Adobe Inc. v. wang xinai / wangxinai
Claim Number: FA2204001994453
Complainant is Adobe Inc. (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is wang xinai / wangxinai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobe-photoshop.org>, registered with GoDaddy.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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 29, 2022; the Forum received payment on April 29, 2022.
On May 2, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adobe-photoshop.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 24, 2022 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@adobe-photoshop.org. Also on May 4, 2022, 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 May 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho-Hyun Nahm, 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant operates as a top image editing software brand. Complainant’s ADOBE and PHOTOSHOP marks are well known. Complainant has rights in the ADOBE and PHOTOSHOP marks through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,475,793, registered February 9, 1988, and Reg. 1,850,242, registered August 16, 1994, respectively). The disputed domain name is identical or confusingly similar to Complainant’s marks as it incorporates the marks in whole, and adds a hyphen in between the marks, followed by the generic top-level domain (“gTLD”) “.org”.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in its ADOBE or PHOTOSHOP marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to distribute Complainant’s software or malicious software in an attempt to phish for personal information.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Respondent registered the disputed domain name in bad faith to benefit from the goodwill associated with Complainant’s mark. Respondent uses the disputed domain name to divert Internet users to a website that attempts to phish for personal information. Respondent uses the disputed domain name to offer malicious software. Respondent uses a privacy service to hide its identity. Respondent demonstrates a pattern of bad faith registration.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on April 15, 2022.
2. Complainant has established rights in the ADOBE and PHOTOSHOP marks through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. 1,475,793, registered February 9, 1988, and Reg. 1,850,242, registered August 16, 1994, respectively).
3. The disputed domain name resolves to a website, purporting to provide information about Complainant’s Adobe Photoshop software and displaying “PS software download official website” on its header and log-in screen which ostensibly provides access to software downloads after logging in.
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 rights in the ADOBE and PHOTOSHOP marks through its registration with the USPTO (Reg. 1,475,793, registered February 9, 1988, and Reg. 1,850,242, registered Aug. 16, 1994, respectively). Complainant has provided the Panel with documents supporting its rights. Therefore, the Panel finds Complainant has established rights in the ADOBE and PHOTOSHOP marks under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <adobe-photoshop.org> is identical or confusingly similar to Complainant’s ADOBE and PHOTOSHOP marks. Under Policy ¶ 4(a)(i), incorporating a protected mark in its entirety with the inclusion of a hyphen and the gTLD “.org” does not sufficiently distinguish a mark. See Bid Industrial Holdings (Proprietary) Limited and BFS Group Limited v. Shareef Ghumra / United Foods Group, FA 1784135 (Forum June 8, 2018) (finding the domain name was confusingly similar to the complainant’s mark where “[t]he only difference between the Domain Name and the Complainant’s trademarks is the mere addition of ‘.com’ and placement of a hyphen between the elements of the BIDVEST and 3663 marks.”). The disputed domain name incorporates Complainant’s ADOBE and PHOTOSHOP marks in whole, adds a hyphen in between the marks, followed by the “.org” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s marks.
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), then the burden shifts to Respondent to show 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 contends Respondent lacks rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in either the ADOBE or PHOTOSHOP mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, a respondent’s lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name shows a proxy service as the registrant. Further, there is no evidence to suggest that Respondent is either authorized to use or commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by or licensed to use the disputed domain name per Policy ¶ 4(c)(ii).
Complainant alleges that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. The use of a domain name to offer malicious software does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”). Additionally, use of a confusingly similar domain name to divert Internet users evinces a finding of bad faith registration. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Respondent distributes unauthorized copies of Complainant’s software or other malicious software in an attempt to solicit personal information from diverted Internet users looking for Complainant at the disputed domain name’s resolving website. The Panel finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant contents that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate or fair use, because Respondent uses the disputed domain names in the furtherance of a phishing scheme. Phishing has been defined by past panels as tricking Internet users into sharing personal information. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). Additionally, using a domain name that is confusingly similar to the protected mark of another to facilitate a phishing scheme may not be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The disputed domain name resolves to a website, purporting to provide information about Complainant’s Adobe Photoshop software and displaying “PS software download official website” (Complainant’s Photoshop software is often called “PS” which is an abbreviation of Photoshop) on its header and log-in screen which ostensibly provides access to software downloads after logging in. Complainant contends that Respondent uses the disputed domain name to solicit personal information from confused Internet users seeking to download Complainant’s software. The Panel finds that Respondent is not using the disputed domain name for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent’s previous registration of the domain name <photo-shop.cn> demonstrates a pattern of bad faith registrations by Respondent. See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Forum Aug. 17, 2000) (finding that the respondent has registered numerous domain names that infringe upon the complainant’s marks and in addition, the respondent has registered domain names that infringe upon other entities’ marks). Respondent is also the registrant of the domain name <photo-shop.cn>. The Panel finds a bad faith pattern of conduct by Respondent.
Complainant argues that Respondent registered and uses the disputed domain name with bad faith actual and constructive knowledge of Complainant’s rights in the ADOBE and PHOTOSHOP marks. Actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel recalls that Complainant’s ADOBE and PHOTOSHOP marks are incorporated in whole in the disputed domain name. Further, Respondent uses the disputed domain name to effectuate a phishing scheme under the guise of Complainant’s marks and software. The Panel infers, due to the notoriety and the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration of the disputed domain name, thus acting in bad faith under Policy ¶ 4(a)(iii).
Complainant further contends that Respondent uses and registered the disputed domain name in bad faith because Respondent was attempting to trade off the goodwill in Complainant’s mark to confuse Internet users and perpetrate a phishing scheme. Generally using a disputed domain name to fraudulently phish for information is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Morgan Stanley v. Bruce Pu, FA 1764120 (Forum Feb. 2, 2018) (“[T]he screenshot of the resolving webpage allows users to input their name and email address, which Complainant claims Respondent uses that to fraudulently phish for information. Thus, the Panel agrees that Respondent phishes for information and finds that Respondent does so in bad faith under Policy ¶ 4(a)(iii).”). The Panel references that Complainant provided screenshots of the disputed domain name’s resolving website that attempts to phish for personal information. Therefore, the Panel finds that Respondent used and registered the disputed domain name in bad faith in order to facilitate a phishing scheme 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 <adobe-photoshop.org> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: June 7, 2022
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