The Complainant is Adobe Inc., United States of America (“United States”), represented by ARS-Patent, Russian Federation.
The Respondent is Kovalyov Alexandr Viktorovich, Ukraine. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 2021, 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 12, 2021. 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 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. The Response was filed with the Center on May 10, 2021. The Center appointed Mathias Lilleengen as the sole panelist in this matter on May 20, 2021. 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 develops and supports technologies and software solutions sold and distributed throughout the world, including the image manipulation software “Adobe Photoshop”, which was created in the 1990s. The Complainant owns numerous trademarks containing the word PHOTOSHOP, for example International trademark registration No. 1334389 (registered on October 29, 2015), United States trademark registration No. 1651380 (registered on July 23, 1991), European Union trademark registration No. 007305329 (registered on July 22, 2009) and Russian trademark registration No. 491982 (registered on July 17, 2013). The domain name The Complainant provides evidence of their trademark registrations. The Complainant argues that the Domain Names are confusingly similar to the Complainant’s trademark, as the addition of the word “online” does not prevent confusing similarity. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that there is no evidence of any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with bona fide offering of goods or services. The Complainant points to the content of the Respondent’s webpage, and argues that it “indicates using of the PHOTOSHOP trademarks which gives consumers the feeling that the web site and the services provided on it belong to the Complainant”. The Complainant argues that it has made out a prima facie case that the Respondent lacks rights or legitimate interests, so the burden shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the Domain Names. The Complainant believes the Respondent knew he incorporated a well-known trademark in the Domain Names, and registration and use of the Domain Names “were aimed at misleading consumers of the Complainant’s products and unfair use of the Complainant’s trademarks”. The Complainant further argues that the Respondent’s web site is primarily aimed at the audience using the Complainant’s well-known “Adobe Photoshop”, and it creates the impression that the webpage and its services stem from the Complainant. The Respondent uses, in the Complainant’s opinion, the Domain Names to create confusion with the Complainant’s business, to mislead the Complainant’s consumers in an unfair way. B. Respondent The Respondent argues that the Complainant has not provided evidence of authorization of representative. The Respondent asserts, “the Sites have always been used in good faith, since they have exclusively online photo editors (six (6) online photo editors) that have nothing to do with Adobe. There has never been any mention of the site’s affiliation with Adobe”, and “the only thing that the sites had in common with Adobe was the publicly available Adobe Flash Player technology, which some online photo editors were running on, but Adobe ended support for Flash Player in January 2021”. The Respondent argues that the word “photoshop” is used as a general name for photo editing. Since the Complainant’s program “Adobe Photoshop” has been known all over the world for a long time, the word “photoshop” is now recognized in the Russian language. “Photoshop” is used in a generic way to describe that a photo is edited, or that a program performs photo editing. The Respondent explains that he on this basis registered the Domain Names, and that there was no malicious intent when registering domains as the word “photoshop” was used solely as a general name for photo editing. 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 Complainant has established that it has rights in the trademark PHOTOSHOP. The test for confusing similarity involves the comparison between the Complainant’s trademark and the Domain Names. In this case, the Domain Names incorporate the Complainant’s trademark, with the addition of the word “online” and a hyphen. These additions does not prevent a finding of confusing similarity. For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domain (“gTLD”); see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11. The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Respondent may establish a right or legitimate interest in the Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent argues that he has used the word “photoshop” in a generic way for photo editing, and this is how the word is used in the Russian language. The Respondent explains that he registered the Domain Names with this in mind, not the Complainant. The Panel notes however that the Respondent acknowledges the reason that the word “photoshop” allegedly has been recognized in the Russian language, is the Complainant’s program “Adobe Photoshop” that is “known all over the world for a long time”. The Panel follows the Respondent’s reasoning only halfway, as he seems to explain why he may be entitled to use the term “fotoshop”, a term he indeed uses today at the webpages that the Domain Names redirect to and which bear a prominent link to “Flash Player” which is also a product of the Complainant. The Respondent does not convincingly explain why he should be entitled to the Domain Names that incorporates the Complainant’s trademark PHOTOSHOP. The Respondent argues that it is possible for a trademark to lose its distinctiveness if it becomes part of everyday speech. Even if this phenomenon in itself is true as a trademark law proposition, it is a high bar to establish and it is not documented that this has actually happened with the Complainant’s trademark and indeed any such claim is undermined by the Respondent’s own recognition of the Complainant’s still current fame. Therefore, the Panel is not convinced that the Respondent is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers. On the contrary, it is likely that traffic to the Respondent’s webpage through the Domain Names to a large extent is due to the fact that the Domain Names incorporate the Complainant’s trademark. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy. 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.” The basic question under the third element is if the Respondent has acted unfairly to take advantage of the Complainant’s reputation and goodwill in the PHOTOSHOP mark. The Respondent admits that the he knew of the Complainant and its trademark PHOTOSHOP when the Respondent registered the Domain Names. This would also be reasonable to assume from the fact that the Complainant is well-known, in particular in the photo editing business. Even if the Respondent argues that he registered and has used the Domain Names in a descriptive manner, the Panel is not convinced by the explanation. Based on the documents submitted by the Parties, it is more likely that the particular choice of incorporating the Complainant’s trademark was to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark. As opposed to Adobe Systems Incorporated v. Albert Sole, Photoshopcaribe / Domains By Proxy, LLC, WIPO Case No. D2016-0582 and Adobe Systems Incorporated v. Albert Sole Planas, Photoshop del Caribe, S.R.L.., WIPO Case No. D2019-0914, the Respondent cannot claim that he had prior independent rights or was unaware of the Complainant’s PHOTOSHOP trademark. It is also noteworthy that the Domain Names redirect to the Respondent’s “fotoshop” domain names (in which case the Panel notes his ability to present his business online is not taken away). For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names Mathias Lilleengen
Sole Panelist
Date: May 28, 2021
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