NATIONAL ARBITRATION FORUM

DECISION

Adobe Inc. v. Rzak Musah

Claim Number: FA2311002069194

PARTIES

Complainant is Adobe Inc. ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Rzak Musah ("Respondent"), Germany.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adobe-acrobat-download.com>, registered with IONOS SE.

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.

The Honorable Neil Anthony Brown KC as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on November 1, 2023; Forum received payment on November 1, 2023.

On November 3, 2023, IONOS SE confirmed by e-mail to Forum that the <adobe-acrobat-download.com> domain name is registered with IONOS SE and that Respondent is the current registrant of the name. IONOS SE has verified that Respondent is bound by the IONOS SE 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 November 6, 2023, Forum served the Complaint and all Annexes, including a German and English Written Notice of the Complaint, setting a deadline of November 27, 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-acrobat-download.com. Also on November 6, 2023, the German and English 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 in German and English.

On November 28, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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.

RELIEF SOUGHT

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

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Complainant has submitted that the administrative proceeding be conducted in the English language pursuant to UDRP Rule 11(a). That Rule provides that the language of the proceeding is to be the language of the registration agreement relating to the domain name at issue, unless the Panel determines that it should be a different language having regard to the circumstances of the proceeding. Complainant makes this request in light of the advice from the registrar of the domain name that the registration agreement is expressed in the German language. The Complainant understands that the registration agreement is in English but that assuming, as the registrar has advised, that the agreement is in German, it would be more appropriate that the proceeding be conducted in the English language. The Panel agrees that this is an appropriate approach.

The Complainant relies on the circumstances that:

(a) the Respondent has chosen to incorporate the U.S.-based and English Latin-character based ADOBE and ACROBAT trademarks in the disputed domain name;

(b) the Respondent has also chosen to include in the domain name the English language descriptive word "download" and the English Latin-character based ".com" top-level domain; and

(c) the Respondent has chosen to use the disputed domain name to redirect internet users to a website the content of which is entirely in English and which uses another English-language domain name, namely "optimized24.com", to which the disputed domain name resolves. In other words, all of the practical information about the products which the domain name is promoting is in English.

The Panel agrees with those submissions. The Panel has also had regard in making its decision on this issue to the importance of procedural fairness to both parties.

The Panel agrees with the Complainant's submissions proposing that the language of the proceeding should in all the circumstances be English and finds that those submissions are supported by the evidence.

Pursuant to UDRP Rule 11(a), the Panel therefore finds that persuasive evidence has been adduced by Complainant to show that the Respondent is conversant and proficient in the English language. After considering all of the circumstance of the proceeding, the Panel therefore decides that the proceeding should be conducted in the English language.

PARTIES' CONTENTIONS

A. Complainant

Complainant made the following contentions.

1. The Complainant is a prominent United States company that provides goods and services under its well-known trademarks ADOBE and ACROBAT inter alia for Search Engine Optimization ("SEO").

2. The Complainant has rights in the ADOBE and ACROBAT trademarks by virtue of its registration of the ADOBE and ACROBAT marks including, but not confined to, the following registrations that it uses in its business, namely:

(a) the trademark registered for ADOBE with the United States Patent and Trademark Office ("USPTO"), registration No. 1,475,793, registered on February 9, 1988; and

(b) the trademark registered for ACROBAT with the USPTO, registration No. 1,833,219, registered on April 26, 1994.

The Complainant is also the registered owner of numerous other trademarks for ADOBE and ACROBAT with the USPTO and the European Union Trademark Office (collectively "the ADOBE and ACROBAT trademarks").

The Complainant's ADOBE and ACROBAT trademarks have been proved by the contents of the Complainant's Exhibit E.

3. The Respondent registered the disputed domain name <adobe-acrobat-download.com> on July 13, 2023 ("the disputed domain name").

4. The Respondent has caused the disputed domain name to resolve to the website at <www.optimized24.com> which is not related to the Complainant, purports to be the website of Optimized 24 and which offers goods and services relating to SEO.

5. The disputed domain name is confusingly similar to the ADOBE and

ACROBAT trademarks because it includes the marks in their entireties in the domain name, adding only hyphens, the descriptive word "download" and the gTLD "com".

6. The Respondent has no rights or legitimate interests in the disputed domain name. That is because:

(a) The Respondent is infringing the Complainant's ADOBE and ACROBAT trademarks by including them in its domain name and using them for the illegitimate purpose described herein;

(b) The Respondent is not licensed or authorized to use the ADOBE and ACROBAT trademarks in that or any other manner;

(d) the Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, but uses it to redirect internet users to the unrelated commercial website at <www.optimized24.com> that promotes the Respondent's own SEO business;

(e) at the time that it registered the disputed domain name, the Respondent had actual knowledge of the Complainant's trademark rights in the ADOBE and ACROBAT trademarks;

(f) there is no other ground on which it could be said accurately that the Respondent has any right or legitimate interest in the disputed domain name.

7. The disputed domain name was registered and is being used in bad faith, because:

(a) The Respondent has no rights in the ADOBE and ACROBAT trademarks and no right to use them in a domain name or in any other manner;

(b) the Respondent has taken the Complainant's trademarks which are famous and unique and used them to benefit from and trade off the goodwill of the Complainant to promote the unrelated SEO business conducted by the aforesaid Optimized 24 at <www.optimized24.com>;

(c) the Respondent commercially benefits from the disputed domain name by using it to divert internet users looking for the Complainant and its goods and services to another website;

(d) the Respondent benefits from the initial interest confusion created by the Respondent's use of the domain name which incorporates the Complainant's ADOBE and ACROBAT trademarks;

(e) at the time that it registered the disputed domain name, the Respondent had actual knowledge of the Complainant's trademark rights in the ADOBE and ACROBAT trademarks;

(f) the Respondent did not reply to a cease and desists letter from the

Complainant;

(g) the facts show that in registering the disputed domain name and in using it as aforesaid, the Respondent has at all times acted in bad faith.

8. The Complainant submits that upon a consideration of the evidence, the conclusion should be that it has made out all of the constituent elements that it is obliged to prove under the Policy and that the Panel should order that the disputed domain name be transferred to the Complainant.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

1. The Complainant is a prominent United States company that provides goods and services under its well-known trademarks ADOBE and ACROBAT inter alia for Search Engine Optimization ("SEO").

2. The Complainant has established its rights in the ADOBE and ACROBAT trademarks by virtue of its registration of the ADOBE and ACROBAT marks including, but not confined to, the following registrations that it uses in its business, namely:

(a) the trademark registered for ADOBE with the United States Patent and Trademark Office ("USPTO"), registration No.1,475,793, registered on February 9, 1988; and

(b) the trademark registered for ACROBAT with the USPTO, registration No. 1833219, registered on April 26, 1994.

3. The Respondent registered the disputed domain name <adobe-acrobat-download.com> on July 13, 2023.

4. The Respondent has taken the Complainant's trademarks which are famous and unique and used them in the disputed domain name to benefit from and trade off the goodwill of the Complainant to promote an unrelated SEO business conducted by the aforesaid Optimized 24 at <www.optimized24.com>.

5. The disputed domain name is confusingly similar to the ADOBE and ACROBAT trademarks.

6. The Respondent has no right or legitimate interest in the disputed domain name.

7. The Respondent has registered and used the disputed domain name in bad faith.

8. The Complainant has established all of the elements it is required to prove under the Policy and it is therefore entitled to the relief it seeks.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

Identical and/or Confusingly Similar

The first question that arises is whether Complainant has rights in a

trademark or service mark on which it may rely. The evidence shows that the Complainant has established its rights in the ADOBE and ACROBAT trademarks through its registration of the marks, including, but not confined to, the following registrations that it uses in its business, namely:

(a) the trademark registered for ADOBE with the United States Patent and Trademark Office ("USPTO"), registration No.1,475,793, registered on February 9, 1988; and

(b) the trademark registered for ACROBAT with the USPTO, registration No. 1,833,219, registered on April 26, 1994.

The Complainant is also the registered owner of numerous other trademarks for ADOBE and ACROBAT with the USPTO and the European Union Trademark Office (collectively and as already defined as "the ADOBE and ACROBAT trademarks").

The Complainant's ADOBE and ACROBAT trademarks have been proved by Complainant's Exhibit E which the Panel has examined and finds to be in order and to establish the trademark registrations.

Registration of a trademark with a recognized authority such as the USPTO is sufficient to demonstrate rights in a mark under 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).").

Since the Complainant has registered and has established its rights in the ADOBE and ACROBAT trademark through its registration and use of the marks, the Panel finds that the Complainant has rights in the marks under Policy ¶ 4(a)(i).

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant's ADOBE and ACROBAT trademarks. The Complainant submits that the disputed domain name is confusingly similar to the ADOBE and ACROBAT trademarks because it includes the marks in their entireties in the domain name, adding only hyphens, the descriptive word "download" and the gTLD "com".

The Panel agrees with that submission in every respect as the domain name includes the whole of the ADOBE and ACROBAT trademarks, and they are clearly included to attract the kudos associated with such famous marks and are included to give the impression that the domain name actually is a domain name of or associated with the Complainant and its marks. It is therefore clear that the domain name is similar to the mark and confusingly so, meaning that it generates the confusing notion that it is an official domain name referring to official ADOBE and ACROBAT products.

Under Policy ¶ 4(a)(i), the addition of a generic or descriptive word to a trademark, such as "download", does not negate the confusing similarity which is otherwise present between the domain name thus created and specified trademarks, as it is in the present case. Also, adding a generic Top Level Domain cannot negate the confusing similarity that is otherwise present between a domain name and the trademark, as it is in the present case. Taken as a whole, the domain name means and would be interpreted by internet users to mean that it is invoking the Complainant's famous ADOBE and ACROBAT trademarks and the notion of downloading products that are provided under the imprimatur of those marks. The domain name is similar to the trademarks and confusingly so because it invites internet users to accept that the domain name will resolve to a website where the user may download genuine ADOBE and ACROBAT products which is not true.

The Panel therefore finds that Respondent's domain name is confusingly similar to Complainant's ADOBE and ACROBAT trademarks under Policy ¶ 4(a)(i).

The Complainant has thus made out the first of the three elements that it must establish.

Rights or Legitimate Interests

It is now well established that 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 such 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)).

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

(c) the evidence shows that the Respondent has caused the disputed domain name to resolve to an unrelated commercial website which promotes the SEO business conducted by Optimized 24 at <www.optimized24.com>. By causing the disputed domain name, incorporating as it does the ADOBE and ACROBAT trademarks, to resolve to <www.optimized24.com>, that conduct of the Respondent is tantamount to misleading internet users into believing that the products offered on the resolving website are genuine ADOBE and ACROBAT products and/or products endorsed by the Complainant when they are not. The Complainant has supported and proved its case by demonstrating in Exhibit G its own genuine trademarked products and in Exhibit H by screenshots of the resolving website, showing that the products on that website are not Complainant's products or endorsed by it but the products of an entirely unrelated entity, Optimized 24;

(f) the evidence shows that the Respondent is not licensed or authorized to use the ADOBE and ACROBAT trademarks in the manner demonstrated or in any other manner;

(g) the evidence shows that the Complainant has not authorized Respondent to use a domain name that is confusingly similar to its trademarks, which the Respondent has clearly done, and which therefore shows that the Respondent is not affiliated with Complainant;

` (h) the only inference that can be drawn from the evidence is that the Respondent had actual notice of the famous ADOBE and ACROBAT trademarks when it registered the domain name and that it was going out of its way to target the Complainant and disrupt its business by diverting customers elsewhere;

(i) the Respondent had an opportunity to show circumstances to the contrary of the above conclusions if there were any, but it has not done so.

All of these matters go to make out the prima facie case against the Respondent.

Complainant has thus made out the second of the three elements that it must establish.

Registration and Use in Bad Faith

It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered in bad faith and that it has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

First, the circumstances in the present case all show that the Respondent has been engaged in the improper registration and use of the disputed domain name in bad faith. The whole modus operandi of the Respondent has been shown to be based on using the Complainant's trademarks to mislead internet users and damage the Complainant's business, which clearly constitutes bad faith.

Secondly, in particular, the evidence shows that the disputed domain name was registered on July 13, 2023 which was well after the registration of the ADOBE and ACROBAT trademarks of the Complainant. Indeed, the evidence shows that the Respondent must have had actual knowledge of the famous ADOBE and ACROBAT trademarks at the time it registered the domain name and whilst it has used them in its domain name to attempt to mislead internet users and harm the Complainant by directing business away from it and towards another website at <www.optimized24.com>. Indeed, it is inconceivable that the Respondent did not have actual notice of the Complainant and its renowned ADOBE and ACROBAT products as it has used both trademarks in the disputed domain name.

Thirdly, the evidence shows that the Respondent has no rights in the ADOBE and ACROBAT trademarks and no right to use them in a domain name or in any other manner. The trademarks are registered in the name of the Complainant and, moreover, the Respondent had no right to use them in any way. To do so is by itself an act of bad faith registration and use.

Fourthly, the Respondent has taken the Complainant's trademarks which are famous and unique and used them to benefit from and trade off the goodwill of the Complainant and to promote an unrelated SEO business at <www.optimized24.com>. That unrelated business must be inferred to be either the Respondent's own business or one endorsed by it, as the Respondent is clearly soliciting customers for that business. All of this is clearly bad faith registration and use.

Fifthly, it is obvious from the evidence that the Respondent was engaged in conduct calculated to benefit itself commercially by the registration of the domain name and by using it to divert internet users to the products promoted on the website to which the domain name resolves.

Sixthly, this is a clear case of initial interest confusion created by the Respondent's use of the domain name, for the reason that it must have set out to confuse and mislead internet users. This is therefore conduct that comes within the meaning of Policy ¶ 4(b)(iv) and amounts to bad faith registration and use. The evidence also shows that the Respondent is using the Complainant's mark, brand and name to trade on the goodwill of the Complainant's name, business and reputation and to disrupt it within the meaning of Policy ¶4(b)(iii).

Finally, in addition to the specific criteria of bad faith set out in the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the ADOBE and ACROBAT trademarks and in view of the conduct that Respondent has engaged in when using the domain name, the Respondent registered and used it in bad faith within the generally accepted meaning of that expression.

The Complainant has thus made out the third of the three elements that it must establish.

The Complainant has cited numerous prior UDRP decisions that support all of its foregoing contentions.

DECISION

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-acrobat-download.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Neil Anthony Brown KC, Panelist

Dated: November 30, 2023