Adobe Systems Incorporated v. Simon Villadsen
Claim Number: FA1712001761477
Complainant is Adobe Systems Incorporated (“Complainant”), represented by Craig A. Beaker of Perkins Coie, District of Columbia, USA. Respondent is Simon Villadsen (“Respondent”), Swaziland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getadobeplayer.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 5, 2017; the Forum received payment on December 5, 2017.
On December 7, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <getadobeplayer.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 December 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2017 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@getadobeplayer.com. Also on December 7, 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 December 29, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant is a global producer of computer software and computer-related goods and services. Complainant uses the ADOBE mark in conjunction with its business practices.
Complainant registered the ADOBE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,475,793, registered Feb. 9, 1988).
Respondent’s <getadobeplayer.com> is confusingly similar to Complainant’s ADOBE mark because it incorporates the mark in its entirety, adding the generic term “get,” descriptive term “player” and “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <getadobeplayer.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the ADOBE mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent uses <getadobeplayer.com> in connection with a phishing and malware scam, where a malicious link is emailed to unsuspecting users.
Respondent registered and is using <getadobeplayer.com> in bad faith. The disputed domain name is used in furtherance of a phishing and malware scheme, where the offending web link is emailed to unsuspecting users. Respondent registered <getadobeplayer.com> with actual knowledge of Complainant and its rights to the ADOBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in ADOBE.
Respondent is not affiliated with Complainant and is not authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its ADOBE trademark.
Respondent uses the <getadobeplayer.com> domain name to distribute malware and phish for private information.
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.”).
The at-issue domain name is identical to a trademark in which Complainant has rights.
Complainant demonstrates rights in its ADOBE mark by showing it registered such mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <getadobeplayer.com> domain name contains Complainant’s entire ADOBE trademark. The mark is prefixed by the generic term “get” followed by the generic/descriptive term “player,” all appended with a necessary top-level domain name, here “.com”. The differences between Complainant’s trademark and Respondent’s <getadobeplayer.com> domain name fail to distinguish the domain name from the mark for the purpose of Policy ¶ 4(a)(i). The inclusion of generic terms does nothing to differentiate the domain name from Complainant’s trademark under the Policy. In fact, the inclusion of the term “player” only adds to any confusion between the two as it is a reference to Complainant’s Adobe Flash Player. Further, the top-level domain name is of no consequence regarding Policy ¶ 4(a)(i) analysis. Therefore, the Panel concludes that Respondent’s <getadobeplayer.com> domain name is identical to Complainant’s ADOBE trademark. 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.).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Simon Villad” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <getadobeplayer.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <getadobeplayer.com> domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses <getadobeplayer.com> domain name in connection with a phishing and malware scam, where a malicious link is emailed to unsuspecting internet users. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a non-commercial or fair use under Policy ¶4(c)(iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”); Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Although not specifically enumerated under Policy ¶ 4(b) bad faith circumstances are nevertheless present which instruct the Panel to conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii) in registering and using the <getadobeplayer.com> domain name .
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name in a malware based phishing scheme. Using a confusingly similar domain name to phish for personal information or to install malicious software onto third party computers demonstrates bad faith registration and use. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1506001622862 (Forum Aug. 10, 2015) (finding that the respondent’s apparent use of the disputed domain name in furtherance of a ‘phishing’ scheme further established its bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii)); Twitter, Inc. v. Kiribati Media / Kiribati 200 Media Limited, FA1502001603444 (Forum Mar. 19, 2015) (“Using the disputed domain name to download malicious software into unsuspecting viewers’ computers evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the ADOBE trademark when Respondent registered the at-issue domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s ADOBE trademark. Further, in light of the fame and long-standing use of Complainant's ADOBE mark, it is inconceivable that Respondent could have registered the at-issue domain name without actual knowledge of the ADOBE mark. Registering and using a confusingly similar domain name, with knowledge of Complainant’s rights in such domain name, shows bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <getadobeplayer.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: January 3, 2018
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