WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Adobe Systems Incorporated v. Domain OZ
Case No. D2000-0057
1. The Parties
The Complainant is Adobe Systems Incorporated, a corporation organized in the State of Delaware, United States of America (USA), with principal place of business in San Jose, California, USA.
The Respondent is Domain OZ, with address in Los Angeles, California, USA. Respondent is also known as Names O Z, with address in Los Angeles, California, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain names are "" and "".
The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 11, 2000, and by courier mail received by WIPO on February 14, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On February 16, 2000, WIPO completed its formal filing compliance requirements checklist.
b. On February 16, 2000, WIPO transmitted notification of the complaint and initiation of the proceeding to the Respondent via e-mail and registered priority air mail. This date represents the commencement of this administrative proceeding (Rules for Uniform Domain Name Dispute Resolution Policy, para. 4(c)). Respondent has not provided a fax communications number in its domain name registration. Respondent�s use of a post office box as its sole physical address precludes WIPO�s use of such express air courier service as it otherwise employs in administrative panel proceedings for delivery of hard copy documentation to respondents. On February 16, 2000 WIPO transmitted notification of the complaint to ICANN, Network Solutions and Complainant�s authorized representative.
c. On March 8, 2000, WIPO transmitted notification to Respondent of its default in responding (to the complaint transmitted on February 16, 2000) by registered priority air mail and e-mail.
d. On March 6, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 6, 2000 the undersigned transmitted by fax the executed Statement and Declaration to WIPO.
e. On March 9, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. On March 11, 2000, the Panel received the file in this matter by courier from WIPO. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 22, 2000.
The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondent�s default in responding to the complaint). The proceedings have been conducted in English.
4. Factual Background
Complainant has provided a copy (Exhibit C to its complaint) of its U.S. Patent and Trademark Office trademark registration dated April 19, 1994, for "ADOBE ACROBAT" number 1,832,019, on the Principal Register. Complainant states that the "ADOBE ACROBAT" trademark is in continuous use with respect to computer programs and related development and technical support services in the United States and abroad, including on the Internet. Complainant has furnished evidence in the form of Internet website printouts showing the use of the "ADOBE ACROBAT" trademark in commerce (Complainant�s Exhibit D). The validity of Complainant�s trademark registration for "ADOBE ACROBAT" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid trademark registration for "ADOBE ACROBAT" in the United States.
Complainant has provided a copy (Exhibit C to its complaint) of its U.S. Patent and Trademark Office application for trademark registration on the Principal Register, dated September 9, 1999, for "ACROBAT READER", application serial number 75/796153. Complainant states that the "ACROBAT READER" trademark is in continuous use with respect to computer programs and related development and technical support services in the United States and abroad, including on the Internet. Complainant has furnished evidence in the form of Internet website printouts showing the use of the "ACROBAT READER" trademark in commerce (Complainant�s Exhibit D). The fact of Complainant�s application for trademark registration for "ACROBAT READER" has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant has applied for trademark registration for "ACROBAT READER" in the United States.
Complainant maintains several additional trademark registrations on the Principal Register of the U.S. Patent and Trademark Office regarding the trademarks "ADOBE", "ACROBAT", "ACROBAT EXCHANGE" and "ABODE CAPTURE" (Complainant�s Exhibit C).
Network Solutions� WHOIS database query response (Complainant�s Exhibit A) indicates that Domain OZ, with Administrative Contact at "WWWHOSTMASTER" is the registrant of the domain name "ADOBEACROBAT.COM". The record of this registration was created on April 28, 1998, and was last updated on September 2, 1999.
Network Solutions� WHOIS database query response (Complainant�s Exhibit A) indicates that Names O Z, with Administrative Contact at "WWWHOSTMASTER" is the registrant of the domain name "ACROBATREADER.COM". The record of this registration was created on April 30, 1998, and was last updated on June 4, 1999.
As indicated in Complainant�s Exhibit M, a Networks Solutions� WHOIS database search of May 28 1998, for domain names registered by "Oz domains" indicated that a large number of domain names were registered by that party (at least 256), and that many of these names are identical or confusingly similar to trademarks of which the public is likely to be aware 1.
As indicated in Complainant�s Exhibit N, a Networks Solutions� WHOIS database search of October 6, 1998, for domain names registered by "Names O Z" indicated that a large number of domain names were registered by that party (over 160), and that many of these names are identical or confusingly similar to trademarks of which the public is likely to be aware.
The Service Agreement in effect between Respondent and Network Solutions as of February 10, 2000 (Complainant�s Exhibit B) subjects Respondent to Network Solutions� dispute settlement policy, which as of that date is the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.
5. Parties� Contentions
A. Complainant
Complainant states that it has continuously used the trademark "ADOBE" in commerce since at least as early as 1986, and has used the trademarks "ADOBE ACROBAT" and "ACROBAT READER" in commerce since at least as early as 1993. Complainant has provided evidence of registration at the U.S. Patent and Trademark Office (PTO) of various "Adobe"-related trademarks, including a trademark registration for "ADOBE ACROBAT" and a trademark application for "ACROBAT READER" (collectively referred to by the Complainant as the "Adobe Marks"). Complainant indicates that the Adobe Marks are "used in connection with products and services that are sold and distributed throughout the United States and the world, as well as over the Internet" (Complaint, para. 15).
Complainant states that as a result of Adobe investments, the Adobe Marks "are very well known and recognized by consumers" (id., para. 16).
Complainant states that Respondent is not a licensee of Complainant, is not authorized to use the Adobe Marks, and (on information and belief) is not the owner of "any federally registered or common law trademarks containing either the terms ADOBE or ACROBAT, or any permutations thereof" (id., para. 19).
Complainant recites the history of its efforts to compel Respondent to cease and desist from use of the "" domain name prior to the adoption of the Policy by ICANN and its implementation by Network Solutions (id., paras. 20-24).
Complainant states, on information and belief, that "Respondent has not developed or posted a Website using or made any other good faith use of the domain name" (id., para. 25).
Complainant recites the history of its efforts to compel Respondent to cease and desist from use of the "" domain name prior to the adoption of the Policy by ICANN and its implementation by Network Solutions (id., paras. 29-31).
Complainant states, on information and belief, that "Respondent has not developed or posted a Website using or made any other good faith use of the domain name" (id., para. 32).
Complainant refers to its Network Solutions� WHOIS database searches regarding registrations in the names of Oz Domains and Names O Z, indicating that such searches located more than 256 (prior to the search aborting) and 160 registrations respectively. Oz Domains registrations included "", "" and "" 2. Names O Z�s registrations included "", "" and "". Complainant indicates, on information and belief, that "many of the domain names on the list[s] are identical or confusingly similar to the registered trademarks of third parties" (id., paras. 33 & 34).
Complainant states that "Respondent�s Domain Names are clearly identical and confusingly similar [sic] trademarks used and registered by Adobe, namely the Adobe Marks". Complainant indicates that "consumers have a reasonable expectation that the Domain Names, and , which are comprised entirely of Adobe trademarks, will take them to a site(s) connected with Adobe. They are very likely to be confused when the Domain Names instead take them to websites being operated by Respondent" (id., para 35).
Complainant states, on information and belief, that Respondent "has no rights or legitimate interests in respect of the Domain Names. Respondent has not been commonly known by either of the Domain Names; each is clearly and strongly associated with Adobe. Further, as noted above, Respondent is not a licensee of Adobe, nor is he otherwise authorized to use the Adobe�s [sic] Marks. Further, on information and belief, the Domain Names are not, nor could they be contended to be, nicknames of Respondent or other member of his family, the name of a household pet, or in any other way identified with or related to a legitimate interest of Respondent" (id., para. 36).
Complainant states that Respondent "registered and is using the Domain Names in bad faith. As evidenced by the number of infringing domain names Respondent has registered �, it is clear that Respondent has engaged in a pattern of registering domain names in order to prevent the owners of such trademarks from reflecting the marks in corresponding domain names" (id., para. 37).
Complainant further states that Respondent has made no good faith use or preparation to use the disputed domain names (id., para. 38), and has made no legitimate non-commercial or fair use of the names (id., para. 39).
Complainant requests that the domain names "" and "" be transferred to it (id., para. 41).
B. Respondent
Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999) is addressed to resolving disputes concerning allegations of abusive domain name registration. This panel has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 3.
Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of priority air mail registration slips and confirmations of the sending of e-mail transmissions that the party designated as the Administrative Contact for the Respondent was notified of the complaint and initiation of the proceedings (see Procedural History, supra). To the extent that Respondent failed to provide a fax number or physical address other than a post office box with its domain name registration, difficulties (if any) in respect to notification are due to its own actions.
The Rules provide that "[t]he complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder" (Rules, para. 3(c)). In this case, the Panel is satisfied that the domain name registrants "Domain OZ" and "Names O Z" are the same person. As Complainant determined through its Network Solutions� WHOIS database search, and as the Panel has verified by its own Network Solutions� WHOIS database search of March 19, 2000, the domain name registration information provided under these two names, including the post office box number and Administrative Contact e-mail address, is identical. The Panel considers that it would place an unjustifiable economic burden on the Complainant to require it to initiate two separate administrative proceedings, and that it would be a burden on the administrative process to require duplication of effort, in this context of this case. The Respondent will hereinafter be referred to as "Domain OZ", except as is otherwise necessary for the sake of clarity.
Because the Respondent, Domain OZ, has defaulted in providing a response to the allegations of Complainant, Adobe Systems Incorporated ("Adobe"), certain factual conclusions may be drawn by the panel on the basis of Complainant�s undisputed representations (Rules, para. 14(b)).
Complainant is the holder of a registered trademark for "ADOBE ACROBAT" and is using that name in commerce (see Factual Background, supra). Respondent�s registration of the trademark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 4, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the trademark "ADOBE ACROBAT".
Complainant has filed an application for registration of the trademark "ACROBAT READER" on the Principal Register at the PTO, has provided substantial evidence of its use of that trademark in commerce, and has asserted that this use preceded Respondent�s registration of the domain name "" (see Factual Background, supra). The Policy requires that a Complainant have "rights" in a trademark that is subject to abuse by a Respondent (Policy, para. 4(a)(i)). It does not require that a trademark be registered by a governmental authority for such rights to exist. In U.S. law, trademark infringement actions may be brought on the basis of unregistered marks 5, and U.S. legislation authorizing trademark infringement actions based on abusive domain name registration does not require registration of a trademark as a condition for obtaining relief 6. In U.S. law, an application for trademark registration on the Principal Register constitutes constructive use of a mark, contingent on subsequent registration 7.
The evidence of Complainant�s use of the trademark "ACROBAT READER" on goods in commerce, its application for trademark registration for that mark, the suggestive nature of the mark 8, in light of its subsisting trademark registrations for "ADOBE ACROBAT", "ACROBAT" and "ACROBAT EXCHANGE", persuade the Panel that the Complainant has "rights" in the trademark "ACROBAT READER". The Complainant is found to be the holder of the common law trademark "ACROBAT READER" in the United States 9. The Panel determines that Complainant has rights in the trademark "ACROBAT READER".
Respondent has registered the domain names "" and ". These names are identical to Complainant�s trademarks "ADOBE ACROBAT" and "ACROBAT READER", respectively, except that (1) the domain names each eliminate the space between the two words constituting the mark, (2) the domain names each add the generic top level domain name ".com" and (3) the domain names employ lower case letters, while the trademarks are generally used with an initial capital letter on each word (see Complainant�s Exhibit D). For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondent�s domain names are "identical" to Complainant�s trademarks, since Respondent�s domain names "" and "" are without doubt confusingly similar to Complainant�s trademarks "ADOBE ACROBAT" and "ACROBAT READER", respectively 10.
Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to trademarks in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.
There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names "" and "", other than that it has registered these domain names. If mere registration of the domain names were sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.
Complainant has suggested that Respondent is using the disputed domain names to attract users of the Internet to sites being operated by Respondent, and thereby confusing consumers (Complaint, para. 35). Complainant has not, however, provided evidence of such use by Respondent. The Panel�s independent attempts (on March 20 and 21, 2000) to open websites using the disputed domain names resulted in notification that servers with the specified addresses could not be located.
Assuming arguendo that Respondent was using the disputed domain names to attract consumers to its own websites, this alone would not be sufficient to establish rights or legitimate interests in the domain names. Using a domain name to intentionally attract, for commercial gain, Internet users to a website by creating confusion with a complainant�s mark is evidence of bad faith registration under the Policy (para. 4(b)(iv)). If such use were sufficient to establish rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy, then a finding of bad faith use under paragraph 4(b)(iv) would virtually preclude a finding of abusive registration under paragraph 4(a). Construing paragraph 4(a)(ii) of the Policy so as to avoid an illogical result, the Panel determines that mere use of the disputed domain names to attract customers, for commercial gain, to Respondent�s website by creating consumer confusion with Complainant�s trademarks would not, if such use were demonstrated, establish rights or legitimate interests in the domain names on the part of Respondent.
Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain names. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent. The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.
The third element that must be proven by Complainant to establish Respondent�s abusive domain name registration is that Respondent has registered and is using the disputed domain names in bad faith. The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Most relevant to the current proceedings: a 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)).
Respondent has registered "" and "". As a consequence, Complainant is unable to reflect its trademarks "ADOBE ACROBAT" and "ACROBAT READER" in corresponding domain names. Absent any contrary indication from Respondent, the Panel infers that Respondent intended the logical consequences of its acts, and that it registered the disputed domain names "in order to prevent" Complainant from using its trademarks in corresponding domain names.
Complainant has provided evidence that Respondent has registered a large number of domain names, many of which are confusingly similar to trademarks and service marks held by third parties, and some of which may be identical to trademarks owned by third parties. For example, "" 11 registered by Respondent is identical or confusingly similar to trademarks ("Lotus" and "1-2-3") registered by the Lotus Development Corporation (according to its website) 12. The domain names "", "" and "" are each registered by Respondent 13. According to the Microsoft website, "Encarta" is the registered trademark of Microsoft, and Microsoft is using the trademark "Encarta 2000" in connection with software products. 14
The Panel is satisfied that Respondent has engaged in a pattern of conduct intended to prevent trademark holders from using their marks in corresponding domain names.
The Panel determines that Respondent has registered and used the domain names "" and "" in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.
The Panel will therefore direct the registrar to transfer the domain names "" and "" to the Complainant.
7. Decision
Based on its finding that the Respondent, Domain OZ (also known as Names O Z), has engaged in an abusive registration of the domain names "" and "" within the meaning of paragraph 4(a) of the Policy, the Panel directs the registrar to transfer the domain names to the Complainant, Adobe Systems Incorporated.
Frederick M. Abbott
Sole Panelist
Date: March 22, 2000
Footnotes:
1. The Panel has independently verified by its own Network Solutions' WHOIS database search of March 19, 2000 that "Oz domains" maintains the same contact information as the Respondent in this proceeding, and that there continue to be a large number of domain names registered by that party. See discussion infra at Discussion and Findings.
2. The Complaint indicates that "", in various permutations, was registered by Oz Domains. Although many related permutations of that domain name were listed in Complainant's Exhibit M as being registered to Oz Domains, the precise domain name indicated was not. By WHOIS search of March 21, 2000, the Panel independently determined that the domain name "" is not currently registered in the name of Oz Domains.
3. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
4. 15 USCS � 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.
5. 15 USCS � 1125(a). See, e.g., Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036, 1047, n. 8, (9th Cir. 1999).
6. 15 USCS � 1125(d).
7. 15 USCS � 1057(c).
8. The Panel recognizes that the suggestive term "Acrobat" is used in combination with the descriptive term "Reader". This combination may require that the mark acquire secondary meaning in order to be distinctive within the meaning of U.S. trademark law. In the absence of a challenge by Respondent, the Panel determines that evidence of secondary meaning is sufficiently established by Complainant's registration of another mark that uses the term "Acrobat" in combination with a descriptive term, i.e. "ACROBAT EXCHANGE", for a related computer software product.
9. This determination is without prejudice to rights in such trademark that Complainant may (or may not) hold in countries outside the United States.
10. The Panel elects not to base this determination on Complainant's ownership of "ACROBAT EXCHANGE", "ACROBAT" or other Adobe Marks since this would unnecessarily raise issues regarding the similarity of Respondent's domain name registrations.
11. Complainant's Exhibit N.
12. (site visited by Panel, March 21, 2000).
13. Complainant's Exhibit N.
14. (site visited by Panel, March 21, 2000).
Full & Egal Universal Law Academy