant has provided evidence that Respondent attempts to gather users’ personal information through the “Sign Up Now” page on the resolving website. The Panel agrees that Respondent’s actions amount to a phishing scheme, and as such Respondent has not established any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has registered and used the <vocobeta.com> domain name in bad faith. Complainant argues that Respondent attempts to pass itself off as Complainant to attract users for commercial gain by creating confusion as to the source sponsorship, affiliation, or endorsement of the <vocobeta.com> domain name. Using a confusingly similar domain name to pass off as a complainant can show bad faith registration and use. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel agrees with Complainant and finds that Respondent registered and uses the <vocobeta.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent must have had actual knowledge of Complainant’s VOCO mark and business because Respondent registered the <vocobeta.com> domain name by including Complainant’s mark in its entirety along with a generic term. Moreover, Respondent registered the domain name only one month after the “roll out” of Complainant’s highly publicized new state-of-the-art audio software tool. For these reasons, the Panel concludes that Respondent registered the <vocobeta> domain name with actual knowledge of Complainant’s VOCO mark.
The Panel finds Complainant has satisfied 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 <vocobeta.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson Panelist
Dated: July 7, 2017
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