DECISION

 

Adobe Inc. v. Zhizhong Zeng

Claim Number: FA2404002095533

PARTIES

Complainant is Adobe Inc. ("Complainant"), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Zhizhong Zeng ("Respondent"), Wuhan, China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue in dispute is <acrobat.ai>, registered with Zenaida.cate.ai.

 

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.

 

Fernando Triana, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 30, 2024; Forum received payment on April 30, 2024.

 

On April 30, 2024, Zenaida.cate.ai confirmed by e-mail to Forum that the disputed domain name <acrobat.ai> is registered with Zenaida.cate.ai and that Respondent is the current registrant of the name. Zenaida.cate.ai has verified that Respondent is bound by the Zenaida.cate.ai 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 1, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2024 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@acrobat.ai. Also on May 1, 2024, 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.

 

A timely Response was received and determined to be complete on May 21, 2024.

 

On May 23, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Fernando Triana, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.       Complainant

1.       Complainant owns the trademark ACROBAT since at least 1993.

2.       The trademark ACROBAT is well-known worldwide as it has been ranked as one of the most valuable trademarks in the world.

3.       The disputed domain name reproduces the trademark ACROBAT in its entirety.

4.       Respondent is not licensed or otherwise authorized to use Complainant's trademark ACROBAT.

5.       Respondent is not commonly known by the disputed domain name or any variant of Complainant's trademark ACROBAT.

6.       The disputed domain name redirects to a website advertising the disputed domain name for sale to the general public. Such use is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

7.       Respondent was aware of Complainant's rights which is evidence that Respondent lacks rights or legitimate interests in that domain name.

8.       Complainant sent a letter to Respondent requesting that Respondent make no further use of the disputed domain name and transfer it to Complainant. Respondent replied on April 19, 2024, asserting that their registration and use of the disputed domain name was based on the dictionary meaning of the term "acrobat".

9.       Respondent has not demonstrated that the disputed domain name is genuinely used with a bona fide offering of goods or services or a legitimate noncommercial or fair use based on the dictionary meaning of the term "acrobat," nor demonstrated a bona fide intention to use the disputed domain name in this manner.

10.       Respondent registered and is using the disputed domain name in bad faith.

11.       Respondent commercially benefits from the disputed domain name by diverting Internet users looking for Complainant and its goods and services to Respondent's website offering the disputed domain name for sale.

 

B.       Respondent

1.       Acrobat is a widely used English word, it has existed long before the product Acrobat has been launched (which has only existed for 30 years).

2.       acrobat.ai is identical to the common English word acrobat.

3.       Respondent acknowledges that Complainant owns a few of the trademarks ACROBAT in many countries, but they do not own the trademark acrobat exclusively. It is not the ONLY owner of the trademark identical to the common English word Acrobat.

4.       Complainant does not have exclusive rights concerning the English word acrobat.

5.       The disputed domain name is not used in bad faith.

 

FINDINGS

Complainant owns the trademark ACROBAT in the United States of America, registered on April 26, 1994, to identify goods in international class 9, before Respondent acquired the disputed domain name.

 

Complainant's first use of the trademark ACROBAT dates back to June 15, 1993.

 

Respondent knew of Complainant's trademark ACROBAT before acquiring the disputed domain name. Thus, Respondent used the trademark ACROBAT to create a likelihood of confusion aimed to divert consumers to Respondent's website.

 

Respondent is not affiliated with Complainant in any way. Complainant has never authorized, contracted, licensed or otherwise permitted Respondent to use the trademark ACROBAT.

 

Respondent's use of the disputed domain name is not in connection with a bona fide offering of goods or services.

 

Respondent has the intention to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant's trademark.

 

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.

 

This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:

 

The Panel will determine whether or not the disputed domain name is identical or confusingly similar to the mark in which Complainant has rights. Afterwards, the Panel will verify if Respondent has any rights or legitimate interests in respect of the disputed domain name; and finally, the Panel will establish whether or not the disputed domain name has been registered and are being used in bad faith by Respondent.

 

Identical and/or Confusingly Similar

Complainant contends that it is the owner of the trademark ACROBAT to identify goods of international class 9.

 

i)                      Existence of a trademark or service mark in which the Complainant has rights

 

Firstly, it is important to point out that Paragraph 4(a) of the Policy requires the existence of a trademark or a service mark. The intellectual property rights are acquired by registration before the competent office in many jurisdictions around the world.

 

The worldwide-accepted definition of a trademark involves the concept of distinctive force as the most relevant element. Said force gives the mark the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a mark is registered, it is surrounded by a presumption of sufficient distinctive force, and the owner is granted with an exclusive right over the mark, which entitles him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, the UDRP does not discriminate between registered and unregistered trademarks¹ and thus, it is well established that a Complainant does not require owning a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that Complainant has rights in an unregistered trademark as to deserve legal protection, based solely on its use in commerce.

 

In this case, Complainant proved its rights in the trademark ACROBAT, by means of the registration in the United States of America before the USPTO, Registration No. 1833219.

 

The first use of the trademark ACROBAT was June 15, 1993.

 

This information is conclusive evidence of Complainant's ownership of the cited marks and the exclusive right to use them in connection with the stated goods. The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive².

 

Thus, Complainant established its rights in the trademark ACROBAT since at least 1993.

 

Hence, the trademark ACROBAT has been registered since before Respondent acquired the disputed domain name. For clarity, the trademark ACROBAT was first used on June 15, 1993, and registered on April 26, 1994. The disputed domain name was registered or acquired by Respondent in 2023.

 

The aforementioned dates were proven by Complainant. Thus, Complainant not only used but also registered the trademark ACROBAT before the disputed domain name was registered or acquired by Respondent.

 

Moreover, the trademark ACROBAT is well-known, as proven by Complainant, and accepted by the Panel, considering the following:

 

1.       In 2020, ACROBAT was qualified by FORBES as one of the World's Most Valuable Brands.

2.       Interbrand has included ACROBAT as one of the Best Global Brands.

3.       In 2023, PCWorld, included ACROBAT in one of the Best PDF editors.

 

Hence, the trademark not only has been registered but widely used and highly recognized in the market.

 

Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark ACROBAT for purposes of Paragraph 4(a)(i) of the Policy.

 

ii)                      Identity or confusing similarity between the Disputed Domain Name and the Complainant's trademark

 

Complainant alleges that Respondent's disputed domain name is confusingly similar to Complainant's trademark as it reproduces the trademark ACROBAT. Respondent alleges that the disputed domain name reproduces the English word "acrobat".

 

As it has been proven that ACROBAT is a trademark registered by Complainant, Respondent's argument dismissed, as trademarks can be English words and the rights concerning the trademark have been duly proven.

 

Now, before establishing whether or not the disputed domain name <acrobat.ai> is confusingly similar to Complainant's trademark ACROBAT, the Panel wants to point out that the addition of generic top-level domain (gTLD), i.e., ".com," ".net," ".biz," ".edu," ".org", or country code top-level domain (ccTLD), i.e., ".co", ".us" and in this case ".ai" which is the country code top-level domain (ccTLD) for Anguilla, a British Overseas Territory in the Caribbean. It is administered by the government of Anguilla; cannot be considered when determining if the registered domain name is identical or confusingly similar to the registered trademark³ as the insertion of a TLD has a distinctive function⁴.

 

UDRP Panels have unanimously accepted that the inclusion of the top-level domain, in the disputed domain name is not a factor in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks, D2000-0477 (WIPO July 20, 2000), the Panel stated that:

 

"[T]he addition of the generic top-level domain (gTLD) name '.com' is without legal significance since use of a gTLD is required of domain name registrants, '.com' is one of only several such gTLDs, and '.com' does not serve to identify a specific enterprise as a source of goods or services."

 

The Panel considers that the reproduction of the trademark ACROBAT, by the disputed domain name <acrobat.ai>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark. Moreover, it creates an impression of sponsorship, affiliation, or endorsement.

 

In this case, the disputed domain name reproduces the entire trademark ACROBAT, and does not include any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Complainant. Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the domain name.

 

In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain name is confusingly similar to Complainant's trademark ACROBAT and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.

 

Rights or Legitimate Interests

a)  Prima Facie Case.

Regarding this second element of Paragraph 4(a) of the Policy, UDRP Panels have unanimously consented that requiring the Complainant to prove the lack of rights or legitimate interests of the Respondent in the disputed domain name is often an impossible task: it is not only a negative but also demands access to information that is mostly within the knowledge of the Respondent⁵.

 

In Julian Barnes v. Old Barn Studios Ltd., D2001-0121 (WIPO Mar. 30, 2001), the Panel stated that:

 

"Is the Respondent required to adduce any such evidence, if the onus is on the Complainant to prove the three elements of paragraph 4 of the Policy? While the overall burden of proof is on the Complainant, this element involves the Complainant proving matters, which are peculiarly within the knowledge of the Respondent. It involves the Complainant in the often impossible task of proving a negative. In the Panel's view the correct approach is as follows: the Complainant makes the allegation and puts forward what he can in support (e.g. he has rights to the name, the Respondent has no rights to the name of which he is aware, he has not given any permission to the Respondent). Unless the allegation is manifestly misconceived, the Respondent has a case to answer and that is where paragraph 4(c) of the Policy comes in. If the Respondent then fails to demonstrate his rights or legitimate interests in respect of the Domain Name, the complaint succeeds under this head".

 

Therefore, a Complainant is required to make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once this prima facie case is made, the burden of production shifts to Respondent, who must come forward with concrete evidence of its rights or legitimate interests⁶. If Respondent fails to do so, Complainant is deemed to have met the second element of Paragraph 4(a) of the Policy.

 

Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name <acrobat.ai> because of the following: i) Respondent knew or should have known of the existence and use of the trademark ACROBAT, when including it within the disputed domain name; ii) Respondent was not been authorized by Complainant to use the trademark ACROBAT within the disputed domain name; iii) Complainant has not authorized, licensed, or otherwise permitted Respondent to use its trademarks; and iv) Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use.

 

The Panel accepts these assertions as a prima facie case made by Complainant that shifts the burden of production to Respondent.

 

b)  Respondent's rights or legitimate interests in the disputed Domain Name.

Paragraph 4(c) of the Policy includes a listing of circumstances that prove Respondent's rights or legitimate interests in a disputed domain name:

 

(i)                      before any notice of the dispute, Respondent's use 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 you have 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 consumers or to tarnish the trademark or service mark at issue.

 

Respondent states that Respondent uses the word of the English language acrobat but not associated with Complainant.

 

Given the above, the Panel considers the following:

 

1.       Respondent failed to prove that before receiving the written notice of the Complaint he was using or preparing a website to use the disputed domain name in connection with a bona fide offering of goods or services.

 

2.       Respondent did not provide any evidence supporting the absence of a trademark violation, as Complainant's trademarks remain within the disputed domain name, which create the risk of confusion.

 

3.       Respondent's use of Complainant's trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.

 

4.       Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.

 

5.       Simply stating that the disputed domain name is on sale is not evidence of Respondent's rights or legitimate interest in it. Since its registration, Respondent has had enough time to prepare and use the website of the disputed domain name.

 

6.       Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of Complainant's trademark in the disputed domain name misleads visitors into thinking that Complainant is somehow connected to Respondent.

 

This Panel believes that Respondent failed to prove his rights or legitimate interests in the disputed domain names.

 

Consequently, Respondent seeks to take unfair advantage of the owner of previously existing trademark rights.

 

Moreover, as evidenced by the cease and desist letters, Complainant has never authorized Respondent to use its trademarks.

 

Respondent undoubtedly knew of Complainant's trademark ACROBAT since Complainant's trademark well-known worldwide, but nonetheless incorporated said trademark in the disputed domain name. Thus, Respondent used the trademark ACROBAT to create a likelihood of confusion aimed to divert consumers to Respondent's website.

 

Therefore, the second requirement of paragraph 4(b) of the Policy is met.

 

Registration and Use in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

 

(i)                      Circumstances indicating that Respondent has registered or has acquired the domain name 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; or

 

(ii)                      Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website 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 his/her website or location or of a product or service on his/her website or location.

 

This Panel deems that the mere fact of knowingly incorporating a third-party's trademark in a domain name constitutes registration in bad faith⁷. See Aktiebolaget Electrolux v. Jorgeariel Figueroa Rodríguez, WIPO Case No. D2011-1311, where the panel found: "The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent's prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel's opinion".

 

Moreover, since Complainant's trademark is used in the disputed domain name "it is reasonable to conclude that many Internet users would suppose that the websites to which the disputed domain name resolve have a connection with the Complainant"⁸. This disrupts Complainant's business, especially since Respondent did not prove that the use was for other purpose different from attracting, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's trademark.

 

Respondent's use falsely suggests sponsorship and/or endorsement by Complainant of Respondent's websites and use of the disputed domain name.

 

Hence, Respondent has registered the domain name for the purpose of disrupting Complainant's business, and it is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

 

Furthermore, Respondent is profiting from its use of the trademark ACROBAT in the disputed domain name by attracting Internet users to the resolving website. Respondent has created confusion as to Complainant's affiliation or sponsorship of the disputed domain name and websites. This is indicative of bad faith under Policy ¶ 4(b)(iv)⁹.

 

Therefore, the three elements of the Policy 4(a) are satisfied in the present case in respect to Respondent of the disputed domain name.

 

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 disputed domain name <acrobat.ai> be TRANSFERRED from Respondent to Complainant.

 

 

 

Fernando Triana, Esq., Panelist

Dated: May 31, 2024