Adobe Inc. v. NicAgent / Ali Esmaelnejad
Claim Number: FA1907001852795
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, Washington DC, USA. Respondent is NicAgent / Ali Esmaelnejad (“Respondent”), Hungary.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobeiran.com>, registered with OnlineNIC, Inc..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2019; the Forum received payment on July 18, 2019.
On July 22, 2019, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <adobeiran.com> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 July 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 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@adobeiran.com. Also on July 23, 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 August 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 has rights in the trademark ADOBE through its use in commerce dating back to 1986 and its registrations with the United States Patent and Trademark Office (“USPTO”) dating back to 1988. Respondent’s <adobeiran.com> domain name, registered on October 1, 2018, is confusingly similar to Complainant’s ADOBE mark. Respondent incorporates the mark in its entirety and adds the geographic term “Iran” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <adobeiran.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain. Instead, the disputed domain name resolves to a website that prominently features Complainant’s mark and logo, and that promotes Respondent’s training programs purportedly designed to teach users how to use Complainant’s software products.
Respondent registered and used the <adobeiran.com> domain name in bad faith as Respondent attempts to pose as Complainant. Respondent creates a likelihood of confusion by incorporating Complainant’s Mark and logo and prominently displaying them on its webpage. Lastly, Respondent had actual knowledge of Complainant’s rights in the ADOBE mark due to the fame of the mark and as shown by Respondent’s use of it.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed 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:
(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”).
Complainant claims to have rights in the ADOBE mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per the threshold test of Policy ¶ 4(a)(i). 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.”) Here, Complainant has provided the Panel with evidence of its USPTO registrations for the ADOBE mark. Therefore, the Panel finds that Complainant has rights in the ADOBE mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <adobeiran.com> domain name is confusingly similar to Complainant’s ADOBE mark. Registration of a domain name that includes a mark and then adds a geographic term and a gTLD does not distinguish the domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusing similarity under a Policy ¶4(a)(i) analysis.”); see also MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”) Here, Complainant argues that Respondent incorporates the ADOBE mark in its entirety and adds the geographic term “Iran” along with the “.com” gTLD. Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s ADOBE mark per Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 or legitimate interests in the <adobeiran.com> domain name as Respondent is not commonly known by this name nor has Respondent been given license or consent to use the ADOBE mark or register a domain name using Complainant’s mark. WHOIS information is often used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Ali Esmaelnejad” and there is no evidence to suggest that Respondent is known otherwise, that it was authorized to use the ADOBE mark, or that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii).
Complainant further argues that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <adobeiran.com> domain name. Instead, the name resolves to a website that prominently features Complainant’s mark and offers services provided by Respondent. Use of a disputed domain name that confuses internet users into thinking that a respondent is affiliated with a complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”) Here, Complainant has provided the Panel with screenshots of the website that resolves from the disputed domain name and these pages make prominent and liberal use of Complainant’s ADOBE mark and its associated logo. The pages also display messages such as “Ways to connect with Adobe Center in Iran” and “At Adobe Iran, we believe that creativity is the catalyst for positive change”.
Although not addressed by the Complaint, there remains the possibility that Respondent is actually providing training services relating to Complainant’s products. However, the extensive branding on the website coupled with the lack of any explanation regarding the relationship (or lack thereof) between the Respondent and the Complainant, lead to the conclusion that the <adobeiran.com> website does not meet the standards for a bona fide offering of goods or services set out in the seminal decision of Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO, November 6, 2001).
In light of the above, and in the absence of a Response or any other submission by the Respondent, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i) or (iii). Thus, it does not evidence any rights or legitimate interests in the <adobeiran.com> domain name under Policy ¶ 4(a)(ii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark at the time it registered the disputed domain name. Actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name may be adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”) Further, use of a disputed domain name that incorporates a famous mark may be evidence of bad faith per Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was famous). Here, Complainant has provided evidence that its ADOBE mark and brand has gained widespread fame through printouts of multiple studies ranking the value of the mark. Further, the appearance of Complainant’s logo on Respondent’s website and the extensive references to its products confirm that Respondent had actual knowledge of the ADOBE mark. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark and that this creates a solid foundation upon which to build a case of bad faith registration and use per Policy ¶ 4(a)(iii).
Next, Complainant argues that Respondent registered and used the <adobeiran.com> domain name in bad faith as Respondent attempts to pass itself off as Complainant by creating a likelihood of confusion with Complainant’s mark. Use of a disputed domain name to create a likelihood of confusion with a complainant may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [to the website] . . . to a point of being indistinguishable from the original.”) Here, Complainant has provided the Panel with screenshots of Respondent’s webpages that prominently feature Complainant’s ADOBE mark and its associated logo. Further, despite Complainant’s assertion that there is no relationship with Respondent, the <adobeiran.com> website claims that Respondent offers “Adobe Authorised Training in the Islamic Republic of Iran”, and it lists Complainant as one of “Our Investors”. Therefore, based on the evidence before it and in the absence of a Response or other submission from the Respondent, the Panel finds that Respondent is seeking commercial gain through the use of a domain name that is confusingly similar to Complainant’s mark. This supports the conclusion that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv) and thus ¶ 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 <adobeiran.com> domain name be TRANSFERRED from Respondent to Complainant.
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Steven M. Levy, Esq., Panelist
Dated: August 15, 2019
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