Adobe Inc. v. Adrian Coroama
Claim Number: FA1902001829809
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington DC, USA. Respondent is Adrian Coroama (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <adobedreamweaver.com>, <adobeflash.com>, <flashadobe.com>, <photoshopfile.com>, and <photoshopfiles.com>, registered with NameCheap, Inc.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Ho-Hyun Nahm, Esq. (Chair), The Honorable Neil Anthony Brown QC, and The Honorable John J. Upchurch (Ret.) as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 14, 2019; the Forum received payment on February 14, 2019.
On February 14, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <adobedreamweaver.com>, <adobeflash.com>, <flashadobe.com>, <photoshopfile.com>, and <photoshopfiles.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 February 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 2019 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@adobedreamweaver.com, postmaster@adobeflash.com, postmaster@flashadobe.com, postmaster@photoshopfile.com, and postmaster@photoshopfiles.com. Also on February 19, 2019, 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.
A timely Response was received and determined to be complete on March 5, 2019.
On March 8, 2019, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Ho-Hyun Nahm, Esq. (Chair), The Honorable Neil Anthony Brown QC, and The Honorable John J. Upchurch (Ret.) as Panelists.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant’s mark ADOBE has been used in commerce in connection with various computer software-related offerings since at least as early as 1986 in the United States. Complainant has rights in the ADOBE (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988), FLASH (e.g. Reg. No. 2,852,245, registered June 15, 2004), DREAMWEAVER (e.g. Reg. No. 2,294,926, registered Nov. 30, 1999), and PHOTOSHOP (e.g. Reg. No. 1,850,242, registered Aug. 16, 1994) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Amend. Compl. Ex. D. Respondent’s <adobedreamweaver.com>, <adobeflash.com>, and <flashadobe.com> domain names are confusingly similar to Complainant’s marks as they each incorporate two of Complainant’s marks and add the “.com” generic top-level domain (“gTLD”). Respondent’s <photoshopfile.com> and <photoshopfiles.com> domain names are confusingly similar to Complainant’s PHOTOSHOP mark as they each add a generic term, either “file” or “files,” along with the “.com” gTLD.
ii) Respondent has no rights or legitimate interests in the <adobedreamweaver.com>, <adobeflash.com>, <flashadobe.com>, <photoshopfile.com>, and <photoshopfiles.com> domain names. Respondent has no license or authorization to use Complainant’s marks and is not commonly known by any of the disputed domain names or any variant of Complainant’s marks. Respondent also does not use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain names resolve to websites offering content and services that directly reference and target Complainant, and commercially benefit through fees associated with linked advertisements displayed on the sites. See Amend. Compl. Exs. F-I.
iii) Respondent registered and uses the <adobedreamweaver.com>, <adobeflash.com>, <flashadobe.com>, <photoshopfile.com>, and <photoshopfiles.com> domain names in bad faith. Respondent has shown a pattern of bad faith registration, as it also owns or has registered at least twenty-four other domain names that include Complainant’s marks, along with several other domain names incorporating other famous third-party marks. See Amend. Compl. Exs. J & K. Further, Respondent commercially benefits from the domain names by diverting Internet users looking for Complainant and its goods and services to its own web pages where it competes with Complainant by targeting Complainant’s software products and solicits third-party advertisements. See Amend. Compl. Exs. F-I. Additionally, Respondent clearly had actual knowledge of Complainant’s marks prior to registering the domain names given the fame of Complainant’s marks and Respondent’s use of the disputed domain names to direct Internet users to websites that explicitly target Complainant and users of its software products.
B. Respondent
i) Respondent’s disputed domain names all include generic dictionary terms which have meanings apart from Complainant’s use of the terms in its trademarks. Complainant does not have exclusive rights to use these terms on the Internet.
ii) Respondent does have rights and legitimate interests in the disputed domain names. Respondent makes a bona fide offering free downloads created by the community and specifically authorizing the content displayed on the resolving websites. See Resp. Ex. 3. Respondent does not profit off of these websites, has never intended to profit off the displayed content, and never intended to divert Complainant’s consumers or to tarnish Complainant’s marks. The only revenue gained by Respondent is through the advertisements displayed on the resolving domains, which only covers the expenses associated with registering the disputed domain names.
iii) Respondent did not register or use the domain names in bad faith. Respondent never intended to sell the disputed domain names to Complainant or a competitor, Respondent did not register the disputed domain names to prevent Complainant from registering the domain names themselves, Respondent does not disrupt Complainant’s business, and Respondent did not register the domain names to cause confusion among Internet users for commercial gain.
1. Respondent registered the disputed domain names on the following dates: <adobedreamweaver.com> (April 18, 2005), <adobeflash.com> (April 18, 2005), <flashadobe.com> (February 8, 2006), <photoshopfile.com> (August 7, 2007), and <photoshopfiles.com> (August 15, 2007).
2. Complainant has established rights in the ADOBE (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988), FLASH (e.g. Reg. No. 2,852,245, registered June 15, 2004), DREAMWEAVER (e.g. Reg. No. 2,294,926, registered Nov. 30, 1999), and PHOTOSHOP (e.g. Reg. No. 1,850,242, registered Aug. 16, 1994) marks through its registration of the marks with the USPTO.
3. The resolving websites associated with the <adobedreamweaver.com>, <adobeflash.com>, and <flashadobe.com> domain names make references to Complainant’s products and allowing users to display advertisements.
4. The resolving websites associated with the <photoshopfile.com> and <photoshopfiles.com> domain names display the message “Welcome to PhotoshopFiles, you are on the right website if you are looking for free Adobe Photoshop files” and display various images for users to upload, while allowing users to purchase advertisement space.
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.
Complainant claims rights in the ADOBE (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988), FLASH (e.g. Reg. No. 2,852,245, registered June 15, 2004), DREAMWEAVER (e.g. Reg. No. 2,294,926, registered Nov. 30, 1999), and PHOTOSHOP (e.g. Reg. No. 1,850,242, registered Aug. 16, 1994) marks through its registration of the marks with the USPTO. See Amend. 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, FLASH, DREAMWEAVER, and PHOTOSHOP marks for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <adobedreamweaver.com>, <adobeflash.com>, <flashadobe.com>, <photoshopfile.com>, and <photoshopfiles.com> domain names are confusingly similar to Complainant’s marks as they each contain either combine two of Complainant’s marks, add a generic term to one of Complainant’s marks, and add a gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”); see also MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Here, the <adobedreamweaver.com>, <adobeflash.com>, and <flashadobe.com> domain names each combine two of Complainant’s marks and add the “.com” gTLD, while the <photoshopfile.com> and <photoshopfiles.com> domain names each append the term “file” or “files” to the PHOTOSHOP mark along with the “.com” gTLD. The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
While Respondent contends that the disputed domain names are comprised of common and generic dictionary terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the marks and whether the disputed domain names are identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. 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 “Adrian Coroama” as the registrant, and Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain names prior to their registration, and Complainant has not given Respondent permission to use its marks for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Next, Complainant argues that the domain names resolve to websites offering content and services that directly reference and target Complainant, and commercially benefit Respondent through fees associated with linked advertisements displayed on the sites. Using a confusingly similar domain name to compete with a complainant and/or to commercially benefit through advertisements generally fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). Complainant provides screenshots of the resolving webpages associated with the disputed domain names. The <adobedreamweaver.com>, <adobeflash.com>, and <flashadobe.com> domain names display the message “Welcome to our website. We provide instant access to free resources for developers” while making references to Complainant’s products and allowing users to display advertisements. See Amend. Compl. Exs. F & G. The <photoshopfile.com> and <photoshopfiles.com> domain names display the message “Welcome to PhotoshopFiles, you are on the right website if you are looking for free Adobe Photoshop files” and display various images for users to upload, while also allowing users to purchase advertisement space. See Amend. Compl. Exs. H & I. As such, the Panel holds that Respondent’s use of the disputed domain names provides evidence of Respondent’s lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and/or (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain names.
Respondent contends that it does have rights and legitimate interests in the disputed domain names; it makes a bona fide offering of free downloads created by the community and specifically authorizing the content displayed on the resolving websites; it does not profit from these websites, has never intended to profit from the displayed content, and never intended to divert Complainant’s consumers or to tarnish Complainant’s marks; and the only revenue gained by Respondent is through the advertisements displayed on the resolving domains, which only covers the expenses associated with registering the domain names.
The Panel observes that all of the disputed domain names resolve to websites offering content and services that directly reference and target Complainant, and commercially benefit Respondent through fees associated with linked advertisements displayed on the sites. The Panel finds that using a confusingly similar domain name to compete with a complainant and/or to commercially benefit through advertisements fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent has shown a pattern of bad faith registration, as it also owns or has registered at least twenty-four other domain names that include Complainant’s marks, along with several other domain names incorporating other famous third-party marks. Respondent counter-contends that it did not register the disputed domain names to prevent Complainant from registering the domain names themselves.
A complainant may use cybersquatting arguments against a respondent to evidence bad faith under Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks). Complainant provides the registration information of the various domain names allegedly owned by Respondent, which include domain names such as <adobe.fm> and <frerrari.com>. See Amend. Compl. Exs. J & K. Accordingly, when conducting its bad faith analysis under Policy ¶ 4(b)(ii), the Panel finds that Respondent has registered numerous domain names.
Next, Complainant claims that Respondent commercially benefits from the domain names by diverting Internet users looking for Complainant and its goods and services to its own web pages where it competes with Complainant by targeting Complainant’s software products and solicits third-party advertisements. Respondent rebuts that it does not disrupt Complainant’s business, and it did not register the disputed domain names to cause confusion among Internet users for commercial gain.
Using a disputed domain name to trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”). Complainant provides screenshots of the resolving web pages associated with the disputed domain names. The <adobedreamweaver.com>, <adobeflash.com>, and <flashadobe.com> domain names display the message “Welcome to our website. We provide instant access to free resources for developers” while making references to Complainant’s products and allowing users to purchase advertisements. See Amend. Compl. Exs. F & G. The <photoshopfile.com> and <photoshopfiles.com> domain names display the message “Welcome to PhotoshopFiles, you are on the right website if you are looking for free Adobe Photoshop files” and display various images for users to upload, while also allowing users to purchase advertisement space. See Amend. Compl. Exs. H & I. Accordingly, the Panel holds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ADOBE, FLASH, DREAMWEAVER, and PHOTOSHOP marks at the time of registering the disputed 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 United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”); see also 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 contends that Respondent’s knowledge can be inferred given the fame of Complainant’s marks and Respondent’s use of the disputed domain names to direct Internet users to websites that explicitly target Complainant and users of its software products. The Panel infers, due to the fame of Complainant’s marks and the manner of use of the dispute domain names that Respondent did have actual knowledge of Complainant’s mark, demonstrating 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 <adobedreamweaver.com>, <adobeflash.com>, <flashadobe.com>, <photoshopfile.com>, and <photoshopfiles.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panel Chair
The Honorable Neil Anthony Brown QC, Panelist
The Honorable John J. Upchurch (Ret.), Panelist
Dated: March 14, 2019
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