Adobe Systems Incorporated v. Amanda Morisson
Claim Number: FA1708001744711
Complainant is Adobe Systems Incorporated (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA. Respondent is Amanda Morisson (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobeoemsoftware.com>, registered with DomainContext, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 15, 2017; the Forum received payment on August 15, 2017.
On August 17, 2017, DomainContext, Inc. confirmed by e-mail message addressed to the Forum that the <adobeoemsoftware.com> domain name is registered with DomainContext, Inc. and that Respondent is the current registrant of the name. DomainContext, Inc. has verified that Respondent is bound by the DomainContext, 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 August 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2017, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to the attention of postmaster@adobeoemsoftware.com. Also on August 21, 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 September 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is global producer of computer software and computer-related goods and services.
Complainant uses the ADOBE mark in the marketing of its products and services.
Complainant holds a registration for the ADOBE service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,623,324, registered October 21, 2014.
Respondent registered the domain name <adobeoemsoftware.com> on or about April 29, 2016.
The domain name is confusingly similar to Complainant’s ADOBE mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the ADOBE mark.
Respondent is not affiliated with Complainant in any way.
Respondent is not making a bona fide offering of goods or services by means of the domain name or a legitimate non-commercial or fair use of it.
The domain name resolves to a website purporting to be an authorized reseller of Complainant’s products.
Respondent does not have rights to or legitimate interests in the domain name.
The disputed domain name attracts internet users to Respondent’s resolving website for Respondent’s commercial gain by creating confusion among them as to the possibility of Complainant’s affiliation Respondent.
Respondent registered the domain name with actual knowledge of Complainant and its rights in the ADOBE mark.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 service mark for purposes of Policy ¶ 4(a)(iii) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the central question posed by the policy, we conclude from a review of the record that Respondent’s <adobeoemsoftware.com> domain name is confusingly similar to Complainant’s ADOBE service mark. The domain name incorporates the mark in its entirety, merely adding the descriptive term “oem software,” which relates to Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Eastman Chem. Co. v. Patel, FA 524752 (Forum September 7, 2005):
[T]he addition of a term descriptive of Complainant’s business ... and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks either rights to or legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the domain name, that Respondent is not affiliated with Complainant in any way, and that Complainant has not licensed or otherwise authorized Respondent to use the ADOBE mark.
Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Amanda Morisson,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). See also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum November 17, 2003).
We next observe that Complainant asserts, without objection from Respondent, that the <adobeoemsoftware.com> domain name resolves to a website holding itself out to be an authorized reseller of Complainant’s products. In the circumstances here presented, we may comfortably presume that Respondent does so in order to profit financially from the appearance of being associated with Complainant through the instrumentality of the disputed domain name. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in either of those subsections of the Policy. See, for example, Fadal Engineering, LLC v. DANIEL STRIZICH, INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum November 13, 2014).
The Panel thus finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s <adobeoemsoftware.com> domain name, which we have found to be confusingly similar to Complainant’s ADOBE service mark, is used by Respondent to attempt to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name and its resolving website. Under Policy ¶ 4(b)(iv), this employment of the domain name stands as proof of Respondent’s bad faith in registering and using it. See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Forum March 13, 2000). See also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO April 22, 2003).
We are also convinced that Respondent knowledge of Complainant and its rights to the ADOBE mark when it registered the <adobeoemsoftware.com> domain name. This is evident from both “through the name used for the domain and the use made of it.” See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014). To the same effect, see alsoVictoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) and Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum April 10, 2006).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <adobeoemsoftware.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 14, 2017
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