Decision for dispute CAC-UDRP-108961

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 registered owner of the trademarks ADOBE and ACROBAT, which are registered with the United States Patent and Trademark Office (USPTO), the EUIPO, and IP Vietnam, inter alia, as follows:

• EUIPO Reg. No. 009595356 for ADOBE, registered on May 3, 2011, in Classes 9, 35, and 42;
• USPTO Reg. No. 1475793 for ADOBE, registered on February 9, 1988, in Class 9;
• USPTO Reg. No. 7213305 for ACROBAT, registered on November 7, 2023; and
• IP Vietnam Reg. No. 4-0447467-000 for ADOBE, registered on March 15, 2023, in Classes 9, 41, 42, and 35.

Since its incorporation in 1982, the Complainant, Adobe Inc., has been a pioneering global technology company in the digital content and software industry. The Complainant offers a comprehensive portfolio of industry-standard applications, including, inter alia, PHOTOSHOP, ILLUSTRATOR, PREMIERE PRO, and INDESIGN, and has developed the globally recognized Portable Document Format ("PDF."). Through continuous innovation and strategic acquisitions, such as that of Macromedia, the Complainant has solidified its position as a central player in the global digital ecosystem.

Notably, PHOTOSHOP has become one of the most widely recognized image editing software applications worldwide since its commercial release in 1990. Driven by over thirty-five years of continuous commercial use, the mark has achieved such high public awareness that it has frequently entered the common vernacular. The Complainant actively protects its rights in the PHOTOSHOP mark, as well as its multiple trademark registrations for the mark ADOBE, which it has held across various jurisdictions for decades.

The disputed domain name was registered on January 29, 2026. Initially, it resolved to a website promoting unauthorized downloads of the Complainant's "ADOBE ACROBAT READER" software. Following a cease-and-desist notice from the Complainant, the Respondent removed all content, and the disputed domain name currently resolves to an inactive webpage.

COMPLAINANT:

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

(i) The Complainant holds rights in the trademark ADOBE, as set forth in the "Identification of Rights" section above. The disputed domain name is confusingly similar to the Complainant’s trademark ADOBE, as it incorporates the mark in its entirety with the addition of the geographic abbreviation "jp" and a hyphen.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither licensed nor otherwise authorized to use the Complainant’s ADOBE mark, nor is the Respondent commonly known by the disputed domain name. Furthermore, the Respondent is not engaged in any bona fide offering of goods or services, nor is it making any legitimate noncommercial or fair use of the disputed domain name. Rather, the disputed domain name previously resolved to a website that impersonated, or sought to pass itself off as, an authorized website of the Complainant. The site prominently and repeatedly displayed the ADOBE mark, the ACROBAT mark, and logo to promote tools purporting to enable users to download the Complainant’s software, "ADOBE ACROBAT READER," 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.

(iii) The Respondent registered, and is using, the disputed domain name in bad faith. Given the well-known status of the ADOBE trademark globally and in Vietnam, where the Respondent is located, the Respondent could not have reasonably registered the disputed domain name without actual knowledge of the Complainant's rights. Furthermore, the disputed domain name fully incorporates the ADOBE trademark to directly target the Complainant’s "ADOBE ACROBAT READER" program. The Respondent never sought authorization to use the mark and merely sought to exploit its notoriety. Upon discovering this, the Complainant sent a cease-and-desist notice, but the Respondent failed to reply. This lack of cooperation, combined with the subsequent removal of all website content to leave an inactive page, further demonstrates the Respondent’s bad faith intent and absence of any bona fide use. 

RESPONDENT:

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.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: 

(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(3) the disputed domain name has been registered and is being used in bad faith. 

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnetmarketing, inc., FA 95095 (FORUM July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 

Rights

The Complainant asserts ownership of the registered trademark ADOBE, as identified in the “Identification of Rights,” section above. The Panel recognizes that an international or national trademark registration is sufficient to establish rights in a mark. Accordingly, the Panel finds that the Complainant has established its rights in the ADOBE trademark.

The Complainant further contends that the disputed domain name <adobe-jp.com> is confusingly similar to its ADOBE mark, as it incorporates the ADOBE mark in its entirety with the addition of the geographic abbreviation "jp" and a hyphen.

The Panel notes that the addition of a geographical term and a hyphen, followed only by the “.com” gTLD, does not suffice to distinguish a disputed domain name from a trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s ADOBE mark. 

No rights or legitimate interests

The Complainant must first establish a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii), after which the burden of production shifts to the Respondent to demonstrate that it does have rights or legitimate interests. See Section 2.1, WIPO Overview 3.1 ("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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

Relevant information, such as WHOIS data, can serve as evidence to demonstrate whether the Respondent is or is not commonly known by the disputed domain name under Policy paragraph 4(c)(ii). The Panel notes that the WHOIS data lists ”Trần Ellis,” as the registrant, and there is no evidence in the record indicating that the Respondent was authorized to use the mark. Therefore, the Panel finds that the Respondent is not commonly known by the disputed domain name under Policy paragraph 4(c)(ii).

The Complainant asserts that the website to which the disputed domain name previously resolved impersonated, or passed itself off as, an authorized website of the Complainant. The website prominently and repeatedly displayed the ACROBAT mark and logo, including the Complainant’s product name “ADOBE EXPRESS,” to promote tools that purport to enable users to download the Complainant’s software, "ADOBE ACROBAT READER," in an unauthorized form through the Respondent’s website.

The Panel notes that the Respondent did not accurately and prominently disclose its lack of affiliation with the Complainant. Although the disputed domain name no longer resolves to an active website, the foregoing facts demonstrate that the Respondent engaged in passing off by falsely presenting the disputed website as affiliated with the Complainant’s legitimate business. The Complainant has submitted screenshots of the website to which the disputed domain name resolved, alongside a screenshot of the Complainant’s official website.

In the absence of any response, it is difficult to determine from the available screenshots whether the disputed website was offering counterfeit goods, competing goods, or the Complainant’s genuine products. If the Respondent was offering only the Complainant’s genuine goods, the question of fair use must be considered. The leading authority on this issue is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, in which the respondent was a reseller of the complainant’s OKIDATA products and had registered the domain name <okidataparts.com> for that purpose. The panel in that case held that such use may constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, provided that certain conditions are met:

• The respondent must actually be offering the goods or services at issue;
• The respondent must use the site to sell only the trademarked goods (otherwise, there is a risk that the respondent is using the trademark in the domain name to bait consumers and switch them to other products);
• The site must accurately disclose the respondent’s relationship with the trademark owner; and
• The respondent must not seek to corner the market in all relevant domain names, thereby preventing the trademark owner from reflecting its own mark in a domain name.

The Panel notes that the Respondent’s website did not disclose its relationship, or lack thereof, with the Complainant. Moreover, considering the overall layout and feel of the Japanese-language website to which the disputed domain name resolves, the repeated use of the Complainant's ACROBAT trademark and its logo, the use of the heading, "Get ACROBAT Reader right now for PDF work," along with subheadings such as "What you can do with ACROBAT," "Compare ACROBAT Plans," "Frequently Asked Questions," and "Access ACROBAT Support," as well as the display of copyright notices, it is highly likely that Internet users visiting the website will be confused and misled into believing that it is the Complainant's official Japanese website or that of an authorized distributor.

Accordingly, even if the Respondent was offering only the Complainant’s genuine goods, such use does not constitute a bona fide offering of goods or services under paragraph 4(c)(i), nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy. Furthermore, when the Respondent uses a disputed domain name to impersonate the Complainant, such conduct does not qualify as a bona fide offering or a legitimate noncommercial or fair use. See Würth International AG v. Mandy Mohr, CAC-UDRP-107275 (CAC March 17, 2025) (holding that the use of a domain name to feature the complainant’s mark and related content did not qualify as a bona fide offering or a legitimate noncommercial use under Policy paragraph 4(c)(i) or (iii)).

Based on the foregoing, the Panel finds that the Complainant has established a prima facie case against the Respondent. As the Respondent has failed to submit a response or otherwise rebut the Complainant’s allegations, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. 

Bad faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith: 

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the 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; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. 

The Complainant contends that the Respondent registered the disputed domain name in bad faith, given the reputation and longstanding use of the Complainant’s marks prior to the registration of the disputed domain name, along with the Respondent’s engagement in behavior targeting the Complainant’s marks.

The Panel infers, due to the notoriety of the Complainant’s marks as identified in the “Factual Background,” section above, and the Respondent’s act of passing itself off as an authorized distributor of the Complainant, coupled with the Respondent’s residence in Vietnam, where the Complainant’s marks were registered and widely known, that the Respondent registered the disputed domain name with actual knowledge of the Complainant’s rights in the ADOBE and ACROBAT marks. Accordingly, the Panel finds that the Respondent registered the disputed domain name in bad faith.

Next, the Complainant asserts that the Respondent registered and used the disputed domain name in bad faith by intentionally disrupting the Complainant’s business and seeking to attract Internet users to a competing website for commercial gain. The Panel notes that when the Respondent impersonates the Complainant through a disputed domain name, such conduct constitutes a bad faith disruption of the Complainant’s business under paragraph 4(b)(iii) of the Policy and reflects an intent to commercially benefit by creating confusion under paragraph 4(b)(iv) of the Policy. See Xiaomi Inc. v. Nguyễn ĐứcĐạt (N/A), CAC-UDRP-107237 (CAC Feb. 12, 2025) (finding that the respondent’s use of a disputed domain name to offer competing products disrupted the complainant’s business and misled Internet users by falsely suggesting affiliation with the complainant, thereby supporting a finding of bad faith registration and use under Policy paragraph 4(b)(iv)).

As previously noted, the disputed domain name formerly resolved to a website that impersonated, or passed itself off as, an authorized website of the Complainant. The site prominently and repeatedly displayed the ACROBAT mark and logo, including the Complainant’s product name, "ADOBE EXPRESS," to promote tools that purport to enable users to download the Complainant’s software, "ADOBE ACROBAT READER," in an unauthorized form through the Respondent’s website. The Panel finds that the Respondent’s conduct was designed to impersonate the Complainant and mislead Internet users into believing they were interacting with the Complainant or with an authorized distributor. Such behavior not only creates a likelihood of confusion but also intentionally diverts consumers away from the Complainant’s official website, thereby interfering with the Complainant’s business operations and exploiting the goodwill associated with its marks for commercial gain.

Accordingly, the Panel concludes that the Respondent’s conduct satisfies the criteria for bad faith registration and use under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy.