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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Adobe Systems Incorporated v. Jeff Bluff, Online RX Sales LLC

Case No. D2006-1475

 

1. The Parties

The Complainant is Adobe Systems Incorporated, Seattle, Washington, United States of America, represented by Daniel C. Poliak, United States of America.

The Respondent is Jeff Bluff, Online RX Sales LLC, Boston, Massachusetts, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <new-adobe.net> is registered with direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2006. On November 21, 2006, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain name(s) at issue. On November 21, 2006, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on December 29, 2006.

The Center appointed David, W. Quinto as the sole panelist in this matter on January 26, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

Complainant Adobe Systems Inc. was founded in 1982 and, beginning in 1986, obtained at least five federal registrations for the ADOBE mark in the United States. Complainant builds software solutions for Web and print publishing. Its graphic design, imaging, dynamic media and authoring tools enable customers to create, publish and deliver content for various types of media. Complainant markets its products and services using its ADOBE mark. It is now the second largest U.S.-based personal software company, with annual revenues exceeding $1.8 billion. It conducts business operations in North America, Europe, the Pacific Rim, Japan and Latin America.

Respondent is associated with a company called “Online RX Sales LLC” and is not a licensee of Complainant, or otherwise authorized to use Complainant’s marks. Nevertheless, Respondent’s challenged domain name resolves to a Web site offering unauthorized copies of Adobe products for sale. Respondent’s Web site is not affiliated, and has no association, with Complainant. However, the Web site does not disclose Respondent's lack of affiliation with Complainant.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that its ADOBE mark is famous and distinctive and that Respondent’s challenged domain name is confusingly similar to it in that the addition of the word “new” results in no more than a variation on Complainant’s goods and services. Complainant further alleges that Respondent has no prior rights or legitimate interests or to the ADOBE mark or trade name and does not have prior rights to the use of “Adobe” on the Internet; Complainant’s <adobe.com> domain name was registered in 1986; Respondent’s challenged domain name was registered in 2006; Respondent is not commonly known by the name “Adobe”; and Respondent has used the domain name intentionally to attract Internet users to Respondent’s website for financial gain by creating confusion as to the source or affiliation of the website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

Complainant has the burden to show that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Here, Complainant has amply shown that it has protectable trademark rights. It obtained U.S. federal registrations for its ADOBE mark beginning 21 years ago and its brand has since become famous.

In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000), a panel first concluded that “a domain name is ‘identical or confusingly similar to a trademark for purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. Many other panels have since applied that objective test. For example, in Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (July 6, 2001), the panel declared that “As numerous prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark”. Further, it is well established that the addition or subtraction of punctuation marks will not affect whether the name is identical or confusingly similar to a mark (see Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 (May 18, 2000), and the use of a generic top-level domain, such as “.net”, is without legal significance because it does not serve to identify a specific enterprise as a source of goods or services. See Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 482, 498 (2d Cir. 2000).

Accordingly, the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

A complainant is also required to demonstrate that the respondent has no rights or legitimate interests in respect to the domain name. Paragraph 4(c) of the Policy explains that a respondent may, without limitation, demonstrate its rights or legitimate interests in a domain name by showing that it (1) used, or made demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with the bona fide offering of goods or services before receiving notice of a dispute; (2) has been commonly known by the domain name, even if it does not have trademark rights in the name; or (3) has made a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to divert customers, or to tarnish the mark at issue.

Here, the sole evidence is that Complainant registered its ADOBE mark and commenced use of its “www.adobe.com” website 20 years before Respondent registered its domain name. Because Respondent is not authorized to use Complainant’s mark, Respondent did not make a bona fide offering of goods or services before receiving notice of this dispute. There is also nothing in the record to suggest that Respondent has ever been known by the name “Adobe”. Finally, Respondent’s use of its website has been unabashedly commercial, with apparent intent to achieve commercial gain by diverting customers from Complainant’s website or the sites operated by its licensees.

Further, previous panels have held that resellers have no right to appropriate a product’s mark for use in their domain names. For example, in Mikimoto (Am.) Co. v. Asanti Fine Jewelers, Ltd., No. AF-0126 (Dec April 8, 2000), the panel rejected the right of a reseller to use a product’s mark on the basis that “[b]y controlling the disputed domain name which is identical to Complainant’s trademarks and sites that link from it, Respondent will be in a preferred position” with respect to other distributors of the product. In Motorola, Inc. v. Newgate Internet, Inc., WIPO Case No. D2000-0079 (April 20, 2000), the panel explained that “the right to resell products does not create a right to use a mark more extensively than required to advertise and sell the product”. See also Ferrero S.p.A. v. Fistagi S.r.l., WIPO Case No. D2001-0262 (May 23, 2001) (“Agreeing with Respondent’s argument would mean to allow any distributor, wholesaler or retailer to register and monopolize a third party’s trademark as a domain name, based on the mere fact that it sells those products.”). Cf. Nikon, Inc. v. Techilab, Inc., WIPO Case No. D2000-1774 (February 26, 2001) (“[t]he majority view rejects any claim by a licensee to the right to register a domain name consisting of, or containing, the licensor’s mark.”). In those cases in which panels have found legitimate reseller rights in the use of a trademark in a domain name, accurate disclosure on the website of the respondent's relationship with the complainant has been required. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (November 6, 2001). In the present case, no such accurate disclosure was made.

Accordingly, Complainant has demonstrated that Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Finally, a complainant must demonstrate that the challenged domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth four nonexclusive factors that establish bad-faith registration and bad-faith use of the domain name. Here, Respondent contends that the fourth factor applies because, Complainant alleges, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s Web site by creating a likelihood confusion with Complainant’s mark.

Here, the Panel finds that Respondent was both aware of Complainant’s use of its mark and registered the disputed domain name with intent to attract Internet users to his Web site for commercial gain, as evidenced by the extensive advertisement of Complainant’s products on Respondent’s Web site. Accordingly, Complainant has demonstrated that Respondent has registered and used the challenged domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <new-adobe.net> be transferred to the Complainant.

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David, W. Quinto
Sole Panelist

Dated: January 30, 2007