Adobe Inc. v. Haris Naeem
Claim Number: FA2112001976484
Complainant is Adobe Inc. (“Complainant”), represented by Fabricio Vayra of Perkins Coie LLP, District of Columbia, USA. Respondent is Haris Naeem (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <behank.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 8, 2021; the Forum received payment on December 8, 2021.
On December 9, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <behank.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 December 10, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@behank.com. Also on December 10, 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 January 5, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it operates a computer software company offering a wide variety of programs and apps to creatives and businesses. Complainant’s BEHANCE mark has been used in commerce in connection with on-line electronic bulletin boards for creative professionals and businesses and related educational and training sessions since at least as early as 2006 in the U.S. Complainant has rights in the BEHANCE mark through its registration in the United States in 2008. The mark is registered elsewhere around the world.
Complainant alleges that the disputed domain name is identical or confusingly similar to its BEHANCE mark, as it merely changes the “CE” in the mark to the letter “K” and adds the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of Complainant’s BEHANCE mark. Additionally, Respondent fails to use the disputed domain name for any bona fide offer of goods or services, or for any legitimate noncommercial or fair use, instead directing Internet users to a website offering for sale services to falsely and artificially increase the popularity of an artistic portfolio on Complainant’s BEHANCE website by providing inauthentic “comments,” “likes,” “appreciations,” “followers,” and “views” to be attributed to that user’s profile. Such use constitutes a violation of Complainant’s Terms of Use. The resolving website prominently displays the banner: “WELCOME TO BEHANCE SHOP”.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent diverts Internet users searching for Complainant’s website for commercial gain. The disputed domain name also creates initial-interest confusion, which may also demonstrate bad faith. Moreover, previous Panels have found bad faith where a domain name holder violates a Complainant’s Terms of Use. Respondent’s use of a privacy service when registering the disputed domain name may also qualify as bad faith. Additionally, Complainant contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the BEHANCE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns rights in the mark BEHANCE and uses it to provide products and services for creative activities.
Complainant’s rights in its mark date back to 2008.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2021.
The resolving websites displays Complainant’s mark and offers services to falsely and artificially increase the popularity of an artistic portfolio on Complainant’s BEHANCE website by providing inauthentic “comments,” “likes,” “appreciations,” “followers,” and “views” to be attributed to that user’s profile, in violation of Complainant’s Terms of Use.
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”).
Section 1.7 or the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states:
…
In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity. …
…
… panels have also found that the overall facts and circumstances of a case (including relevant website content) may support a finding of confusing similarity, particularly where it appears that the respondent registered the domain name precisely because it believed that the domain name was confusingly similar to a mark held by the complainant.
Past panels have found that the content of the resolving website may be used as an indication in determining whether a disputed domain name is confusingly similar to a mark in the sense of the Policy. See Zippo Manufacturing Company v. Domains by Proxy, LLC and Paul Campanella, D2014-0995 (WIPO, July 27, 2014) (“… in appropriate limited circumstances, the content of the website associated with the domain name may provide indication as to a respondent's targeting of a specific trademark in choosing its domain name.); see also Schering-Plough Corporation, Schering Corporation v. Dan Myers, D2008-1641 (WIPO, Dec. 19, 2008) (“ … the content of a website may provide indication as to a respondent's targeting of a specific trademark through the domain name chosen. Accordingly, the context in which the domain names are being used may be helpful to assess confusing similarity.”).
In the instant case, the disputed domain name incorporates part of Complainant’s mark and is used to target Complainant’s business: the resolving website displays Complainant’s mark and offers services related to Complainant’s business. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is neither an authorized user nor licensee of Complainant’s BEHANCE mark. Respondent is not commonly known by the disputed domain name: when response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”); see also PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information of record identifies “Haris Naeem” as the registrant of the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to divert Internet users to its website where it promotes services for artists on Complainant’s website, falsely and artificially increasing the popularity of the artist’s profile in violation of Complainant’s Terms of Use. Previous Panels have held that using a disputed domain name to violate a trademark holder’s Terms of Use does not qualify a bona fide offer or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Adobe Inc. v. Sergey Petrov / Sergey Petrov and Pavel Malyavkin / Malyavkin Pavel, Case No. D2020-2685 (WIPO Dec. 21, 2020) (finding no rights or legitimate interests where Respondent used disputed domains and for website selling views and likes on the BEHANCE website); see also Google LLC v. Vladimir / YouProject, FA1905001845222 (Forum June 30, 2019) (“Respondent’s use of the confusingly similar <youtuby.xyz> domain name to deceive internet users and foster conduct against Complainant’s terms of use, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) , nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) , or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain name to promote services that violate Complainant’s Terms of use. Previous Panels have found that such use constitutes bad faith under Policy ¶ 4(a)(iii). See Google LLC v. Vladimir / YouProject, FA1905001845222 (Forum June 30, 2019) (“Respondent’s <youtuby.xyz> website enables visitors to download and save content from Complainant’s <youtube.com> website in violation of Complainant’s terms of use prohibiting such activity. Respondent, by its intention to aid third parties in violating Complainant’s terms of use, further shows Respondent’s bad faith under the Policy.”); see also Adobe Inc. v. Sergey Petrov / Sergey Petrov and Pavel Malyavkin / Malyavkin Pavel, Case No. D2020-2685 (WIPO Dec. 21, 2020) (finding bad faith where Respondent used disputed domains <behance.pro> and <behancer.top> for website selling views and likes on the BEHANCE website); see also Adobe Systems Incorporated v. Mihail Kutuzov, Case No. D2018-1123 (WIPO July 5, 2018) (finding bad faith where Respondent used disputed domain <behance-top.com> for website selling views and likes on the BEHANCE website); see also Facebook, Inc. & Instagram, LLC v. Adam Szulewski, D2016-2380 (WIPO Jan. 24, 2017) (“In this case, the disputed domain names resolve to the website ‘www.socialmarketingmadness.com’ which offers for sale ‘likes’ and ‘followers’ which indicates that the Respondent is targeting the Complainants and is using for commercial gain the disputed domain names in bad faith.”). Therefore the Panel finds find bad faith registration and use under Policy ¶ 4(a)(iii).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website prominently displays Complainant’s mark and offers services related to Complainant’s business. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 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 <behank.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: January 5, 2022
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