The Complainant is Adobe Systems Incorporated, United States of America (“United States”), represented by AngelesPons Attorneys at Law, Dominican Republic.
The Respondent is Albert Sole Planas, Photoshop del Caribe, S.R.L., Dominican Republic, represented by Russin, Vecchi & Heredia Bonetti, Dominican Republic. 2. The Domain Names and Registrars
The disputed domain names and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2019. On April 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On April 23, 2019, 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 Complainant filed an amended Complaint on May 1, 2019. The Center sent an email communication to the Complainant requesting a clarification of the Complaint and the amended Complaint on May 1, 2019. On that same day, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed a second amended Complaint on May 4, 2019 adding one domain name to the Complaint. On May 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added disputed domain name . On May 7, 2019, the Registrar GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint together with the first and second amended Complaints 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 May 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2019. The Response was filed with the Center on May 30, 2019.
The Center appointed Adam Taylor as the sole panelist in this matter on June 14, 2019. 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 was incorporated in the United States in 1982. Amongst other things, it manufactures and distributes the well-known image manipulation software “Adobe Photoshop”, which was created in the 1990s.
It is convenient to present the facts specific to this dispute in the form of a chronology:
February 15, 20021 : The Intellectual Property National Office of the Dominican Republic (“ONAPI”) issued a trade name registration certificate No. 142347 for the trade name “Photoshop del Caribe” for a 10-year term. It was stated to apply to “picture taking, video recording, framing, lamination and all related to photography, in general”. The certificate names the holder as “Diego Vasquez Estrada”, who is not one of the parties named as the Respondent. However, it appears from an additional untranslated document supplied by the Respondent that Diego Vasquez Estrada was in fact acting on behalf of Alberto Sole Planas.
April 29, 2002: Albert Sole Planas incorporated Photoshop Del Caribe S.R.L. in the Dominican Republic (both are named as the Respondent). The company’s activities were described as follows: “Develop and manage projects, taking pictures, videos, recordings, framing, laminating and photography in general.”
2004: Since at least 2004, the Respondent has operated a professional photography business under the names “Photoshop Caribe” and “Photoshop Del Caribe” serving hotels in the Bavaro-Punta Cana region of the Dominican Republic. The Respondent says that it has offered professional photography services at more than 3,000 events over this period.
October 31, 2006: The Respondent registered .
June 15, 2015: The Complainant applied for Dominican Republic trade mark No. 224737 for the word mark PHOTOSHOP in international classes 3, 9, 16, and 45. This trade mark was registered on October 1, 20152 .
November 26, 2015: Following an undefended opposition filed by the Complainant, the ONAPI issued Resolution 492 rejecting a third party trade mark application for “CERO PHOTOSHOP BY JESUS ABREU” which had been filed on May 15, 2015 (“the Third Party Opposition”).
January 19, 2016: A new trade name registration certificate No. 428499 was issued for the trade name “PHOTOSHOP DEL CARIBE” for a 10-year term. This time the holder was named as Photoshop Del Caribe S.R.L.
March 4, 2016: The Complainant filed a cancellation against trade name certificate No. 428499 (“the Cancellation Action”).
March 24, 2016: The Complainant filed a UDRP complaint against the Respondent relating to . See Adobe Systems Incorporated v. Albert Sole, Photoshopcaribe / Domains By Proxy, LLC,WIPO Case No. D2016-0582 (“Case 1”).
April 15, 2016: The Respondent registered .
May 13, 2016: The panel in Case 1 denied the complaint on the grounds that the Complainant had produced no evidence demonstrating that the Respondent was likely to have been aware of the Complainant’s PHOTOSHOP trade mark in 2002, when the Respondent’s business was established, or 2006 when it registered the disputed domain name , including a lack of evidence as to the reputation of the Complainant’s mark within the Dominican Republic or elsewhere at those times.
July 28, 2017: The ONAPI issued Resolution 326 ordering cancellation of the trade name certificate No. 428499.
October 6, 2017: The Complainant says that the Respondent was notified of Resolution of 326 on this date.
March 27, 2019: The ONAPI issued a certificate stating that no appeal had been filed against Resolution 326.
May 10, 2019: The Respondent received the Complaint in the present UDRP proceeding. The Respondent says this was the first time it became aware of the Cancellation Action, including Resolution 326.
May 29, 2019: The Respondent filed a “Reconsideration Appeal” against Resolution 326 as well as a counterclaim seeking invalidation of the Complainant’s trade mark No. 224737.
June 27, 2019: When reviewed by the Panel, the disputed domain name resolved to a website branded “Photoshop Caribe”, offering the Respondent’s professional photography services as described above. There was a disclaimer at the top of the home page denying any connection with the Complainant. The disputed domain name resolved to a GoDaddy parking page with various “Photoshop” pay per click (“PPC”) links including to “Adobe Photoshop CC”. 5. Parties’ Contentions A. Complainant
The following is a summary of the Complainant’s contentions.
The disputed domain names incorporate the Complainant’s PHOTOSHOP trade mark. That is sufficient to establish confusing similarity.
The Complainant’s trade mark is considered to be well-known, at least in the Dominican Republic. It has attained public recognition, both nationally and internationally, including through press coverage and websites since before registration of the Complainant’s trade mark in the Dominican Republic.
It is evident from the outcome of the Cancellation Action that the Respondent lacks rights or legitimate interests in the disputed domain name.
The fact that the Respondent registered the two disputed domain names and continues using them, despite the outcome of the Cancellation Action, demonstrates that the disputed domain names are not being used in connection with a bona fide offering of goods or services.
The disputed domain names were registered with intent to mislead and divert consumers and benefit from the Complainant’s PHOTOSHOP trade mark.
The disputed domain names were registered and are being used in bad faith in light of the decision in the Cancellation Action which was notified to the Respondent on October 6, 2017. The Respondent is knowingly using the Complainant’s well-known trade mark.
In the Third Party Opposition, the ONAPI found that the PHOTOSHOP trade mark is well-known both in the Dominican Republic and internationally. This is further evidence that the Respondent’s use of the disputed domain names is in bad faith as they are deliberately taking advantage of the Complainant’s well-known trade mark.
The disputed domain names create a risk of confusion with the Complainant’s well-known trade mark, which they incorporate. The addition of the descriptive terms “del Caribe” or “Caribe” does not sufficiently distinguish the disputed domain names from the Complainant’s trade mark.
Furthermore, the disputed domain names are being used for photography which is closely related to the Complainant’s business.
The Complainant’s well-known trade mark should be granted broader protection than ordinary marks in order to avoid dilution. B. Respondent
The following is a summary of the Respondent’s contentions.
The Respondent Photoshop Del Caribe SRL was incorporated more than 12 years before the Complainant had acquired any intellectual property rights or trade mark registrations in the Dominican Republic. The Complainant has produced no evidence of any intellectual property rights prior to its trade mark registered in 2015.
The Complainant has not established that its trade mark is, or more importantly was in 2002, well-known in the Dominican Republic.
The Respondent does not provide software for creating or manipulating graphic images.
The Respondent is the legitimate owner in the Dominican Republic of the trade name “Photoshop Del Caribe”. In the Dominican Republic, the exclusive right to use a trade name is acquired by its first use in trade. No trade name registration is required.
Since 2005, the Respondent has owned property in the Dominican Republic in its name “Photoshop Del Caribe”.
Accordingly, the Respondent possesses legitimate rights and interests in the disputed domain names to advertise its products and services as a professional photographer.
The Respondent is also the legitimate holder of the trade name certificates issued in 2002 and 2016. The Respondent only received notice of the Cancellation Action when it received the Complaint in this proceeding. This Cancellation Action is still pending because the Respondent has filed a Reconsideration Appeal. Resolution 326 is unlawful because it was not made “after hearing the owner”. In any case, the Cancellation Action does not affect the Respondent’s trade name rights because such rights are granted by first use, not by registration.
The Respondent has legitimate rights to use the disputed domain names by virtue of its prior use, its trade name registrations, including the one in 2002 which predated the Complainant’s rights in the Dominican Republic by more than 12 years. Indeed, the Respondent is seeking to invalidate the Complainant’s 2015 trade mark based on the Respondent’s prior rights.
The Respondent did not register or use the disputed domain names in bad faith.
The disputed domain names have existed for more than 10 years without causing confusion with the Complainant.
The Complainant and the Respondent are not competitors. They operate in different fields of business. The Respondent’s website makes clear that its services are not connected with the Complainant.
The Third Party Opposition is not relevant because its assessment of the Complainant’s mark related only to the present and recent past, as stated by the panellist in Case 1. 6. Discussion and Findings
Under the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain names are identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
- the disputed domain names have been registered and are being used in bad faith.
A. Preliminary Issue - Refiled Complaint
As explained in section 4, the Complainant previously filed an unsuccessful case against the Respondent relating to the disputed domain name (see Case 1).
Section 4.18 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains that refiled complaints are accepted only in highly limited circumstances, for example where legally relevant developments have occurred since the original UDRP decision or where new material evidence is presented that was reasonably unavailable to the complainant during the original case.
Section 4.18 makes clear that, in any such refiling, the complainant must clearly indicate the grounds it believes would justify acceptance of the refiled complaint.
Here, the Complainant has not even mentioned the existence of Case 1, let alone put forward any grounds that would justify the refiling.
It is true that the Complainant’s case hinges largely on an event which occurred after the decision in Case 1, namely the issuance of Resolution 326 by ONAPI (as explained in section 4 above). However, in the Panel’s view, it was not sufficient for the Complainant simply to file a new Complaint alluding to recent developments without both mentioning the previous case, and without explaining exactly why the Complainant believed that the recent developments came within the limited circumstances whereby panels accept refiled complaints.
In any event, it is difficult to see how such an argument could have succeeded. So far as the Panel can tell, Resolution 326 involved cancellation of the Respondent’s 2016 trade name registration based on the Complainant’s 2015 registered trade mark. The Complainant has not pointed to any finding in Resolution 326 indicating that the Respondent was likely to have been aware of the Complainant’s trade mark rights back in 2002 when the Respondent established its business or in 2006 when it registered the disputed domain name .
In particular, the Complainant has not drawn the Panel’s attention to any finding by the ONAPI regarding the extent of the Complainant’s reputation in 2002 / 2006 whether within the Dominican Republic or elsewhere – despite the lack of such reputation evidence being the principal reason why the Complainant lost Case 1.
The Panel would add that, even if there had been such a finding, that may still not have sufficed unless the Complainant had also satisfied the Panel that the finding was based on evidence submitted by the Complainant that was not reasonably available to the Complainant during Case 1.
Further, the Panel understands that Resolution 326 is not final. The Respondent states that it only became aware of the Cancellation Action upon receipt of the Complaint in this proceeding, following which it filed a “Reconsideration Appeal”.
For the above reasons, the Panel declines to accept the Complaint insofar as it relates to the disputed domain name . The Panel will proceed to consider the Complaint only as regards the disputed domain name . B. Identical or Confusingly Similar
The Complainant relies on its 2015 Dominican Republic trade mark for PHOTOSHOP mentioned in section 4 above but has not supplied the usual supporting printout from the trade marks registry. However, the Respondent does not dispute the existence of this trade mark, which is also referred to in Resolution 326 from ONAPI as well as in Case 1. Accordingly, the Panel accepts that the Complainant has established rights in “Photoshop” by virtue of its registered trade mark which, so far as the Panel can tell from the case file, is still valid and enforceable.
While the Complainant has also failed to submit any evidence in support of its claim to common law rights, the Complainant’s assertion is supported by the ONAPI finding in the Third Party Opposition that the trade mark PHOTOSHOP has been well-known both in the Dominican Republic and internationally since at least around 2015. Furthermore, the Respondent does not substantively dispute that the Complainant currently possesses such rights – although the Respondent strongly contests that the Complainant possesses any earlier rights. The Panel therefore accepts that the Complainant has established common law rights in the PHOTOSHOP trade mark.
Section 1.8 of the WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive, geographical or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s trade mark is recognisable within the disputed domain name and, accordingly, the addition of the descriptive / geographical term “del Caribe” (meaning “of the Caribbean”) is insufficient to avert a finding of confusing similarity.
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
It is unnecessary for the Panel to consider this element in view of its conclusion under the third element below. D. Registered and Used in Bad Faith
The disputed domain name simply adds the word “del”, meaning “of”, to the disputed domain name which was the subject of the Complainant’s previous unsuccessful case and which the Panel has declined to accept as a refiled complaint in this proceeding. Nonetheless, because it is a different domain name, the disputed domain name is not covered by the re-filed complaint restrictions mentioned above.
The Panel will first consider whether in this case, unlike in Case 1, there is evidence that the Respondent’s original selection of its name in 2002 was motivated by bad faith vis-à-vis the Complainant. If so, that would likely taint the Respondent’s registration of the disputed domain name , albeit many years later. However, the Complainant has provided no evidence which tempts the Panel to take a different view from the panellist in Case 1 who stated:
“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.”
The Panel notes that the Complainant has not taken the opportunity to remedy the deficiency pointed out by the panel in Case 1 by producing evidence that the Respondent originally selected its trading name in 2002 “to target such trademark with a view to benefitting from association with it”.
Instead, the Complainant simply re-asserts the argument it made in Case 1, claiming that the ONAPI’s finding in the Third Party Opposition that the PHOTOSHOP trade mark was well-known, both in the Dominican Republic and internationally, amounts to evidence that the Respondent’s selection of its trading name in 2002 was made in bad faith. The Panel rejects this for the same reason given by the Case 1 panel, namely that ONAPI’s decision appears to relate to the present and the recent past, given that that decision makes specific reference to a period of six months prior to the filing of the contested third party trade mark application (May 2015). And that therefore this decision is not authority for the proposition that the Complainant had achieved any particular degree of fame in the Dominican Republic by 2002 which was likely to have come to the Respondent’s notice.
The Panel will next consider whether the circumstances at the date of the Respondent’s registration of the disputed domain name on April 15, 2016, cast doubt on the Respondent’s intention at that time?
Certainly, by 2016 the Respondent was plainly aware of the Complainant’s 2015 registered trade mark when registering the disputed domain name because the Complainant had previously filed Case 1. But the Respondent strongly, and ultimately successfully, defended itself in Case 1, maintaining that it had acquired rights based on its longstanding use of its name.
The Respondent has not explained exactly why it registered disputed domain name but, as this occurred during Case 1, the Panel suspects that the Respondent may have acquired it as a fallback in case it lost the disputed domain name in that proceeding. In any case, the Panel has been given no reason on the present record to believe that the Respondent’s acquisition of the disputed domain name was motivated by anything other than a desire to reflect its trading name in an additional domain name, rather than by reference to the Complainant’s trade mark. The Panel notes that had the Complainant proven bad faith in Case 1, then the Respondent’s registration of the disputed domain name would likely also have been characterized in a similar way.
The Complainant appears to criticize the Respondent for having registered the disputed domain name in light of the Cancellation Action. But the Complainant had only filed the Cancellation Action in the previous month and there is no evidence in the record to show that the Respondent had become aware of it. The Complainant apparently made no mention of the Cancellation Action in its complaint in Case 1 as that decision does not allude to it. Nor does the Complainant specifically claim that any aspect of the Cancellation Action was notified to the Respondent before October 6, 2017. Whereas the Respondent denies becoming aware of the Cancellation Action until receipt of the present Complaint in May 2019. In these circumstances, it is unclear to the Panel how the Cancellation Action can be of any relevance to the question of whether the Respondent registered the disputed domain name in bad faith.
The Complainant further argues, in general terms, that both of the disputed domain names were used in bad faith in light of the Cancellation Action. Unhelpfully, the Complainant does not at any stage distinguish between the disputed domain names. Nor does it provide any screenshots or explain exactly what is the use to which it objects.
As mentioned in section 4, when viewed by the Panel the disputed domain name resolved to a GoDaddy parking page with various “Photoshop” PPC links including one to the Complainant itself. If the Complainant specifically objected to this page, then presumably it would have said so in the Complaint. In any case, the Panel does not propose to consider whether the PPC page is evidence of registration in bad faith in this case given that the Complainant has failed to raise the issue and, therefore, the Respondent has not been given an opportunity to respond to it. The Panel would add that such a contention by the Complainant would in any case not necessarily have found favour with the Panel given the general background against which the Respondent registered the disputed domain name .
Finally, the Panel wishes to remind the Parties of the statement by the panel in Case 1 noting that the Policy was ill-suited to resolve that case given that it was not a clear case of abusive cybersquatting and that there were apparently competing legal interests at its essence which were subject to the domestic laws of the Dominican Republic. The panel suggested that these matters would be more appropriately raised and better suited to a determination in the courts of that country and that either or both of the parties were free to take the dispute to a relevant forum. The panel observed that the finding in that case did not seek to influence any such subsequent proceedings. In the Panel’s view, all of these comments are equally applicable to this case.
The Panel finds that the Complainant has failed to establish the third element of paragraph 4(a) of the Policy in relation to the disputed domain name . 7. Decision
For the foregoing reasons, the Complaint is denied.
Adam Taylor
Sole Panelist
Date: July 1, 2019
1 The Respondent states that the issuance date was May 2, 2002, whereas February 15, 2002 is shown on the certificate. In any case, nothing turns on the distinction.
2 The Complainant has not in fact supplied any evidence of this trade mark registration. This is discussed further in section 6B below.
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