Adobe Inc. v. Andrei Bokov
Claim Number: FA2305002044254
Complainant is Adobe Inc. ("Complainant"), United States, represented by Griffin Barnett of Perkins Coie LLP, United States. Respondent is Andrei Bokov ("Respondent"), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobes.us>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 11, 2023; Forum received payment on May 11, 2023.
On May 11, 2023, NameCheap, Inc. confirmed by email to Forum that the <adobes.us> 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 the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").
On May 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@adobes.us. Also on May 12, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 June 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 to the usTLD Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 used the ADOBE mark in connection with various software offerings since at least as early as 1986. Complainant's brand routinely ranks among the most valuable brands in the world. The ADOBE mark is the subject of numerous United States trademark registrations, as well as registrations in Russia and other jurisdictions. Complainant asserts that the mark has become famous as a result of longstanding and widespread use.
Respondent registered the disputed domain name <adobes.us> in April 2023. The domain name is being used for what Complainant describes as a fake website for a third-party company that provides a gaming software application player unrelated to Complainant or its mark. Complainant alleges that Respondent is attempting to leverage the recognition and goodwill in Complainant's mark to attract users to this website. In addition, the disputed domain name is being offered for sale for $399 via a domain name marketplace. Complainant states that Respondent is not commonly known by the domain name, is not affiliated with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <adobes.us> is confusingly similar to its ADOBE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered or is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or is being used 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <adobes.us> corresponds to Complainant's registered ADOBE trademark, adding a letter "S" and the ".us" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Birkenstock Sales GmbH v. Li Teng, FA 1906246 (Forum Aug. 24, 2020) (finding <birkenstocks.us> confusingly similar to BIRKENSTOCK); Adobe Systems Inc. v. Jason Bailey, FA 1765409 (Forum Feb. 9, 2018) (finding <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> confusingly similar to ADOBE). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization. It is being offered for sale and is being used to attract users to an otherwise unrelated commercial website. Such uses are unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., Rockwell Automation v. Zhao Ke, FA 1760051 (Forum Jan. 2, 2018) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that the domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name corresponding to Complainant's well-known mark. It is being offered for sale at what the Panel infers to be a premium over its registration cost, presumably in the hope of soliciting an offer from Complainant or a competitor thereof; and to divert Internet users seeking Complainant to an unrelated website, presumably for Respondent's commercial gain. Under the circumstances, the Panel considers it reasonable to infer that Respondent registered the domain name for these purposes and with Complainant's mark in mind. See, e.g., Rockwell Automation v. Zhao Ke, supra (finding bad faith registration and use in similar circumstances). The Panel finds that the disputed domain name was registered or is being used in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <adobes.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 6, 2023
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