Adobe Inc. v. Jason L Monroe
Claim Number: FA2305002043862
Complainant is Adobe Inc. (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, Washington, DC, USA. Respondent is Jason L Monroe (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <portfolioadobe.com>, registered with Sav.com, LLC.
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 Forum electronically on May 10, 2023; Forum received payment on May 10, 2023.
On May 10, 2023, Sav.com, LLC confirmed by e-mail to Forum that the <portfolioadobe.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC 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 May 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 2023 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@portfolioadobe.com. Also on May 10, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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, Adobe Inc., has an array of software-related retail products.
Complainant has rights in the ADOBE mark through its registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <portfolioadobe.com> domain name is identical or confusingly similar to Complainant’s ADOBE mark as it incorporates the mark in its entirety while adding the term “portfolio” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <portfolioadobe.com> domain name. Respondent is not commonly known by the at-issue domain name, nor has Complainant authorized or licensed Respondent to use its ADOBE mark in the at-issue domain name. Respondent does not use the at-issue domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead uses the confusingly similar domain name to hosts pay-per-click links.
Respondent registered and uses the <portfolioadobe.com> domain name in bad faith. Respondent engages in a pattern of bad faith registration and use and uses the domain name to divert users to pay-per-click links. Additionally, Respondent may be engaging in phishing. Furthermore, Respondent failed to respond to Complainant’s cease-and-desist letter and registered the at-issue domain name with false contact information. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ADOBE mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ADOBE trademark.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the ADOBE trademark.
Respondent uses the at-issue domain name to address a pay-per-click webpage.
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”).
The at-issue domain is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the ADOBE mark with the USPTO, and/or any other bona fide trademark registrar worldwide, is sufficient to establish rights in a mark for the purposes of Policy 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s at-issue domain name contains Complainant’s ADOBE trademark prefixed with the suggestive term “portfolio” and with all followed by the top level domain name “.com.” The differences between Respondent’s <portfolioadobe.com> domain name and Complainant’s trademark are insufficient to distinguish the domain name from ADOBE under Policy ¶ 4(a)(i). Therefore, the Panel finds that the <portfolioadobe.com> domain name is confusingly similar to Complainant’s ADOBE mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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. See 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 at-issue domain name reveals the domain name’s registrant as “Jason L Monroe” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by <portfolioadobe.com>. The Panel therefore concludes that Respondent is not commonly known by the <portfolioadobe.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the confusingly similar <portfolioadobe.com>domain name to address a webpage displaying pay-per-click links. Respondent’s use of the confusingly similar domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of legitimate interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Complainant shows that Respondent has suffered multiple adverse UDRP decisions that resulted in Respondent’s subject domain name being transferred away from Respondent. Respondent thus exhibits a pattern of cybersquatting that is indicative of Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)).
Next and as mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to host a website displaying pay-per-click links. Such use of the domain name is disruptive to Complainant’s business and capitalizes on the confusion that Respondent created between the domain name and Complainant’s trademark. Respondent thereby demonstrates its bad faith registration and use of <portfolioadobe.com> pursuant to Policy ¶ 4(b)(iv). See Plain Green, LLC v. wenqiang tang, FA 1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)); see also, Carey Int’l, Inc. v. Kogan, FA 486191 (Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).
Complainant also shows that Respondent used a bogus address in registering the at-issue domain name. Doing so further suggests Respondent’s bad faith registration and use of <portfolioadobe.com>. See Prisma Health f/k/a SC Health Company v. Jason L Monroe, FA2211002020494 (Forum Dec. 15, 2022) (“[T]he WHOIS information is false: the address that Respondent provided is not a valid address. This can indicate bad faith registration and use.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the ADOBE mark when it registered <portfolioadobe.com> as a domain name. Respondent’s actual knowledge is evident from the notoriety and wide use of Complainant’s trademark as well as from Respondent’s inclusion of the suggestive term “portfolio” in the domain name. “Portfolio” is an overt reference to Complainant’s Portfolio product that Complainant promotes at <portfolio.adobe.com>. Respondent’s prior knowledge of Complainant’s ADOBE trademark further indicates Respondent’s bad faith registration and use of <portfolioadobe.com> 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 <portfolioadobe.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 1, 2023
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