Adobe Systems Incorporated v. andreas karlsen
Claim Number: FA1710001755865
Complainant is Adobe Systems Incorporated (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is andreas karlsen (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobemax2017.org>, registered with GoDaddy.com, 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 October 26, 2017; the Forum received payment on October 26, 2017.
On October 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adobemax2017.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 October 31, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 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@adobemax2017.org. Also on October 31, 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 November 22, 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 uses its ADOBE mark in connection with various computer software related offerings and has used the ADOBE MAX mark in connection with its annual conference, held since 2003, to promote Complainant’s latest releases in computer design and development industries. Complainant registered the ADOBE mark with the United States Patent and Trademark Office (“USPTO”) in 1988 (Reg. No. 1,475,793, registered Feb. 9, 1988).
2. Respondent’s <adobemax2017.org>[1] is confusingly similar to Complainant’s ADOBE and ADOBE MAX marks because the domain name incorporates the marks in their entirety while adding the descriptive term “2017” and the “.com” generic top-level domain (“gTLD”).
3. Respondent has no rights or legitimate interests in the <adobemax2017.org> domain name. There is no evidence in the WHOIS information to suggest that Respondent is known by the <adobemax2017.org> domain name. Additionally, Respondent has never received any authorization or license from Complainant to use the ADOBE or ADOBE MAX marks.
4. Respondent is not using and has not used the <adobemax2017.org> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or otherwise fair use. Rather, the domain name initially diverted internet users to a website offering hotel reservations for respondent’s own commercial gain. Currently, Respondent uses the domain to resolve to a webpage designed to monetize the domain through click-through fees associated with hyperlinks displayed on the web page.
5. Respondent registered and uses the <adobemax2017.org> domain name in bad faith. Respondent benefits from confusion created by Respondent’s use of a domain that wholly incorporates Complainant’s ADOBE MAX mark. Respondent commercially benefits from the <adobemax2017.org> domain name by diverting Internet users otherwise seeking Complainant. Respondent had actual knowledge of Complainant’s rights in the ADOBE marks prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ADOBE mark. Respondent’s domain name is confusingly similar to Complainant’s ADOBE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <adobemax2017.org> 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 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 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 has rights in the ADOBE mark based upon registration with the USPTO (Reg. No. 1,475,793, registered Feb. 9, 1988). Registration of a mark with the USPTO is sufficient to establish rights in said mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i)). . . .”). The Panel therefore finds Complainant has rights in the ADOBE mark.
Wholly appropriating a complainant’s mark, adding a descriptive term, and adding a gTLD are insufficient measures to defeat a test for confusing similarity pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Here, Respondent’s <adobemax2017.org> domain name incorporates Complainant’s ADOBE mark while adding the descriptive term “max2017” and the “.org” gTLD. The descriptive term ADOBE MAX refers to the annual conference held to promote Complainant’s latest releases in the computer design and development industries. The Panel therefore finds Respondent’s <adobemax2017.org> domain name to be confusingly similar to Complainant’s ADOBE marks.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <adobemax2017.org> 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 is not commonly known by the <adobemax2017.org> domain name. The WHOIS information can support a finding that a respondent is not commonly known by a domain name. Further, a lack of authorization from a complainant for a respondent’s use of the complainant’s mark can similarly reveal that a respondent is not commonly known by a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information of record lists registrant as “andreas karlsen.” Further, Complainant has provided evidence that it has never authorized or licensed Respondent to use the ADOBE mark. Thus, the Panel agrees with Complainant and finds that Respondent is not commonly known by the domain name.
Next, Complainant argues Respondent is not using the <adobemax2017.org> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Diverting internet users to a website unrelated to a complainant’s mark for a respondent’s commercial gain through pay-per-click links demonstrates that a respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Respondent’s initial use of <adobemax2017.org> diverted internet users to a website offering hotel reservations for Respondent’s own commercial gain. Currently, Respondent uses the domain name to resolve to a webpage containing pay-per-click hyperlinks presumably for Respondent’s commercial gain. The Panel agrees with Complainant and finds Respondent failed to use the <adobemax2017.org> domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii) and thus lacks rights and legitimate interests in the domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent commercially benefits from the <adobemax2017.org> domain name by diverting Internet users otherwise seeking Complainant to Respondent’s website containing pay-per-click advertising for Respondent’s presumed benefit. The unauthorized use of a domain name which incorporates a trademark of another to divert Internet traffic for commercial gain is sufficient for a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA1403001549084 (Forum April 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Here, Respondent’s <adobemax2017.org> domain name resolves to a collection of hyperlinks related to Complainant’s business that Respondent presumably profits from. The Panel agrees with Complainant and finds Respondent registered and used the domain name in bad faith.
Finally, Complainant argues Respondent had actual knowledge of Complainant’s rights in the ADOBE mark prior to registration of the <adobemax2017.org> domain name. Actual knowledge can be determined from the domain name and the use made of it pursuant to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant argues Respondent’s use of the ADOBE mark and the incorporation of the “max2017” reference to Complainant’s annual conference, indicates Respondent’s knowledge of the Complainant’s rights in the ADOBE mark. The Panel agrees and finds Respondent registered the <adobemax2017.org> domain name in bad faith.
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 <adobemax2017.org> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 27, 2017
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