WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adobe Systems Incorporated v. Amjad Kausar
Case No. D2003-0879
1. The Parties
The Complainant is Adobe Systems Incorporated, Seattle, United States of America, represented by Daniel C. Poliak, United States of America.
The Respondent is Amjad Kausar, Karachi, Pakistan.
2. The Domain Name and Registrar
The domain name <wwwadobe.com> (herein the Domain Name in Dispute) is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 4, 2003. On November 5, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On November 6, 2003, eNom 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 November 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on December 3, 2003.
The Center appointed J. Nelson Landry as the Sole Panelist in this matter on December 28, 2003. 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
Since 1982, Complainant builds software solutions for web and print publishing including graphic design, imaging, dynamic media and authoring tools. It has annual revenues exceeding $1.2 billion dollars, employs over 2,800 employees worldwide and has operations in North America, Europe, the Pacific Rim, Japan and Latin America.
Complainant has used the trademark ADOBE in commerce in connection with a wide range of computer software programs, related manuals, technical support, and other services since at least as early as January 31, 1986, and owns the following four U.S. registrations for the ADOBE trademark (herein "ADOBE Trademark"):
- No. 1,475,793 registered on February 9, 1988, in association with computer programs;
- No. 1,956,216 registered on February 13, 1996, in association with books, magazines and manuals relating inter alia to graphic design, the use of computers and computer software for the computer hardware and software industries;
- No.1,486,895 registered on May 3, 1988, in association with manuals for computer software;
- No.1,988,712 registered on July 23, 1996, in association with computer software technical support services, development and design for others; consulting services in the fields of computer software and of computer software development and design; providing on-line support services for computer software users and access to computer bulletin boards for the transfer and dissemination of a wide range of information.
All four registrations are declaring first use on January 31, 1986.
Complainant is also the owner of the two trademark registrations in Pakistan for the ADOBE Trademark, one registered under No. 92961 on November 1, 1987, in association with computer programs being goods included in class 9 and the other registered under No. 92960 on November 1, 1987, in association with manuals made of paper for use with computer programs in class 16.
The ADOBE Trademark is used by in connection with products and services that are sold and distributed throughout the United States, Pakistan, and numerous other countries throughout the world, as well as over the Internet. The mark appears prominently on the Complainantís website, found at "www.adobe.com."
According to Complainant an individual named Victor Lashenko registered <wwwadobe.com> on August 17, 2000. The Respondent acquired the said Domain Name in Dispute on July 29, 2002, according to the transfer date in Exhibit 1.
Respondent is not a licensee of Complainant, nor is he otherwise authorized to use Complainantís ADOBE Trademark. According to Complainant, Respondent is not the owner of a registered or common-law trademark containing the term ADOBE, or any permutations thereof.
Web users who mistype "www.adobe.com" or otherwise inadvertently access Respondentís website, "www.wwwadobe.com," are redirected to "www.gotoo.com/treasure/software.htm," upon which a message is superimposed and consumers are given the option of choosing between "OK" or "Cancel" as shown in Exhibit 7, while "OK" redirects the consumer to a gambling site, "Cancel" removes the superimposed message and provides to the consumer access to either of two websites which contains links to various internet sites, inclusive among them computer software products and services. None of these websites are affiliated with or have any association whatsoever with Complainant.
On February 5, 2003, Complainant sent Respondent a letter via Airborne Express courier and via email notifying Respondent of its rights in the ADOBE Trademark and alerting Respondent that it considered Respondentís registration of domain name <wwwadobe.com> to be trademark infringement and demanded that Respondent cease and desist use of the Domain Name in Dispute and immediately withdraw registration. On February 6, 2003, an email notification was received by Complainant stating that the email could not be delivered because the email address had "permanent fatal errors" and that "User" was "unknown." On March 7, 2003, Complainant received back the Airbone Express package returned as "undeliverable" because of an "invalid address."
On September 25, 2003, Complainant sent a letter to the Respondent reiterating its rights in the ADOBE Trademark and alerting Respondent that if he did not cease and desist use of the Domain Name in Dispute and immediately withdraw registration by September 30, 2003, it intended to move forward with plans to file a WIPO complaint against him. Respondent has not responded to Complainant, and the Domain Name in Dispute and related website in question continues to be used by the Respondent. This last letter was presumably received since it was not returned as "undeliverable" as the previous one was.
5. Partiesí Contentions
Complainant alleges that the Domain Name in Dispute is identical to Complainantís ADOBE Trademark used and registered by it. Complainant submits that given this long use, consumers associate the ADOBE Trademark with Complainantís products and services and adds that the "www" prefix and the ".com" suffix are not distinctive relying on panel decision in World Wrestling Federation Entertainment Inc. v Bessette, WIPO Case No. D2000-0256.
Complainant alleges that Respondent has no prior rights or legitimate interests in or to the ADOBE trade name or Trademark nor does it have prior rights to the Domain Name in Dispute, considering that Complainant operates since 1986.
Complainant states that Respondent is not a licensee nor is Respondent otherwise authorized to use itís Trademark. Furthermore, the Domain Name in Dispute is not in any way identified with or related to a legitimate interest of the Respondent and that the latter is not commonly known by the name ADOBE and is not making legitimate non-commercial or fair use of the name with an intention not to mislead consumers.
Complainant further states that Respondent has used the Domain Name in Dispute to direct traffic to other websites, including gambling sites and sites offering non-Adobe computer software products and services for sale for commercial benefit. Complainant contends that such use which intentionally trades on the fame of another cannot constitute a good faith or bona fide offering of goods or services. Respondent is using the ADOBE Trademark to create consumer confusion as to the source, sponsorship, affiliation, or endorsement of the website, this being indicative of bad faith registration and use.
Complainant submits it has invested substantial resources in establishing and maintaining goodwill and customer recognition associated with its various trademarks. Its efforts have resulted in high customer recognition and satisfaction rankings in customer surveys and consumer magazines and that consumers have an expectation that the Domain Name in Dispute will direct them to a website controlled or authorized by Adobe.
Complainant represents that as a result of the significant amount of time and money it has invested into promoting the ADOBE Trademark, the Trademark has become famous and is very well known and recognized by consumers throughout the world as clearly associated with Complainant. On the Internet alone, there are literally thousands of references to Complainantís ADOBE Trademark and the goods and services promoted in connection with its trademark.
Complainant submits that there is no evidence of Respondentís use, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods and services.
Complainant represents that Respondent is not currently, nor was it prior to registration of the Domain Name in Dispute, making any legitimate non-commercial or fair use of the said Domain Name or the term ADOBE or any permutations thereof and that Respondent sought to capitalize on a common mistake made by Internet users when they type in a domain name. It submits that use of the "www" prefix in this case indicates bad faith and relies on World Wrestling Federation Entertainment Inc. v Bessette and Charles Schwab & Co. Inc. v Polanski, WIPO Case No. D2001-0959 decisions.
Complainant furthermore contends that Respondent failed to provide complete contact details when it acquired registration of the Domain Name in Dispute, the postal address, email address and voice telephone number provided by the Respondent are all invalid. This failure to provide proper contact details is further evidence of bad faith.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following 3 elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interest with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has submitted sufficient evidence that it is the user of the ADOBE Trademark and the owner of several registrations thereof in various countries around the world. Accordingly, the Panel finds that Complainant has rights in the "ADOBE" Trademark.
There is no doubt that the domain name <wwwadobe.com> is confusingly similar with the Trademark ADOBE of Complainant for purposes of the Policy. The Domain Name in Dispute incorporates in its entirety the ADOBE Trademark.
In the opinion of the Panel relying on panel decisions properly cited by Complainant, the addition of the three letters "w" without a dot to the distinctive part of the trademark ADOBE does not deter the reader from the fact that the Trademark ADOBE has been taken and associated with the prefix "www" and the suffix ".com" which results in the Domain Name in Dispute. This view and assessment of the situation by the Panel is further reinforced by the volume of business and publicity that the Complainant carries under its registered ADOBE Trademark.
The Panel finds that the Domain Name in Dispute is confusingly similar with the registered trademark ADOBE.
B. Rights or Legitimate Interests
Respondent has not submitted a Response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interest in the Domain Name in Dispute by stating that the Respondent has never been known by the name ADOBE or the Domain Name in Dispute, is not making legitimate known commercial or fair use of the Domain Name in Dispute.
As shown by the Complainant, the use of the Domain Name in Dispute by the Respondent is to divert internet users who have made a mistake in attempting to reach the Complainant to either a gambling website or to various websites offering competitive products whereby the Respondent is benefiting from such linked services. In so doing the Respondent uses in the Domain Name in Dispute the ADOBE Trademark of Complainant and such use is made without the authorization or license of the Complainant. Consequently such activities of the Respondent cannot be legitimate non commercial or fair use.
Respondent has been made aware of Complainantís position in the Complaint which was served upon the Respondent and the later has neglected to file any evidence which may rebut the prima facie case that the Complainant has made.
The Panel concludes that the Respondent has not made use of the Domain Name in Dispute in connection with the bona fide offering of goods and services.
Accordingly, there is no evidence that the Respondent has any rights or legitimate interest in the Domain Name in Dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood or confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain name was registered and used in bad faith.
The Panel has determined from the well documented evidence that the Domain Name in Dispute was registered in August 17, 2000, more than 4 years after the continuous extensive use and rendering of services under the ADOBE Trademark registered in the United States and used since 1986. Based on the evidence, the Panel finds that Complainant benefits substantial goodwill in association with this Trademark.
The Panel considers that the Respondent in diverting internet users that have made a mistake back to third party website had on purpose selected a domain name identical or very close to the Trademark of Complainant and the Panel therefore concludes that, in so doing, the Respondent was well aware of the rights of the Complainant in the registered Trademark, even more so in Pakistan, Respondentís country of residence.
The Respondent was thus imitating Complainantís Trademark ADOBE when registering the Domain Name in Dispute. Respondent has adopted a practice of "typosquatting" which has been recognized in many URDP decisions as bad faith use of a domain name.
It has been recognized in several URDP decisions that using a confusingly similar domain name to the trademark of a complainant to redirect Internet third party websites is neither a bona fide offering of goods or services nor a legitimate non commercial or fair use. Furthermore, many URDP decisions have qualified that such use as the one in the present instance made by Respondent for its own financial gain amounts to registration and use of a domain name in bad faith.
The Panel in the present case finds that the intentional registration and use of the Domain Name in dispute clearly manifests an intent by Respondent to capitalize on and to benefit from the goodwill in the ADOBE Trademark of Complainant as well as an intent to take advantage of Internet users misspelling a domain name which constitutes use of the Domain Name in Dispute in bad faith.
The Panel concludes that:
(a) the domain name <wwwadobe.com> is confusingly similar to the Complainantsí ADOBE Trademark;
(b) the Respondent has no rights or legitimate interest in the Domain Name in Dispute;
(c) the Domain Name in Dispute has been registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wwwadobe.com> be transferred to the Complainant.
J. Nelson Landry
Dated: January 6, 2004