Adobe Inc. v. Adobe Inc.
Claim Number: FA2302002032539
Complainant is Adobe Inc. (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, USA. Respondent is Adobe Inc. (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adobe.pw>, registered with Registrar of Domain Names REG.RU LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 20, 2023. Forum received payment on February 20, 2023. The Complaint was submitted in English.
On February 21, 2023, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <adobe.pw> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement, which is in Russian, 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 February 21, 2023, Forum served the Complaint and all Annexes, including an English and Russian language Written Notice of the Complaint, setting a deadline of March 13, 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@adobe.pw. Also on February 21, 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 March 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
PRELIMINARY ISSUE: LANGUAGE OF PROCEEDINGS
As noted, the Registrar of Domain Names REG.RU LLC registration agreement is in Russian. Pursuant to Rule 11(a), the language of the proceeding in relation to the <adobe.pw> domain name shall be Russian unless otherwise determined by the Panel, having regard to the circumstances of the proceeding.
Complainant requests that the proceeding be conducted in English, noting that the <adobe.pw> domain name and the Whois information are in English; the domain name resolves to Complainant’s English language website and is offered for sale in English on the English-language Afternic domain name marketplace website. In the absence of any Response, these circumstances satisfy the Panel that Respondent is likely to be proficient in English and that there would be no undue prejudice to Respondent if English were the language of the proceeding.
Further, pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the English and Russian language Written Notice of the Complaint and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant, Adobe Inc., provides a wide range of computer software. Complainant has rights in the ADOBE mark, ranked as one of the most valuable brands in the world, through numerous trademark registrations, including with the United States Patent and Trademark Office (“USPTO”) and in Russia. Respondent’s <adobe.pw> domain name is identical or confusingly similar to Complainant’s famous ADOBE mark.
Respondent lacks rights or legitimate interests in the <adobe.pw> domain name since Respondent is not licensed or authorized to use Complainant’s ADOBE mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent directs users to Complainant’s own website and offers the domain name for sale. Although the WHOIS record for the domain name indicates that Respondent is purportedly “Adobe Inc.”, Complainant denies any association with the holder of the domain name and asserts that Respondent is using Complainant’s own information falsely and deceptively to give the impression that the domain name is owned by Complainant when in fact it is not. This assertion is supported by the use of a Gmail email address by Respondent, whereas Complainant always uses an “@adobe.com” email address.
Respondent registered the <adobe.pw> domain name in bad faith with false and misleading information and with actual knowledge of Complainant’s rights in the ADOBE mark. Respondent uses the domain name in bad faith by offering it for sale, while trading off Complainant’s goodwill in the ADOBE mark by confusing users and directing them to Complainant’s own website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 has shown that it has rights in the ADOBE mark through numerous trademark registrations, including with the USPTO (e.g., Reg. No. 1,475,793, registered on February 9, 1988), and in Russia, (e.g., Reg. No. 96178, registered on May 27, 1991). The Panel finds Respondent’s <adobe.pw> domain name to be identical to the ADOBE mark since the inconsequential “.pw” top-level domain (“TLD”) may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <adobe.pw> domain name was registered by Respondent in the name of Complainant on November 3, 2021, many years after Complainant has shown that its ADOBE mark had become famous. It resolves to Complainant’s website at “www.adobe.com” and is advertised as available for sale on Afternic.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <adobe.pw> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Registration and Use in Bad Faith
The four illustrative circumstances set out in paragraph 4(b) of the Policy as evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) are not exclusive.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous ADOBE mark when Respondent registered the <adobe.pw> domain name and that Respondent’s false and misleading use of Complainant’s own contact information in the registration data for the domain name is evidence of Respondent’s bad faith registration and use of the domain name. See Docker, Inc. v. Steve Singh / Docker, Inc., FA1906001846947 (Forum July 15, 2019) (“…the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and intentionally providing false information to a registrar about the identity of and contact information for the registrant has been held to constitute bad faith registration and use for the purposes of Policy ¶ 4(a)(iii).”).
Further, Respondent’s use of the domain name to resolve to Complainant’s genuine website demonstrates Respondent’s intent to pass itself off as Complainant. See Verizon Trademark Servs. LLC v. Boyiko, FA 1382148 (Forum May 12, 2011) (“The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name, even where it resolves to Complainant’s own site, is still registration and use in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when “Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").
Complainant has established this element.
DECISION
Complainant 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.pw> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 20, 2023.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page