DECISION

 

Adobe Systems Incorporated v. Jason Bailey

Claim Number: FA1801001765409

 

PARTIES

Complainant is Adobe Systems Incorporated (“Complainant”), represented by Craig A. Beaker of Perkins Coie, Colorado, USA.  Respondent is Jason Bailey (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 3, 2018; the Forum received payment on January 3, 2018.

 

On Jan 05, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On January 8, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2018 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@adobetechsupport.us, postmaster@adobetechnicalsupport.us, postmaster@adobesupportnumber.us, and postmaster@adobecustomerservices.us.  Also on January 8, 2018, 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 February 1, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant’s ADOBE mark has been used in commerce in connection with various computer software related offerings since at least as early as 1986 in the U.S., and Complainant has used the ADOBE logo in connection with the same offerings since at least as early as 1993. Complainant has rights in the ADOBE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988). See Compl. Ex. D. Respondent’s <adobetechsupport.us>, <adobetechnicalsupport.us>,

 <adobesupportnumber.us>, and <adobecustomerservices.us> domain names are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “tech support,” “technical support,” “support number,” and “customer services” along with the “.us” country code top-level domain (“ccTLD”).

2.    Respondent has no rights or legitimate interests in the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names. Respondent is not commonly known by the domain names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, all of the domain names redirect users to the webpage for the <adobecustomercare.com> domain name, which features Complainant’s mark and logo while offering Complainant’s products and services. See Compl. Ex. F.

3.    Respondent registered and uses the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names in bad faith. Respondent commercially benefits from the disputed domain names by diverting Internet users looking for Complainant and its goods and services, creating initial interest confusion. Finally, due to the fame of Complainant’s ADOBE mark and Respondent’s use of the domain names to direct Internet users to a website displaying Complainant’s ADOBE mark and logo, along with information about Complainant’s products and services, demonstrates that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark prior to registering the domain names. See Compl. Ex. F.

 

B.   Respondent:

1.    Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names are confusingly similar to Complainant’s ADOBE mark.

2.    Respondent does not have any rights or legitimate interests in the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names.

3.    Respondent registered or used the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names in bad faith.

 

DISCUSSION

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 precedent 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

Complainant claims to have rights in the ADOBE mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,475,793, registered Feb. 9, 1988). See Compl. Ex. D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the ADOBE mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names are confusingly similar to Complainant’s mark as they wholly incorporate Complainant’s mark and merely add the descriptive terms “tech support,” “technical support,” “support number,” and “customer services” along with the “.us” ccTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel therefore finds that the disputed domain names are confusingly similar to the ADOBE mark under Policy ¶4(a)(i).

 

Rights or Legitimate Interests

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 that Respondent has no rights or legitimate interests in the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names.  Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. 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). The WHOIS identifies “Jason Bailey” as the registrant for the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names.  See Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the ADOBE mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Complainant next argues that Respondent also doesn’t use the domain names for any bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain names redirect users to the webpage for the <adobecustomercare.com> domain name, which features Complainant’s mark and logo while offering Complainant’s products and services.. Passing off to offer a complainant’s own products can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Caterpillar Inc. v. Huth, FA 169056 (Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”). Complainant provides a screenshot of the resolving webpage, which appears to display Complainant’s logo along with purporting to offer technical support for the ADOBE brand. See Compl. Ex. F. As such, the Panel holds that Respondent attempts to pass off as Complainant to offer Complainant’s products and services, thus lacking rights and legitimate interests under Policy ¶¶ 4(c)(i) or (iii).

 

Registration or Use in Bad Faith

Complainant argues that Respondent registered and uses the <adobetechsupport.us>, <adobetechnicalsupport.us>,

<adobesupportnumber.us>, and <adobecustomerservices.us> domain names in bad faith by commercially benefiting from the domain names by diverting Internet users looking for Complainant and its goods and services, creating initial interest confusion. Using a confusingly similar domain names to commercially benefit from the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Complainant alleges Respondent commercially benefits by offering Complainant’s own products and services on the resolving webpage. See Compl. Ex. F. Accordingly, the Panel agrees that Respondent commercially benefits off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Further, Complainant claims that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark at the time of registering the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See 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). Complainant contends that due to the fame of Complainant’s ADOBE mark and Respondent’s use of the domain names to direct Internet users to a website displaying Complainant’s ADOBE mark and logo, along with information about Complainant’s products and services, demonstrates that Respondent had actual knowledge of Complainant’s rights in the ADOBE mark prior to registering the domain names. See Compl. Ex. F. The Panel agrees with Complainant and find that Respondent did have actual knowledge of Complainant’s mark, and thus registered the domain names in bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICAAN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <adobetechsupport.us>, <adobetechnicalsupport.us>, <adobesupportnumber.us>, and <adobecustomerservices.us> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  February 9, 2018