WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Adobe Systems Incorporated v. Domains by Proxy Inc., Marshall Reeves/ The MRMedia Network

Case No. D2007-1163

 

1. The Parties

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

The Respondent is Domains by Proxy Inc., Marshall Reeves/ The MRMedia Network, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name, <macromedia.org>, is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2007. On August 7, 2007, the Center transmitted by email to Godaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 7, 2007, Godaddy.com, Inc. transmitted by email to the Center its verification response indicating that the Respondent named in the Complaint, “Domains by Proxy, Inc.,” is not listed as the registrant of the disputed domain name, and instead identifying the registrant as “The MRMedia Network” and providing the contact details. On August 10, 2007, the publicly accessible WHOIS data indicated the registrant as “Marshall Reeves, The MRMedia Network.” In response to a notification by the Center to the Complainant providing the registrant identity and contact information received from the Registrar, the Complainant filed an amendment to the Complaint on August 14, 2007. The Center verified that the Complaint together with the amendment to 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 August 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2007.

The Center appointed Dennis A. Foster as the sole panelist in this matter on September 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

The Complainant is a large, well-established United States of America computer software company. The Complainant owns a trademark, MACROMEDIA, which is registered with the United States Patent and Trademark Office (the “USPTO”).

The Respondent is listed as the registrant of the disputed domain name <macromedia.org>, and the record of registration was created on March 6, 2004. The Respondent uses the disputed domain name to redirect Internet users to third party websites that offer the Complainant’s products for sale at substantial discounts.

 

5. Parties’ Contentions

A. Complainant

- The Complainant was founded in 1982 and markets computer software products for use in Internet and print publishing. It is the second largest United States of America based software company, with annual revenues exceeding $1.5 Billion USD and more than 5,700 employees worldwide.

- On December 3, 2005, the Complainant acquired, among other things, the trademark MACROMEDIA. In use since 1991, over $400 Million USD in revenue was generated under the trademark in fiscal year 2005. Considerable sums had been spent previously in promoting the mark.

- The trademark MACROMEDIA is registered with the USPTO (Registration No. 2,424,671; January 30, 2001) and in other countries. As a result of the substantial amount of money spent on its promotion, the mark is well-known throughout the world.

- The Respondent registered the disputed domain name <macromedia.org> on March 6, 2004. The Respondent is neither a licensee of the Complainant nor otherwise authorized to use the Complainant’s trademark. The Respondent also owns no registered or common law rights to a mark resembling MACROMEDIA in any form.

- The Respondent’s website at the disputed domain name directs Internet users to deeply discounted products produced by the Complainant.

- On May 17, June 20 and October 12, 2006, the Complainant sent the Respondent separate “cease and desist” letters to which there was no response.

- The disputed domain name is identical and confusingly similar to the Complainant’s trademark.

- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not known by the name Macromedia, and is not making a noncommercial or fair use of that name. The Respondent’s use of the name to redirect consumers to websites (most of which are not legitimate resellers of the Complainant’s products) that offer the Complainant’s products at severe discounts is not a bona fide offering of goods or services.

- The use of the disputed domain name to divert Internet users through confusion with the Complainant’s trademark is evidence of bad faith. The Respondent’s lack of association with the Complainant is further evidence of bad faith. The Respondent’s failure to furnish proper contact information in connection with the registration of the disputed domain name is still more evidence of bad faith.

B. Respondent

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

 

6. Discussion and Findings

The Complainant in order to succeed in this administrative proceeding pursuant to paragraphs 4(a)(i-iii) of the Policy, and obtain a transfer of the disputed domain name <macromedia.org>, must prove the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

The Complainant has furnished the Panel with conclusive evidence (see Exhibit 5) of the Complainant’s registration with the USPTO of the trademark “MACROMEDIA.” In line with innumerable prior Policy panel decisions, the Panel finds this evidence sufficient to conclude that the Complainant has the rights necessary in that mark to satisfy the requirements of paragraph 4(a)(i) of the Policy. See, for example, Save the Children Federation, Inc. v. Steve Kerry dba North West Enterprise, Inc., WIPO Case No. D2006-0388 (May 15, 2006); and Reebok International Limited v. Shaydon Santos, NAF Case No. FA565685 (December 21, 2005).

The disputed domain name is identical to the Complainant’s mark except for the addition of the gTLD “.org”, which is immaterial.

Therefore, the Panel finds that the Complainant has met its burden to show that the disputed domain name is identical to a trademark in which it has rights.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain name. However, in consideration of the difficulty in proving this negative proposition where a respondent is usually in possession of the pertinent evidence, the favored position of previous UDRP panels is that complainants must sustain only a prima facie case on this issue to shift the burden of proof to the respondent. See, for example, AOL LLC v. Gerberg, NAF Case No. FA780200 (September 25, 2006) (where the panel, ruling in favor of a domain name transfer, opined “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interests in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); and Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Case No. FA741828 (August 18, 2006).

In this case, the Complainant has demonstrated its trademark rights to the Panel’s satisfaction and has asserted clearly that it has never granted a license to, or otherwise authorized, the Respondent to use the trademark in any manner. As the Respondent has failed to file a Response in this proceeding, the Panel reasonably accepts those assertions as true. (For UDRP decisions concerning the reasonable inferences to be drawn from a failure to submit a response, see, for example, Bayerische Motoren Werke AG v. Bavarian AG, NAF Case No. FA110830 (June 17, 2002); and Vertical Solutions Management, Inc. v. webnet-marketing, inc., NAF Case No. FA95095 (July 31, 2000) (where the panel, finding for the complainant, said “The Respondent submitted no response in this matter. As a result, all reasonable inferences of fact in the allegations of the Complainant will be deemed true.”) Therefore, the Panel concludes that the Complainant has made the prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent’s failure to file a Response leaves the Panel to consider whether there is an acceptable basis for a rebuttal to the Complainant’s case elsewhere in the record. Paragraph 4(c) of the Policy offers the Panel guidance in that respect. However, as explained below, the Panel finds no evidence in the record to support the applicability of the criteria listed in that paragraph to aid the Respondent’s position.

The Complainant alleges – and the Panel accepts in the absence of a Response filed by the Respondent – that the Respondent uses the disputed domain name to redirect consumers to competing websites that market deeply discounted products made by the Complainant. That use does not constitute a bona fide offering of goods or services within the meaning of subparagraph 4(c)(i) the Policy. See, Abbott Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088 (April 7, 2004) (where the panel, in deciding for the complainant, wrote “…Respondent’s registration and use of the domain name without Complainant’s permission for a website selling both Complainant’s products and directly competing products does not constitute a bona fide offering of goods pursuant to paragraph 4(c)(i) of the Policy”); and Gardens Alive, Inc. v. D&S Linx, NAF Case No. FA203126 (November 20, 2003). Moreover, there is simply no evidence to be found that the Respondent, or a company owned by the Respondent, is commonly known by a name corresponding to the disputed domain name, so paragraph 4(c)(ii) is inapplicable. Finally, the Respondent’s redirection of Internet users as described above is neither a noncommercial nor fair use of the name, leaving the requirements of paragraph 4(c)(iii) unsatisfied.

As reasoned above, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent’s website at the disputed domain name serves merely to link Internet users to third-party websites that offer the Complainant’s products at significantly discounted prices. Such offerings would naturally cause the Complainant to lose sales and therefore act to disrupt its business. Since the Respondent declined to file a Response, the Panel, as noted above, is bound to accept such reasonable contentions made by the Complainant as true.

Having accepted the preceding contention, the Panel is mindful of subparagraph 4(b)(iii) of the Policy that lists a circumstance which, if found to exist by the Panel, gives rise to a finding of bad faith registration and use, to wit: “[the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor.” In line with prior UDRP panels and presuming in the circumstances the the Respondent is in fact a competitor of the Complainant as alleged, the Panel finds the Respondent’s actions fall within the purview of that subparagraph, compelling a finding of bad faith registration and use of the disputed domain name by the Respondent. See General Communication, Inc. v. General Communications Inc. c/o Domain Admin, NAF Case No. FA778968 (October 4, 2006) (where the panel ordered a transfer of the domain name in question, stating “Because the <mygci.net> domain name resolves to a web page with links to Complainant’s competitors in the communications service industry, the Panel finds that Respondent has registered and is using the subject domain name for the primary purpose of disrupting Complainant’s business, which constitutes bad faith according to Policy 4(b)(iii).”); and Ticketmaster Corporation v. Woofer Smith, WIPO Case No. D2003-0346 (July 4, 2003). The Panel notes in passing that the Respondent’s conduct would also likely fall within the circumstances described in paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel holds that the Respondent registered and is using the disputed 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 <macromedia.org> be transferred to the Complainant.


Dennis A. Foster
Sole Panelist

Date: October 10, 2007