An Indian “Photoshop Instructor” jumped in and registered the domain AdobeFirefly.com on March 17, 2023. Four days later, Adobe introduced Firefly, a new family of creative generative AI models, focused on the generation of images and text effects.
It must have been insider information, no doubt; registering a domain containing the famous Adobe mark sounds quite ballsy.
Adobe filed a UDRP to get the domain and one can imagine the outcome: The panelist granted the transfer of the domain name AdobeFirefly.com to the Complainant.
Adobe Inc. v. Unmesh Dinda
Claim Number: FA2306002048816
PARTIES
Complainant is Adobe Inc. (“Complainant”), represented by Griffin Barnett of Perkins Coie LLP, District of Columbia, USA. Respondent is Unmesh Dinda (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is adobefirefly.com, registered with NameCheap, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 13, 2023; Forum received payment on June 13, 2023.
On June 27, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the adobefirefly.com domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 27, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2023 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@adobefirefly.com. Also on June 27, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2023, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant’s ADOBE Mark has been used in commerce in connection with various computer software products for more than 30 years.
Complainant asserts rights in the ADOBE Mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
The adobefirefly.com domain name is identical or confusingly similar to Complainant’s mark because the at-issue domain name wholly incorporates the identical ADOBE mark, merely adding the additional FIREFLY brand Adobe launched in March 2023, followed by the “.com” generic top level domain (“gTLD”).
Respondent has no legitimate interests in the adobefirefly.com domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized or licensed Respondent any rights in the ABODE Mark. Additionally, Respondent does not use the at-issue domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the domain name previously resolved to a monetized parked page with pay-per-click links. The disputed domain name currently resolves to a webpage providing an email address at which to contact Respondent. Also, the Respondent offered to sell the at-issue domain name to Complainant.
Respondent registered and uses the adobefirefly.com domain name in bad faith. The domain name previously resolved to a parked page with pay-per-click links. The Respondent is currently offering the at-issue domain name for sale. Respondent registered the at-issue domain name with opportunistic bad faith. Lastly, Respondent registered the domain name with actual knowledge of Complainant’s rights in the ADOBE Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has trademark rights in ADOBE.
Respondent responded to the dispute resolution provider via email after receiving the Complaint and therein expressed its willingness to relinquish the at-issue domain name to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules 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 Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) 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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)ii or 4(a)iii, when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) In the instant case, Respondent agrees to transfer its at-issue domain name to Complainant stating in pertinent part in its email response the dispute resolution service provider: “I would like to smoothly transfer the domain to Adobe Inc.” and “I’m willing to transfer the domain to Adobe Inc.”
The Panel, noting that the parties agree as to the disposition of the at-issue domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA 613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a prerequisite to Complainant obtaining its requested relief—even where Respondent agrees to such relief—Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Notably, without requiring a prerequisite finding under paragraph 4(a)(i) a Complainant lacking rights in an at-issue domain name might, via the UDRP, acquire such domain name from a Respondent that also has no rights in such domain name.
Here, Complainant shows it has rights in the ADOBE mark through ADOBE’s registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Furthermore, the at-issue domain name contains Complainant’s ADOBE trademark followed by the suggestive term “firefly” with all followed by the “.com” top-level domain name. The differences between adobefirefly.com and Complainant’s trademark are insufficient to distinguish the adobefirefly.com domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that adobefirefly.com is confusingly similar to Complainant’s ADOBE mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).)
In light of Respondent’s agreement that the domain name should be transferred to Complainant and the Panel’s finding that Complainant has rights in a mark that is confusingly similar to the at-issue domain name, the Panel additionally finds that analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain name should be transferred to Complainant.
DECISION
Having established that the parties agree to the requested relief and that the at-issue domain name is confusingly similar to a trademark in which the Complainant has rights, the Panel finds that relief shall be GRANTED.
Accordingly, it is Ordered that the adobefirefly.com domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 2, 2023
