Adobe Inc. v. Md. Mizanur Rahman
Claim Number: FA2110001968753
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Md. Mizanur Rahman (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freeonlinephotoshop.com>, registered with NameCheap, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2021; the Forum received payment on October 13, 2021.
On October 13, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <freeonlinephotoshop.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 October 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 2021 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@freeonlinephotoshop.com.
Also, on October 13, 2021, 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 November 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 claims rights in the PHOTOSHOP mark established by its ownership of its portfolio of trademark and service mark registrations described below and its extensive use of the mark on its graphics editing software product since at least as early as 1990.
Complainant alleges that the disputed domain name is confusingly similar to its PHOTOSHOP trademark and service mark because it wholly incorporates the PHOTOSHOP mark and merely prefixes the mark with the generic and descriptive phrase “free online” and adds the <.com> Top-Level Domain (“gTLD”) extension.
Complainant contends that previous panels have found confusing similarity when a respondent merely adds a generic or descriptive term or terms to a complainant’s mark. Citing Adobe Inc. v. Adrian Coroama, FA1902001829809 (Forum Mar. 14, 2019) (ordering transfer of various domain names including <photoshopfile.com> and <photoshopfiles.com>)
Complainant adds that likewise, the inclusion of the gTLD <.com> extension does not distinguish the disputed domain name. Citing Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s PHOTOSHOP mark and the WHOIS information identifying the registrant has been replaced with proxy service information. Citing Tencent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent is not licensed or otherwise authorized to use Complainant’s PHOTOSHOP mark.
Referring to a screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, Complainant argues that Respondent has not and is not using the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because the disputed domain directs to a website for a competing image editing software.
Complainant argues that panels have held that this type of use does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). Citing American Council on Education and GED Testing Service LLC v. Steve Remley, FA1612001707102 (Forum Mar. 3, 2017) (“Previously, the disputed domain names resolved to fraudulent high school websites offering products in direct competition with Complainant. Neither use constitutes a bona fide offering of goods or services, or a legitimate noncommercial or fair use of disputed domain names.”).
Complainant adds that the disputed domain name was registered with the registrant having actual knowledge of Complainant’s trademark rights prior to registration of a disputed domain name, which, Complainant argues, illustrates Respondent’s lack of rights or legitimate interests in the disputed domain name.
Complainant then contends that the disputed domain name was registered in bad faith arguing that the disputed domain name was registered on May 22, 2020, at least 30 years after Complainant began using its PHOTOSHOP mark and nearly 25 years after Complainant registered its PHOTOSHOP mark. Furthermore, the disputed domain name wholly incorporates Complainant’s PHOTOSHOP mark, and the website to which the disputed domain name resolves makes extensive references to Complainant’s PHOTOSHOP goods and services. Based on the totality of the evidence, Complainant argues, it is obvious that Respondent was aware of Complainant’s rights in the PHOTOSHOP mark when Respondent registered and began using the disputed domain name.
Complainant also alleges that the disputed domain name was registered in bad faith, arguing that the fame of Complainant’s PHOTOSHOP mark and Respondent’s registration and use of the disputed domain name to redirect Internet users to its own competing software products, demonstrates that Respondent had actual knowledge of Complainant’s rights in the PHOTOSHOP mark prior to the time Respondent registered the disputed domain name.
Complainant contends that such knowledge of another’s trademark rights can be inferred from the notoriety of a complainant’s trademark. Citing Altria Group, Inc. & Altria Group Dist. Co. v. ZhangXin, FA 1729134 (Forum June 4, 2017). Here, Complainant first used its PHOTOSHOP Mark at least 30 years before Respondent registered the disputed domain name, and the PHOTOSHOP mark is famous and well-known among the general consuming public.
Complainant adds that the screen capture of the website to which the disputed domain name resolves shows that Respondent commercially benefits from the disputed domain name by diverting Internet users looking for Complainant and its goods and services to competing goods and services. Panels have routinely found bad faith use and registration where a respondent engages in this type of conduct. Citing American Council on Education and GED Testing Service LLC v. Steve Remley, FA1612001707102 (Forum Mar. 3, 2017) (“Respondent attempted to disrupt Complainant’s business by diverting Internet users to websites offering products and services in direct competition with Complainant, presumably for Respondent’s financial gain. The Panel finds that this use is bad faith under Policy ¶ 4(b)(iii).”).
Complainant further contends that Respondent benefits from the initial interest confusion created by Respondent’s use of the disputed domain name that wholly incorporates Complainant’s PHOTOSHOP mark arguing that consumers encountering the disputed domain name are likely to believe that Respondent is affiliated with Complainant, thereby creating confusion. Thus, Respondent’s actions support an inference of bad faith. Citing Fareportal Inc. v. Arun meelyan, FA 1736954 (Forum Aug. 7, 2017) (“When a disputed domain name contains a mark in its entirety and is likely to create confusion due to the association of that mark with Complainant, then, if the respondent fails to allege any good faith basis for its use, the Panel may find that initial interest confusion is likely to result from the use of the domain name.”).
In conclusion, Complainant contends that Respondent’s use of a proxy service to hide its identity is further evidence of bad faith in this context. Citing TT of Riviera Beach, Inc. d/b/a I-95 Nissan v. Ryan Pierce, FA2107001955296 (Forum Aug. 16, 2021) (“[T]he Panel finds that Respondent’s use of a proxy service gives rise to an inference of bad faith.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a producer and supplier of software products, in particular the graphics editor programme which it markets using the PHOTOSHOP and ADOBE PHOTOSHOP trademarks and service marks and for which it owns a portfolio of trademark and service mark registrations for the PHOTOSHOP mark including the following:
· United States registered trademark PHOTOSHOP, registration number 1,850,242, registered on the Principal Register on August 16, 194 for goods in international class 9;
· United States registered trademark PHOTOSHOP, registration number 2,929, 764, registered on the Principal Register on January 25 for goods in international class 9;
· United States registered service mark PHOTOSHOP, registration number 3,702,607, registered on the Principal Register on October 27, 2009 for services in international class 42;
· United States registered trademark ADOBE PHOTOSHOP, registration number 1,651,380, registered on the Principal Register on July 23, 1991 for goods in international class 9.
Complainant has an established Internet presence and maintains its principal website at <www.adobe.com>
The disputed domain name <freeonlinephotoshop.com> was registered on May 21, 2020 and resolves to a website purporting to offer software that is expressly compared with Complainant’s products to the public free of charge.
There is no information available about Respondent, who did not respond to the Complaint, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in the course of this proceeding in response to the request from the Forum for verification of the registration details of the disputed domain name. The Registrar confirmed that Respondent is the registrant of the disputed domain name as his name had been “withheld for privacy purposes” on the published WhoIs.
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 has provided clear and convincing, uncontested evidence of its rights in the PHOTOSHOP mark established by its ownership of its portfolio of trademark and service mark registrations described above and its extensive use of the mark on its graphics editing software product for approximately 30 years.
The disputed domain name <freeonlinephotoshop.com>, consists of the identifiable elements “free” and “online”, followed by Complainant’s PHOTOSHOP mark in its entirety, in combination with the TLD <.com> extension.
The words “free” and “online” are each generic and descriptive of an online offering of products or services. In context they have no distinguishing character.
Complainant’s PHOTOSHOP mark is clearly identifiable as the only distinctive element in the disputed domain name because in the context of this domain name the TLD <.com> extension has no distinguishing character as it would be understood by Internet users to be a necessary technical element for a domain name.
This Panel finds therefore that the disputed domain name is confusingly similar to the PHOTOSHOP trademark and service mark in which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima face case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Respondent is not commonly known by the disputed domain name;
· Respondent is not commonly known by any variant of Complainant’s PHOTOSHOP mark;
· the WHOIS information identifying the registrant has been replaced with proxy service information;
· Respondent is not licensed or otherwise authorized to use Complainant’s PHOTOSHOP mark.
· The screen capture of the website to which the disputed domain name resolves which has been exhibited in an annex to the Complaint, shows that the disputed domain directs to a website for that purports to offer free of charge competing image editing software and such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial interest in the disputed domain name.
· Respondent has not and is not using the disputed domain in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
· the disputed domain name was registered with the registrant having actual knowledge of Complainant’s trademark rights prior to registration, which Complainant argues illustrates Respondent’s lack of rights or legitimate interests in the disputed domain name.
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests as I this case, the burden of production shifts to the respondent to prove that he has such rights or interests.
Respondent has failed to discharge the burden of production and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
This Panel accepts that the registrant of the disputed domain name was aware of Complainant, its PHOTOSHOP program, the PHOTOSHOP mark and the reputation of the PHOTOSHOP product when the disputed domain name was chosen and registered. The disputed domain name was registered on May 22, 2020, at least 30 years after Complainant began using its PHOTOSHOP mark and nearly 25 years after Complainant registered its PHOTOSHOP mark
The evidence shows that on the balance of probabilities the disputed domain name was chosen and registered in bad faith in order to target Complainant and its mark and to take predatory advantage of its goodwill and reputation.
The evidence also shows that Respondent is using the disputed domain name as the address of a website which purports to offer “Free Online PHOTOSHOP” and statements such as “Use Online Photoshop for free” and “Alternative to Photoshop I Online Photo Editor”. Complainant credibly submits that this is an offer of a competing product. The Panel notes that Respondent’s website also purports to offer downloads for programs to “Build Better Web Apps Faster” and offers a “Fully Customizable Home Search”.
On the evidence adduced this Panel must find on the balance of probabilities that Respondent is taking predatory advantage of Complainant’s mark which is prominently identifiable within the disputed domain name. to divert Internet traffic intended for Complainant to Respondent’s website on which he purports to offer competing products, which are expressly compared with Complainant’s products.
This Panel must also accept that by registering and using the confusingly similar domain name in this manner, Respondent is therefore intentionally creating initial interest confusion among Internet users in bad faith. It is improbable that Respondent is engaged in such activity for no commercial benefit.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith, Complainant has succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this application.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <freeonlinephotoshop.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: November 5, 2021
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