Adobe Inc. v. DotMedia Limited
Claim Number: FA2006001899380
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is DotMedia Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue, <adobestudentsoftware.com>, <adobebusinesscatalyst.com>, <coolphotoshopbrushes.com>, <flashanimationwebsitedesign.com>, <bizflashgames.com>, <flashgameden.com> and <flashfet.com>, are registered with Dropcatch.Com 937 Llc, Dropcatch.Com 975 Llc, Dropcatch.Com 636 Llc, Dropcatch.Com 738 Llc, Dropcatch.Com 860 Llc, Dropcatch.Com 1099 Llc, and Snapnames 68, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2020; the Forum received payment on June 8, 2020.
On June 9, 2020, Dropcatch.Com 937 Llc; Dropcatch.Com 975 Llc; Dropcatch.Com 636 Llc; Dropcatch.Com 738 Llc; Dropcatch.Com 860 Llc; Dropcatch.Com 1099 Llc and on June 11, 2020; Snapnames 68, Llc confirmed by e-mail to the Forum that the <adobestudentsoftware.com>, <adobebusinesscatalyst.com>, <coolphotoshopbrushes.com>, <flashanimationwebsitedesign.com>, <bizflashgames.com>, <flashgameden.com>, and <flashfet.com> domain names are registered with Dropcatch.Com 937 Llc; Dropcatch.Com 975 Llc; Dropcatch.Com 636 Llc; Dropcatch.Com 738 Llc; Dropcatch.Com 860 Llc; Dropcatch.Com 1099 Llc; Snapnames 68, Llc and that Respondent is the current registrant of the names. Dropcatch.Com 937 Llc; Dropcatch.Com 975 Llc; Dropcatch.Com 636 Llc; Dropcatch.Com 738 Llc; Dropcatch.Com 860 Llc; Dropcatch.Com 1099 Llc; Snapnames 68, Llc have verified that Respondent is bound by the respective Dropcatch.Com 937 Llc; Dropcatch.Com 975 Llc; Dropcatch.Com 636 Llc; Dropcatch.Com 738 Llc; Dropcatch.Com 860 Llc; Dropcatch.Com 1099 Llc; and Snapnames 68, Llc registration agreements 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 25, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 15, 2020 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@adobestudentsoftware.com, postmaster@adobebusinesscatalyst.com, postmaster@coolphotoshopbrushes.com, postmaster@flashanimationwebsitedesign.com, postmaster@bizflashgames.com, postmaster@flashgameden.com, postmaster@flashfet.com. Also on June 25, 2020, 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 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in ADOBE, PHOTOSHOP, and FLASH and alleges that the disputed domain names are confusingly similar to one or another of its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant provides computer-related software by reference to the trademarks ADOBE, PHOTOSHOP, and FLASH;
2. Complainant owns, inter alia, United States Patent and Trademark Office (“USPTO”) Reg. No. 1,475,793, registered February 9, 1988 for ADOBE; Reg. No. 1,850,424, registered August 16, 1994 for PHOTOSHOP and Reg. No. 2,852,245, registered June 15, 2004 for FLASH.
3. the disputed domain names were registered on the following dates:
<adobestudentsoftware.com> November 6, 2019
<adobebusinesscatalyst.com> February 20, 2020
<coolphotoshopbrushes.com> October 23, 2019
<flashanimationwebsitedesign.com> November 4, 2019
<bizflashgames.com> November 6, 2019
<flashgameden.com> October 15, 2019
<flashfet.com> October 19, 2019
4. the disputed domain names resolve to webpages described later having no connection with the business of Complainant under the trademark, or which are inactive; and
5. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademarks or to register any domain name incorporating its trademarks.
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 based on 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.[i]
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[ii]. Since Complainant provides evidence of its USPTO trademark registrations the Panel is satisfied that it has rights in all of ADOBE, PHOTOSHOP, and FLASH.
Stripped of their non-distinctive TLDs, the disputed domain names merely add descriptive expressions such as "student software", "business catalyst", "animation website design", "biz", "games" and "game den" to the trademarks. The Panel finds all but one of the disputed domain names to be confusingly similar to Complainant’s trademarks[iii]. The exception is the <flashfet.com> domain name. Complainant has offered no meaning for the term, “fet”, and the Panel’s own efforts to determine one have only uncovered meanings which would quite clearly point away from the likelihood of confusing similarity with the FLASH trademark.
The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in respect of each domain name except <flashfet.com> (in relation to which the Complaint now fails).
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iv].
Respondent is the domain name registrant and, absent a Response, that name provides no evidence that Respondent might be commonly known by any of the disputed domain names. There is no evidence that Respondent has any trademark rights and Complainant states that it has not given Respondent permission to use the trademarks for any purpose.
All but one of the disputed domain names resolve to pornographic or gambling websites. Such use indicates a lack of rights or legitimate interest in a domain name[v]. The remaining domain name is inactive[vi] and, once more, there is no evidence of rights or legitimate interests[vii]. The Panel finds that there has been no bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain names.
The Panel finds that Complainant has made a prima facie case. The onus shifts to Respondent to establish a legitimate interest in the domain names. In the absence of a Response, that prima facie case is not met and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
For those domain names in use, the Panel finds registration and use in bad faith pursuant to paragraph 4(b)(iv) above. The Panel has already found the disputed domain names to be confusingly similar to the trademarks. The resolving websites exist for commercial gain in some form or another and create a likelihood of confusion with Complainant’s trademarks[viii]. As to the single domain name not in use, the Panel finds also bad faith registration and use on the basis of so-called passive holding first laid out in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel finds passive holding since it considers that case to be directly applicable to the circumstances here involving three, well-known trademarks. Accordingly, the Panel finds that the third and final element of the Policy is satisfied.
The Panel finds registration and use of the domain names in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of the following domain names: <adobestudentsoftware.com>, <adobebusinesscatalyst.com>, <coolphotoshopbrushes.com>, <flashanimationwebsitedesign.com>, <bizflashgames.com> and <flashgameden.com>. Accordingly, it is Ordered that those domain names be TRANSFERRED from Respondent to Complainant.
Having failed to establish all three elements required under the ICANN Policy in respect of the <flashfet.com> domain name, the Panel concludes that relief shall be DENIED. Accordingly, it is Ordered that the <flashfet.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 26, 2020
[i] See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum Jul. 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; 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.”)
[ii] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum Jun. 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[iii] See, for example, Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) holding that the addition of both the word “advisors” and the gTLD “.com” did not negate a finding of confusing similarity under Policy ¶ 4(a)(i).
[iv] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[v] See, for example, Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”).
[vi] The <flashfet.com> name resolved to a content streaming service but, as noted above, the Complaint has already failed as against this domain name.
[vii] See, for example, U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”
[viii] See, for example, AOL LLC v. iTech Ent, LLC, FA 726227 (Forum Jul. 21, 2006) finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
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