Adobe Systems Incorporated v. inewton llc. / Jason Bailey
Claim Number: FA1801001765404
Complainant is Adobe Systems Incorporated (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is inewton llc. / Jason Bailey (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 3, 2018; the Forum received payment on January 3, 2018.
On Jan 05, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2018 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@adobecustomercare.com, postmaster@adobetechsupport.org, postmaster@adobetechnicalsupport.org, postmaster@adobetechservices.com, postmaster@adobecustomersupport.com, and postmaster@adobecustomerservices.com. Also on January 10, 2018, 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 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant’s ADOBE mark has been used in commerce in connection with various computer software related offerings since at least as early as 1986 in the U.S., and Complainant has used the ADOBE logo in connection with the same offerings since at least as early as 1993. Complainant has rights in the ADOBE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988). See Compl. Ex. D. Respondent’s <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “customer care,” “tech support,” “technical support,” “tech services,” “customer support,” and “customer services” along with the “.com” and “.org” generic top-level domains (“gTLD”).
Respondent has no rights or legitimate interests in the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, all of the domain names redirect users to the webpage for the <adobecustomercare.com> domain name, which features Complainant’s mark and logo while offering Complainant’s products and services. See Compl. Ex. F.
Respondent registered and uses the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names in bad faith. Respondent commercially benefits from the disputed domain names by diverting Internet users looking for Complainant and its goods and services, creating initial interest confusion. Finally, due to the fame of Complainant’s ADOBE mark and Respondent’s use of the domain names to direct Internet users to a website displaying Complainant’s ADOBE mark and logo, along with information about Complainant’s products and services, demonstrates that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark prior to registering the domain names. See Compl. Ex. F.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that has been engaged in the business of providing various computer software related offerings since at least as early as 1986.
2. Complainant has established its registered trademark rights in the ADOBE mark by registering the same with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988).
3. Respondent registered the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names on August 10, 2017.
4. Respondent has caused the disputed domain names to resolve to the website
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the Respondents are the same person/entity as all of the domain names redirect users to the same website located at the <adobecustomercare.com> domain name. See Compl. Ex. F. Further, all of the domain names were registered on the same day, with the same registrar, and the <adobecustomercare.com> domain name shares the same name servers as three of the five domain names owned by “inewton llc,” the alleged registrant of the majority of the domain names at issue. See Compl. Ex. A.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases and the proceeding may go forward on that basis. However, the Respondents will be referred to as “Respondent” in this decision.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the ADOBE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988). See Compl. Ex. D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of 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) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ADOBE mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ADOBE mark. Complainant argues that Respondent’s <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names are identical or confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “customer care,” “tech support,” “technical support,” “tech services,” “customer support,” and “customer services” along with the “.com” and “.org” gTLD. Similar changes in a registered mark have failed to distinguish a domain name sufficiently for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the disputed domain names are confusingly similar to the ADOBE mark under Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ADOBE mark and to use it in its domain names adding only the descriptive terms “customer care,” “tech support,” “technical support,” “tech services,” “customer support,” and “customer services” which suggests that the domain names may well be domain names of Complainant;
(b) Respondent registered the domain names on August 10, 2017;
(c) Respondent has caused the domain names to resolve to the website to which the <adobecustomercare.com> domain name resolves, which features Complainant’s mark and logo while offering Complainant’s products and service;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Jason Bailey” as the registrant for the <adobecustomercare.com> domain name, and “inewton llc” as the registrant for the <adobecustomerservices.com>, <adobecustomersupport.com>, <adobetechnicalsupport.org>, <adobetechservices.com>, and <adobetechsupport.org> domain names. See Compl. Ex. A. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the ADOBE mark. Panels may use these submissions as evidence of lacking rights or legitimate interests. See 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). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii);
(f)Complainant next argues that Respondent also does not use the domain names for any bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain names redirect users to the webpage for the <adobecustomercare.com> domain name, which features Complainant’s mark and logo while offering Complainant’s products and services. Passing off to offer a complainant’s own products can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Complainant provides a screenshot of the resolving webpage, which appears to display Complainant’s logo along with purporting to offer technical support for the ADOBE brand. See Compl. Ex. F. As such, the Panel holds that Respondent attempts to pass itself off as Complainant to offer Complainant’s products and services, thus lacking rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith by commercially benefiting from the domain names by diverting Internet users looking for Complainant and its goods and services, creating initial interest confusion. Using a confusingly similar domain name to benefit commercially from the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant submits Respondent commercially benefits by offering Complainant’s own products and services on the resolving webpage. See Compl. Ex. F. Accordingly, the Panel finds that Respondent commercially benefits off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark at the time of registering the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that due to the fame of Complainant’s ADOBE mark and Respondent’s use of the domain names to direct Internet users to a website displaying Complainant’s ADOBE mark and logo, along with information about Complainant’s products and services, demonstrates that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark prior to registering the domain names. See Compl. Ex. F. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, and thus registered the domain names in bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the ADOBE mark and in view of the conduct that Respondent has
engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adobecustomercare.com>, <adobetechsupport.org>, <adobetechnicalsupport.org>, <adobetechservices.com>, <adobecustomersupport.com>, and <adobecustomerservices.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC, Panelist
Dated: February 5, 2018
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