Adobe Inc. v. Adobe Express.
Claim Number: FA1904001836971
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Adobe Express. (“Respondent”), California, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobefreelancer.com> registered with NameCheap, Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2019; the Forum received payment on April 1, 2019.
On April 2, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <adobefreelancer.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. 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 April 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@adobefreelancer.com. Also on April 2, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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. Respondent’s <adobefreelancer.com> domain name is confusingly similar to Complainant’s ADOBE mark.
2. Respondent does not have any rights or legitimate interests in the <adobefreelancer.com> domain name.
3. Respondent registered and uses the <adobefreelancer.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Adobe Inc., provides computer software and related products and services around the world. Complainant holds a registration for the ADOBE mark with the United States Patent and Trademark Officer (“USTPO”) (Reg. No. 1,475,793 registered on Feb. 9, 1988).
Respondent registered the <adobefreelancer.com> domain name on January 1, 2019, and uses it to resolve to a webpage that offers content and services directly related to Complainant’s business.
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 Panel finds that Complainant has established rights in the ADOBE mark for the purposes of Policy ¶ 4(a)(i) through registration of the mark with the USTPO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides copies of its registration of the mark with the USTPO (e.g. Reg. No. 1,475,793, registered on Feb. 9, 1988).
Respondent’s <adobefreelancer.com> domain name incorporates the ADOBE mark, and simply adds a descriptive word and a gTLD. These changes do not distinguish a domain name form a mark. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top-level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Thus, the Panel finds that Respondent’s <adobefreelancer.com> domain name is confusingly similar to Complainant’s ADOBE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 argues that Respondent lacks rights and legitimate interests in the <adobefreelancer.com> domain name because Respondent is not authorized to use Complainant’s ADOBE mark and is not commonly known by the disputed domain name. The Panel notes that, although the WHOIS information of record identifies the Respondent as “Adobe Express,” there is no evidence to support that Respondent is commonly known by the <adobefreelancer.com> domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (”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.”).
Complainant argues that Respondent fails to use the <adobefreelancer.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provides screenshots of the disputed domain name’s resolving webpage that displays the ADOBE mark and offers related services to users. The Panel finds that this use does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <adobefreelancer.com> domain name in bad faith because Respondent uses it to divert Internet users away from Complainant’s website, disrupting its business. Using a disputed domain name to disrupt a complainant’s business evinces bad faith under Policy ¶ 4(b)(iii). See Bittrex, Inc. v. Anton Strigin, FA1804001782846 (Forum May 24, 2018) (finding respondent’s use of the domain <bittrexbot.com> in connection with its sale of a cryptocurrency trading bot which disrupted complainant’s business was evidence of bad faith registration and use under Policy ¶ 4(b)(iii)). Accordingly, the Panel finds bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent’s bad faith is further demonstrated by its attempt to intentionally attract, for commercial gain, Internet users by passing off or implying an affiliation with Complainant. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Complainant contends that, because of the fame of its mark as well as the references made to the ADOBE mark on the resolving website, the Respondent registered and uses the disputed domain names in bad faith. The Panel notes that ADOBE is listed as one of the “The World’s Most Valuable Brands.” Complainant provides screenshots of the resolving of the website of the disputed domain name which prominently features Complainant’s mark. The Panel thus finds that Respondent had actual knowledge of Complainant’s ADOBE mark and registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that 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 <adobefreelancer.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 27, 2019
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