WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adobe Systems Incorporated v. Albert Sole, Photoshopcaribe / Domains By Proxy, LLC
Case No. D2016-0582
1. The Parties
The Complainant is Adobe Systems Incorporated of Seattle, Washington, United States of America ("USA"), represented by Soerensen Garcia Advogados Associados, Brazil.
The Respondent is Albert Sole, Photoshopcaribe of Bavaro, Higuey, Dominican Republic / Domains By Proxy, LLC, Scottsdale, Arizona, United States of America, represented by Russin, Vecchi & Heredia Bonetti (RV&HB), Dominican Republic.
2. The Domain Name and Registrar
The disputed domain name <photoshopcaribe.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 1, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2016. The Response was filed with the Center on April 26, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 6, 2016. 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 company founded in the United States of America in 1982. It develops and supports technologies and software solutions which are sold and distributed throughout the world, including over the Internet. In its financial year ended November 27, 2015, the Complainant reported revenues of USD 4.795 billion. The Complainant has more than 13,000 employees worldwide.
The Complainant states that it is the registered owner of over sixty registrations and pending applications globally in respect of the trademark PHOTOSHOP. For example, the Complainant is the owner of USA registered trademark no. 1850242 for the word mark PHOTOSHOP filed on October 16, 1992 and registered on August 16, 1994 in international class 9 with a claimed first use in commerce date of February 2, 1990. The PHOTOSHOP trademark is well-known and is used by the Complainant in connection with its image manipulation software solution "Adobe Photoshop". The Complainant is the registrant of the domain name <photoshop.com>, created on January 31, 1999, which it uses to promote its software. According to the Complainant's "Adobe Fast facts" information, over 90% of the world's creative professionals use "Adobe Photoshop".
In the Dominican Republic, where the Respondent is based, the Complainant is the owner of registered trademark no. 224737 for the word mark PHOTOSHOP applied for on June 15, 2015 and registered on October 1, 2015 in international classes 3, 9, 16 and 45. The Complainant defended this trademark by instituting opposition proceedings on June 18, 2015 before the Dominican Republic's Industrial Property Office ("the IP Office") regarding a third party's application for a registered trademark containing the word PHOTOSHOP, which application had been made on May 15, 2015. The applicant for such trademark did not file any response to the Complainant's opposition, which was granted under Resolution no. 492 after due consideration by the IP Office.
According to the Complainant's translation of the said Resolution, the Complainant presented various documents "in order to demonstrate the use of the trademark PHOTOSHOP prior to the contested party". The Resolution also notes that the Complainant argued inter alia that "the use of the [Complainant's PHOTOSHOP] mark in Dominican territory dates back to the middle of 1990 and has been uninterrupted, which evidences the use". The IP Office's findings do not specifically address the Complainant's argument as to length and extent of the use of the Complainant's mark within the Dominican Republic other than to note that the mark is nationally and internationally well-known and that, although the Complainant's mark was not registered in the Dominican Republic at the time of third party's application, "it is also certain that it has a public recognition for its use in publicity through the images in magazines, newspapers, certificates, webpages etc. by which it becomes evident the use [sic] prior to 6 months of the filing of the contested application".
The Respondent, Alberto Sole, is a professional photographer and is the owner, manager and principal shareholder of a photography company registered in the Dominican Republic which uses the trading name "Photoshop del Caribe". The "About Us" page on the website associated with the disputed domain name states that Mr. Sole, a Spanish national, decided to settle in the Dominican Republic after visiting initially in 1996. The page goes on to describe how "Photoshop del Caribe" began with Mr. Sole carrying out photo sessions for tourists visiting the Dominican Republic and that the business ultimately expanded to a professional team whose services are offered throughout the area via partner hotels and resorts. The page adds that the business has completed 2,000 weddings and more than 10,000 other photo sessions.
The Respondent provides copies of a variety of official documents from the relevant authorities in the Dominican Republic, together with translations, which support the corporate history and trading name of "Photoshop del Caribe" dating back to 2002. These include a Certificate of Mercantile Registration dated May 21, 2009 stating that Photoshop del Caribe S.R.L. was incorporated on April 29, 2002 for the purposes of "project development and management, photo taking, videos, recordings, framing, lamination and photography in general"; an Internal Revenue document dated July 15, 2002 authorizing the incorporation of "Photoshop del Caribe S.A."; a Trade Name Registration Certificate issued on February 15, 2002 confirming the registration of the trade name "Photoshop del Caribe" for a ten year period; a Trade Name Registration Certificate issued on January 19, 2016 covering the forthcoming ten year period; and an entry in the Registry of Title Deeds dated March 11, 2005 stating that "Photoshop del Caribe, S.A." is the owner of rights in certain commercial premises acquired in April 2003.
The disputed domain name was created on October 31, 2006 and is used for the business website of Photoshop del Caribe S.R.L.
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant notes that its PHOTOSHOP trademark is a very valuable asset to the Complainant and is famous, as recognized in the trademark opposition proceedings described in the factual background section above. The Complainant notes that the disputed domain name incorporates the Complainant's trademark in its entirety together with the geographical term "Caribe" which the Complainant notes is non-distinctive and does not sufficiently distinguish the disputed domain name from the Complainant's trademark.
The Complainant notes that when the disputed domain name was created in 2006 the Complainant's PHOTOSHOP product had been in the market for 16 years and had gained considerable fame and recognition. The Complainant asserts that to the best of its knowledge the Respondent has no rights over the expression "Photoshop". The Complainant adds that it is not credible that the Respondent, specialized in professional photographic services, was unaware of the Complainant's trademark and related products, given that the Complainant's product is the most used program for photograph editing. The Complainant asserts that it is not credible that the Respondent has ever used the disputed domain name or related name in good faith and that it intended to benefit from or take unfair advantage of the Complainant's trademark, thus excluding any possibility of legitimate interest in respect of the disputed domain name. The Complainant points out that the Respondent is making commercial use of the disputed domain name and is thus associating the fame of the Complainant's trademark with the Respondent's services, risking dilution of the Complainant's trademark.
The Complainant assets that the Respondent has purposefully created the likelihood of confusion and illusion that the services offered on the Respondent's website are executed or endorsed by the Complainant. The Complainant adds that the Respondent's mere attempt to associate the fame of the PHOTOSHOP mark with the Respondent's services evidences bad faith in the registration and use of the disputed domain name. The Complainant notes that bad faith is also demonstrated by the fact that the Respondent transferred the disputed domain name to Domains by Proxy in an attempt to prevent any measures being taken against it.
The Complainant notes that it sent a cease and desist notice to the Respondent but that it was not possible to resolve the matter amicably.
The Respondent requests that the Complaint be denied. The Respondent sets out the history of his business and states that his company and staff are well known for their professional skills in the relevant areas of the Dominican Republic. The Respondent asserts that his company provides professional photography services in contrast to the software solutions provided by the Complainant and states that it has used its trading name for more than thirteen years. The Respondent cites intellectual property law of the Dominican Republic in support of his claim that his company is the legitimate owner of its trade name. The Respondent adds that its rights in the trade name have been granted by the Trademark Office of the Dominican Republic because they date prior to the Complainant's PHOTOSHOP trademark in that country and refer to different products and services.
The Respondent seeks to distinguish the trademark opposition case cited by the Complainant on the basis that the third party's trademark application was later than the Complainant's trademark registration and sought to protect the same products.
The Respondent notes that intellectual property rights in the Dominican Republic are granted by registration and not through use, such that the Complainant's rights in the PHOTOSHOP mark post-date the Respondent's use of its trading name by some fourteen years. The Respondent states that the law of the Dominican Republic provides that the right to exclusive use of a trade name is acquired by the first use in commerce within the territory of the Dominican Republic; that the trade name will be protected without obligation to register but that registration can be made for "declarative purposes" as the Respondent has done.
The Respondent denies that the Complainant's product was known or used in the Dominican Republic in 2002 and claims that "Photoshop" is a generic term in a foreign language that is descriptive of the Respondent's services. The Respondent claims legitimate rights and interests in the disputed domain name, to advertise his company's goods and services as he has done for over a decade. The Respondent adds that he has a reputation of his own for the provision of quality services and no need to associate with the Complainant's products or services. The Respondent states that he had the legal right to oppose the application for the Complainant's trademark, that further actions are available to him and that his rights in this respect are reserved.
The Respondent notes that he does not take issue with the reputation of the Complainant's trademark but adds that there is no possibility of confusion and no violation of the Complainant's intellectual property. The Respondent notes that his company's website is very clear about the services rendered and that it is clear that such services are not affiliated or sponsored by the Complainant and are provided in the Dominican Republic by a Dominican company.
The Respondent states that the Complainant's cease and desist notice was appropriately answered by the Respondent with details of the Respondent's claim to superior intellectual property rights in the Dominican Republic. It adds that these were capable of verification with the appropriate authorities.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the mark PHOTOSHOP for the purposes of this element of the Policy. Comparing this mark to the disputed domain name, the Panel notes that the mark is reproduced in its entirety coupled with the geographic term "Caribe" being the Spanish term for the Caribbean. It is well established in cases under the Policy that the addition of a generic word or geographic term to a trademark in a domain name is insufficient to avoid confusing similarity between such mark and domain name.
The Panel adds for completeness that the fact that the Complainant's mark in the Dominican Republic is recently registered is of no consequence to the assessment of rights under this element of the Policy.
In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a mark in which the Complainant has rights and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
In light of the Panel's finding in respect of bad faith registration and use below, there is no need for the Panel to address the issue of whether the Respondent has rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 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 that 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 web site 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 your web site or location or of a product or service on your web site or location".
On the whole, the Complainant must prove the registrant acted unfairly in a manner meant to take advantage of the Complainant's reputation and goodwill in the PHOTOSHOP mark. In this respect, a complainant must typically demonstrate that the respondent had or is likely to have had knowledge of the complainant's rights when it registered the domain name concerned and that the respondent had bad faith intent to target such rights at the point of such registration.
The Complainant has established to the Panel's satisfaction that its PHOTOSHOP trademark is well-known and in very widespread use today. The Respondent does not take issue with that contention. Critically for the Complainant's case, however, it has not provided the Panel with any evidence of the extent of the mark's fame or the corresponding product's market penetration in the Dominican Republic in 2002 when the Respondent's photography business was established and its trading name registered or in 2006 when the disputed domain name was created. On this question, the Complainant has chosen merely to rely upon its statement that its product had been "on the market" for some sixteen years at the point of registration of the disputed domain name and to produce the IP Office Resolution in the recently contested trademark application. The Resolution does refer to an argument put forward by the Complainant that its mark has been used on an uninterrupted basis in the Dominican Republic since the middle of 1990. However, it appears that the IP Office did not examine the full history of the Complainant's use of the mark, presumably because the trademark application under review was of a recent date. The IP Office's finding that the Complainant's mark is both nationally and internationally famous appears to relate to the present and the recent past, given that it makes specific reference to a period of six months prior to the filing of the contested trademark application. In the Panel's opinion, this is not authority on its own for the proposition that the Complainant has used its mark in the Dominican Republic since the mid 1990s, nor that it had achieved any particular degree of fame in that territory by 2002 or 2006 which is likely to have come to the Respondent's notice. In short, the Complainant's case does not go far enough for the Panel, particularly in the face of the Respondent's contrary submissions and evidence.
There is nothing on the present record which demonstrates to the Panel's satisfaction that in 2002 or 2006 the Respondent, a Spanish national resident in the Dominican Republic, is likely to have been aware of the Complainant's PHOTOSHOP trademark. Furthermore, there is nothing on the present record that would lead the Panel to make an inference that the Respondent must additionally have had the intent on either of those dates to target such trademark with a view to benefiting from association with it. No evidence of the reputation or fame of the Complainant's PHOTOSHOP mark in 2002 or 2006 (within the Dominican Republic or elsewhere) has been produced. It is possible that such fame or reputation might have been shown by the Complainant, for example by way of suitable evidence of the extent of the Complainant's global sales for "Photoshop" branded software in 2002 or 2006 or better still the number of active licenses of the Complainant's software distributed or registered to users in the Dominican Republic, especially professional photographers such as the Respondent, at either of those dates. However, no such evidence has been produced and the Panel is not prepared to infer the extent of the past fame or reputation of the Complainant's mark in the Dominican Republic or elsewhere purely on the basis of a first use in commerce date of 1990 contained in the Complainant's USA registered trademark or, for the reasons set out above, on the basis of the IP Office's Resolution in the recently contested trademark application.
The Complainant emphasizes the fact that the Respondent changed the disputed domain name's WhoIs record to refer to a proxy service as the registrant of the disputed domain name after having received the Complainant's cease and desist notice and asserts that this is indicative of registration and use in bad faith. The Panel does not agree, in light of the Respondent's reply to the cease and desist notice in which the Respondent identity and that of his company, together with the latter's status as registrant of the disputed domain name are clearly stated. While the Respondent does not explain why he adopted the use of the proxy service, it cannot therefore have been with intent to obscure the identity of the registrant of the disputed domain name in order to prevent measures being taken by the Complainant as has been alleged.
For its part, the Respondent makes a two-pronged attack on the Complainant's case. First, the Respondent alleges that it was entitled to register the disputed domain name in light of its claim to superior rights in the Dominican Republic in the term "Photoshop", the Complainant's trademark not having been registered in that territory until 2015, some thirteen years after the Respondent began using its trading name "Photoshop del Caribe". Despite this apparently having been put to the Complainant in the Respondent's reply to the Complainant's cease and desist notice, the Complainant has produced nothing in the Complaint to address the Respondent's claim.
Secondly, the Respondent asserts that his professional photography business is in a different field to that of the Complainant, which is engaged in the development of image manipulation software, such that there can be no confusion between the Parties' respective offerings under the name "Photoshop", and, by extension, that the Respondent must have had no intent to cause or benefit from any such confusion by the registration and use of the disputed domain name. It seems to the Panel that here the Respondent might have been on shakier ground, at least as far as the UDRP is concerned, had the Complainant produced evidence that by 2002 its PHOTOSHOP mark had attained anything like the global fame that it currently enjoys, in particular in the Dominican Republic. This could have gone some way towards demonstrating a bad faith intent on the Respondent's part. However, as noted above, the Complainant has not attempted to produce any such evidence notwithstanding the Respondent's reply to the Complainant's cease and desist notice and furthermore its express averment in the Response that the Complainant's product was not known or used in the Dominican Republic in 2002.
In any event, this case strikes the Panel as one which the Policy is ill-suited to resolve given that it is not a clear case of abusive cybersquatting and that there are apparently competing legal interests at its essence which are subject to the domestic laws of the Dominican Republic. These would be more appropriately raised and better suited to a determination in the courts of that country. Either or both of the Parties are free to take this dispute to a relevant forum. The present finding does not seek to influence any such subsequent proceedings, should they be raised.
The Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy and in these circumstances the Complaint fails.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: May 13, 2016