Decision for dispute CAC-UDRP-108806

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of number of registered trademarks for the PHOTOSHOP trademark, including the following:

• International trademark registration No. 1334389 for PHOTOSHOP, registered on October 29, 2015;
• European Union trademark registration No. 000202549 for PHOTOSHOP, registered on October 14, 1998;
• United States trademark registration No. 1850242 for PHOTOSHOP, registered on August 16, 1994; and
• Chinese trademark registration No. 573256 for PHOTOSHOP, registered on November 30, 1991.

The Complainant is a global technology company specializing in the development of software and digital media solutions, established in 1982 and offering innovative tools that enable individuals and businesses to create, manage, and deliver digital content. The Complainant offers a comprehensive portfolio of software applications, including, inter alia, Adobe Photoshop for image editing, Adobe Illustrator for vector graphics, Adobe Premiere Pro and Adobe After Effects for video editing and compositing, and Adobe InDesign for digital publishing.

Among the Complainant's principal products, Adobe Photoshop is a widely known software application for digital image editing and manipulation. First developed in the late 1980s and commercially released in 1990, Photoshop has been progressively adopted across a broad range of sectors, including publishing, advertising, web design, film production, and other creative industries. The software provides a comprehensive set of tools for the processing and modification of raster images, including functionalities such as layered editing, image compositing, and advanced color management.

The disputed domain name was registered on March 2, 2021 and at the time of this decision, it resolves to a "403 Forbidden" page. However, the disputed domain name previously resolved to a website offering unauthorized free downloads of the Complainant's "Adobe Photoshop" computer program, as well as other computer programs produced by the Complainant. 

The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

Notably, the Complainant contends that the disputed domain name is confusingly similar to its well-known and distinctive PHOTOSHOP trademark. Furthermore, the addition of the term “mac” does not prevent a finding of confusing similarity. On the contrary, the term “mac” clearly refers to “Mac” devices and Apple’s "macOS" operating system, leading Internet users to perceive that the website offers a version of Photoshop software specifically compatible with such systems, thereby reinforcing the association with the Complainant’s products.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant contends that the Respondent is neither a licensee nor an authorized distributor of the Complainant and has received no permission (express or implied) to use the Complainant's trademarks or to register a domain name incorporating such trademarks. The Complainant has not granted the Respondent any rights to operate a domain name identical or confusingly similar to its trademarks. The Respondent uses the disputed domain name to promote tools that purport to enable users to download the Complainant's software, namely Adobe Photoshop, in an unauthorized form through the Respondent's website. Such use clearly targets the Complainant’s products and is inherently illegitimate, as it is based on the unauthorized distribution and exploitation of the Complainant’s software. Accordingly, such use cannot constitute a bona fide offering of goods or services, nor any legitimate non-commercial or fair use.

With reference to the circumstances evidencing bad faith, the Complainant states that, in light of the Complainant's widespread use of the PHOTOSHOP trademark, it is inconceivable that the Respondent was unaware of the Complainant’s rights when registering the disputed domain name. On the contrary, in light of the content of the website, and as suggested by the inclusion of the term “mac” in the disputed domain name, it can reasonably be inferred that the Respondent has deliberately sought to capitalize on the Complainant's well-known trademark to obtain an undue commercial advantage. The Complainant further contends that the reference to “mac” is likely to be understood by Internet users as indicating a version of the Complainant's software specifically intended for "Mac" devices and the "macOS" ecosystem, thereby misleading users into believing that the downloadable versions available on the website are genuinely compatible with such systems and authorized by the Complainant. In addition, the website to which disputed domain name used to resolved contains several references to the Complainant's product suite, including “Adobe Photoshop 2023,” “Illustrator 2023”, “Premiere Pro 2023”, “After Effects 2023”, “Audition 2023”, “Lightroom 2023”, “InDesign 2023”, “InCopy 2023”, “Media Encoder 2023”, and “Acrobat Pro 2023”. The presence of these references clearly demonstrates that the Respondent is directly targeting the Complainant's software and reputation. Moreover, the repeated indication of the year “2023” further suggests to Internet users that the website provides access to specific and up-to-date versions of these applications, thereby reinforcing the impression that the downloadable software corresponds to genuine releases of the Complainant, when in fact such downloads are unauthorized and may contain dangerous content for unaware Internet users. This conduct is carried out with the intent of obtaining a commercial advantage by inducing unsuspecting Internet users to access the website and click on unverified and potentially harmful links, under the false impression that they may obtain a free version of the Complainant's "Adobe Photoshop" software, thereby exposing them to significant security and reliability risks. The Complainant adds that further evidence of the Respondent's bad faith is provided by the Respondent's broader domain name registration pattern. Namely, publicly available reverse WHOIS records associated with the Respondent's disclosed email address show registrations of numerous additional domain names reproducing or referring to third-party software products, applications and well-known brands. Such a pattern of conduct further supports the conclusion that the registration of the disputed domain name was not coincidental but formed part of a broader practice of registering domain names associated with third-party brands and software products.

No administratively compliant Response has been filed.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy stipulates that the complainant must prove each of the following:

• that the disputed domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
• that the respondent has no rights or legitimate interests in respect of the disputed domain name; and
• that the disputed domain name has been registered and is being used in bad faith. 

I. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name, as stipulated in section 1.7 of WIPO Overview of WIPO Panel Views on Select UDRP Questions ("WIPO Overview 3.1").

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy (WIPO Overview 3.1, section 1.2.1).  

The entirety of the Complainant’s PHOTOSHOP trademark is reproduced within the disputed domain name.  Accordingly, the disputed domain name is confusingly similar to the Complainant’s trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.7).

Although the addition of other terms here, “mac” may bear on the assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark for the purposes of the Policy (WIPO Overview 3.1, section 1.8). 

In addition, it is well established that “.com”, as a gTLD, is disregarded in the assessment of confusing similarity between the disputed domain name and the trademark (WIPO Overview 3.1, section 1.11.1).

The Panel, therefore, finds that the first element of the Policy has been established.

II. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Panel notes that there appears to be no relationship between the Respondent and the Complainant and that the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s PHOTOSHOP trademark. There appears to be no element from which the Panel could infer the Respondent’s rights or legitimate interests in the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

The disputed domain name used to resolve to a website offering unauthorized free download of the Complainant's "Adobe Photoshop" computer program, as well as other computer programs produced by the Complainant. Such use of the disputed domain name cannot constitute a bona fide offering of goods or services under the Policy.  Panels have held that the use of a domain name for illegitimate activity (here, claimed offering of unauthorized software) can never confer rights or legitimate interests on a respondent /WIPO Overview 3.1, section 2.13.1).

The Panel also finds that the composition of the disputed domain name, which contains the Complainant’s PHOTOSHOP trademark in combination with the term “mac” (i.e. a clear reference to "Mac" devices and "macOS" operating system compatible with the Complainant's "Adobe Photoshop" computer program) carries a high risk of implied affiliation (WIPO Overview 3.1, section 2.5.1).

Having in mind the above, the Panel finds the second element of the Policy has been established.

III. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.  

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith (see WIPO Overview 3.1, section 3.2.1).

In the present case, the Panel considers that the Respondent must have been aware of the Complainant and its PHOTOSHOP trademark. Namely, the first registration and use of the PHOTOSHOP trademark predate the registration of the disputed domain name by decades, making it unlikely that the Respondent was not aware of the Complainant’s trademark at the time of registration of the disputed domain name. Furthermore, the composition of the disputed domain name is such that it corresponds to the Complainant's business activities. Such composition and the content of the website to which the disputed domain name resolves, leave no room for doubt on the Respondent’s knowledge of the Complainant and its trademark and evidence that the Respondent actually had the Complainant in mind when registering the disputed domain name. 

Due to the above, the Panel finds that the disputed domain name has been registered in bad faith. 

As indicated above, the disputed domain name used to resolve to a website offering unauthorized free download of the Complainant's "Adobe Photoshop" computer program, as well as other computer programs produced by the Complainant. Such use of the disputed domain name indicates that the Respondent attempted to take advantage of the Complainant and its trademark. Panels have held that the use of a domain name for illegitimate activity (here, claimed offering of unauthorized software) constitutes bad faith (WIPO Overview 3.1, section 3.4). 

While the disputed domain name no longer resolves to an active website, such passive holding does not prevent a finding of bad faith given the totality of the circumstances of the case at hand (WIPO Overview 3.1, section 3.3).

In accordance with the above, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel finds that the disputed domain name has been both registered and is being used in bad faith, and consequently that the Complainant has established the third element of the Policy.