The Complainant is Adobe Inc., United States of America (“United States”), represented by ARS-Patent, Russian Federation.
The Respondent is Domain Admin, Privacy Protect, LLC, (PrivacyProtect.org), United States / Kovalyov Alexandr Viktorovich, Ukraine.
The disputed domain names <fotoshop-online.org>, and <online-fotoshop.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2021. On July 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 20, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 21, 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 July 22, 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 July 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2021.
When originally filed, the Complaint included a third domain name, <photoshop-online.online>. Following disclosure of the registrant identity for this third domain name in a different name to the name of the present Respondent and amendment of the Complaint, the Center undertook a preliminary assessment of whether a basis for consolidation of the Complaints had been shown (bearing in mind under the Policy paragraph 4(f) and the Rules paragraph 10 any decision on consolidation is a matter for the Panel) and notified the commencement of the proceeding as indicated above.
On August 2, 2021, the proceeding was suspended to permit negotiations about settlement following a request by the Complainant and the registrant of the third domain name. Those negotiations resulted in settlement of the dispute relating to the third disputed domain name between the Complainant and the registrant of that domain name. That domain name was transferred to the Complainant.
On August 25, 2021, the Center notified the withdrawal of the Complaint against the third domain name.
The Response was filed with the Center on August 29, 2021.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 6, 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.
The Complainant is the publisher of, amongst other things, the well-known photograph- or image-editing software known as Photoshop.
The Photoshop software is a desktop application; that is, it runs on the user’s computer. Through its “Creative Cloud” service, the Complainant also makes its Photoshop software available for use as a “cloud” application. See also, e.g., “https://www.adobe.com/ru/photoshop/online/photo-editing.html”.
The Complainant has provided evidence of numerous registered trademarks for PHOTOSHOP including:
(a) United States Registered Trademark No. 1,850,242, which was filed on October 16, 1992 and registered in the Principal Register from August 16, 1994 in respect of computer programs for creating and manipulating graphic images on a computer in International Class 9 and which claims a first use in commerce in February 1990;
(b) United States Registered Trademark No. 3,702,607, which was filed on April 15, 2008 and registered in the Principal Register in respect of a range of services in International Class 42 relating to the editing and manipulation online of photographs and images;
(c) European Union Trademark No. 000202549, which has been registered since October 14, 1998 in respect of a range of relevant goods and services in International Classes 9, 38 and 42;
(d) European Union Trademark No. 007305329, which has been registered since July 22, 2009 in respect of a range of relevant services in International Classes 35, 41 and 42;
(e) Russian Federation Registered Trademark No. 491982, which was registered on July 17, 2013 in respect of relevant goods and services in International Classes 9 and 42; and
(f) a Russian Federation certificate, No. 150 which the Complainant says is official recognition on March 27, 2015, that PHOTOSHOP is a well-known trademark in the Russian Federation.
The disputed domain names were both registered by the Respondent on February 3, 2017.
They have been, and are continuing to be, used to provide a free photograph- and image-editing service. According to the Response, the word “Photoshop” (as opposed to “fotoshop”) has not been used on either website since April 2021 after the Complainant brought the complaint against the Respondent in Adobe Inc. v. Kovalyov Alexandr Viktorovich, WIPO Case No. D2021-1081, in respect of the domain names <online-photoshop.biz> and <photoshop-online.biz>.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the 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.
The Registrar has confirmed that the language of the registration agreements is English. It is therefore the language of the proceeding pursuant to paragraph 11.
The Respondent does state that he does not speak English and has provided the Response in Russian (Annex 1 to the Response) and what he says is a Google translation in English. The websites to which the disputed domain names resolve appear to have been provided in two language versions, Russian and English (American). The website to which the disputed domain names have been redirected since the Complaint was filed also provide options for either language.
Reading the English version of the Response and the several emails the Respondent submitted to the Center in English, one would not gain the impression that they were produced by translation through Google. In any event, given the quality of the translation and the content of the Response, it does not appear that the Respondent has been disadvantaged by the use of the English language in any way.
Accordingly, the Panel sees no reason to depart from the default rule and English is the language of the proceeding.
The Response is in two parts. In the first part, the Respondent contends that the case in its consolidated form was opened in gross violation of the Center’s rules, a breach of his privacy and should have been dismissed at the outset. The Respondent then sets out his reasons why the Complainant should be dismissed on substantive grounds in the second part.
The Respondent’s allegations in the first part, objecting to consolidation proceed on a number of misconceptions and are misplaced.
First, the Center does not decide whether or not complaints against different respondents are consolidated. That is a matter for the Panel. See the Policy paragraph 4(f), the Rules paragraph 10 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.
The Center undertakes a preliminary assessment for a number of good reasons. First, it is necessary to make sure that all respondents have been identified and will be notified. Secondly, it ascertains whether or not the complainant has addressed the issue of why consolidation should be permitted and, if not, may provide an opportunity for it to be addressed before appointment of the panel.
Having regard to the Center’s role and the nature of the assessment it undertakes, the Panel considers it was appropriate for the Center to notify the Complaint including the application for consolidation.
WIPO Overview 3.0, section 4.11.2 explains:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
“Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
It is important to note that these eleven factors are indicators only. The presence or absence of any single one (or more) is not decisive one way or the other. For example, there are many cases where consolidation has been permitted where the names of the registrants are different, the domain names have been registered through different registrars and/or using different webhosts or servers but the content of the respective websites or other factors have led to different conclusions. It is in the end a discretionary exercise requiring a balancing of a range of considerations.
The Complainant pointed to some eight factors supporting consolidation on the basis of common control. In his Response, the Respondent points to some seven matters which he says support his conclusion that he has no relationship or involvement with the registrant of the third domain name.
Bearing in mind the nature of the exercise being carried out by the Center, the Panel considers there was more than a reasonable basis for the Center to proceed on the basis of referral to the Panel as a request to consolidate the complaints.
Most notably, all three websites contained remarkably similar content in terms of headings and text and, to an extent, layout. This included the prominent use of identical images including (even in the Russian language version of the Respondent’s websites):
(a) the Photo Editor Online screen showing a Navigation pane about a History pane (showing recently used tools) a vertical, two column palette of tools, the image of a blue butterfly in the top of the Photo Editor panel;
(b) the same Effects screen;
(c) the same Collage screen and images; and
(d) the same Silk Interactive generative art screen.
(these screens or images are expressed in English even in the Russian language version).
(a) the extensive use of Photoshop / fotoshop;
(b) the use of a “Ps” favicon similar to that used by the Complainant; and
(c) the structure and format of the domain names (bearing in mind the use of “fotoshop” by the Respondent.
In contrast, some of the matters relied on by the Respondent are matters of detail. For example, the Respondent contends the Center should have examined the naming conventions and structure of the website pages and details of html code. These and other matters, such as the claimed open source nature of the images, were matters more appropriately to be considered by the Panel if it had become necessary to rule on the application to consolidate the Complaints.
A third consideration is the outcome if a decision were made not to consolidate. Typically, a complainant would be given three options:
(a) withdraw a complaint against one or other respondent;
(b) withdraw a complaint against one or other respondent and refile a separate complaint against them;
(c) proceed and run the risk that the Panel will rule against consolidation. In which case, there would not be a decision on the merits and a further complaint might be filed.
In the present case, these matters are academic as the complaint against the holder of the third domain name has been resolved, before the appointment of the Panel, without the necessity for a decision.
The Complaint being adjudicated upon does not involve any question of consolidation. The Panel recognizes that there are many reasons why someone might settle a dispute without a formal determination. The Panel also makes no finding that the Respondent and the holder of the third domain name were in any form of co-operation. On the contrary, the history of the dispute indicates they are not.
Rejecting the Complaint and requiring the Complainant to file a new complaint would not be consistent with an efficient use of the parties’ and the Center’s resources. Nor would it promote an expeditious resolution of the dispute.
Accordingly, the Panel rejects the Respondent’s request to dismiss the Complaint on the basis that the Complaints should never have been consolidated. The Panel accepts the Respondent’s contention that he is independent of the registrant of the third domain name and proceeds to determine the Complainant on the substantive grounds.
The Respondent also contends that the disclosure of his contact details in connection with the dispute violated his right of privacy. The Respondent does not specify what law or laws his claimed right of privacy is said to arise under.
In any event, clause 5(a) and (b) of the Registration Agreements consistently with the requirements under ICANN policies require any registrant to disclose certain information to the Registrar and to keep that information current and up to date. This information includes for the administrative, technical and billing contacts the name, postal address, email address, telephone number, and where available, fax number of the contact.
In relation to that information, clause 5(c) of the registration agreement further provides:
“You agree and acknowledge that the Company will make available the Registration Information and the Additional Registration Information to ICANN; to other third party Registry Administrators such as VeriSign, Inc., Global Names Registry Ltd., Neustar, Inc., Afilias USA, Inc., Global Domains International; and as applicable laws may require or permit. Additionally, you acknowledge and agree that ICANN and the Registry Administrators may establish guidelines, limits and/or requirements that relate to the amount and type of information that the Company may or must make available to the public or to private entities, and the manner in which such information is made available. Further, you hereby consent to any and all such disclosures and use of, and guidelines, limits and restrictions on disclosure or use of, information provided by you in connection with the registration of a domain (including any updates to such information), whether during or after the term of your registration of the domain. Moreover, you hereby irrevocably waive any and all claims and causes of action that may arise or have arose from such disclosure or use of your Registration Information and the Additional Registration Information.”
By registering the disputed domain names, the Respondent became bound to submit to the dispute resolution process established by ICANN under the Policy. See the preamble to the Policy paragraph 4.
Once a complaint has been initiated, the Rules paragraph 4(b) require the relevant registrars to notify the Center the registrant’s contact details in their verification responses.
One reason for this is that the Rules paragraph 2(a) requires the Center to send Written Notice of the Complaint to all postal-mail and facsimile addresses shown in the WhoIs record for the relevant domain name for the domain-name holder, the technical contact and the administrative contact and also the billing contact. In addition, the Center must send the Complaint including any annexes in electronic form by email to the technical, administrative and billing contacts. See the Rules paragraph 2(a)(ii).
Further, a fundamental aspect of natural justice requires that all communications from the Center to a party and vice versa or between the parties, must be copied to the other parties. See the Rules paragraph 2 (h).
As already discussed above, the Policy and the Rules, and the decisions interpreting the Policy and the Rules contemplate and permit consolidation of complaints.
The Center would be in violation of the Policy and the Rules if it did not disclose communications with one party to the other parties. Further, it would not be consistent with the requirements of natural justice if communications from one party were not disclosed to the others. For example, in the context of a request for consolidation, it would not be fair on one prospective respondent to conceal that another prospective respondent claimed it was operating in concert with the first prospective respondent.
By registering the disputed domain names, therefore, the Respondent has become bound by the Policy and the Rules. The Policy and the Rules establish guidelines and requirements for the disclosure of a registrant’s contact information in the context of a dispute under the Policy. The Panel considers, therefore, that the Respondent must be taken to have consented to the disclosure of the relevant information in the context of a dispute under the Policy.
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous registered trademarks for PHOTOSHOP including those specifically listed in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain names to the proven trademark. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g. WIPO Overview 3.0, section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
Disregarding the “.com” and the “.org” gTLDs, the disputed domain names consist of the words “fotoshop” and the term “online” separated by a hyphen.
It is obvious that the word “fotoshop” substitutes “f” for the “ph” in the Complainant’s trademark. The Respondent contends, however, that these two words are not the same. He says that “fotoshop” is a transcription of the Russian-language word “фотошоп” and the Complainant has no rights in either “фотошоп” or “fotoshop”, only PHOTOSHOP.
First, if by referencing the Russian-language form, the Respondent is claiming that “фотошоп” is a common or descriptive term in the Russian language, the Respondent has presented no evidence that it is a descriptive or generic term. On the contrary, the term PHOTOSHOP has been certified as a well-known trademark in the Russian Federation.
Secondly, the Respondent’s contention that the substitution of “f” for “ph” means that no-one would think the websites or the disputed domain names are connected with the Complainant does not assist the Respondent. As noted above, at this stage of the inquiry, the issue is the recognizability of the Complainant’s trademark in the disputed domain name: is the Complainant’s trademark visually and/or aurally recognizable. That is the case here. The two variants sound the same. The two variants also look very similar. The substitution of the “f” for “ph” is a common, obvious or intentional misspelling of the kind likely to be confusingly similar. See WIPO Overview 3.0, section 1.9. Moreover, as discussed below, the Panel does not agree with the Respondent that the substitution of “f” for its phonetic equivalent “ph” avoids the potential for confusion about association with the Complainant’s trademark.
The addition to the phonetic equivalent of the Complainant’s trademark of the hyphen and the descriptive term “online” does not preclude a finding of confusing similarity. See e.g. WIPO Overview 3.0, section 1.8 and, for the insubstantiality of the hyphen in undertaking the comparison, see Telstra Corporation Limited v Ozurls, WIPO Case No. D2001-0046. Apart from anything else, the Complainant’s trademark remains visually and aurally recognisable within the disputed domain names.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it.
The disputed domain names are plainly not derived from the Respondent’s name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain names could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain names.
As already noted, the Respondent contends that “fotoshop” is not “Photoshp” and consequently as the first person to register the disputed domain names he is entitled to use them. He says further that the Complainant uses its trademark only in connection with a desktop program and has no rights or use in connection with online services.
The second contention is incorrect both as a matter of fact and the scope of the Complainant’s registered trademarks.
While domain names are registered on a first come first served basis, all registrations are subject to the Policy. Accordingly, the fact that the Respondent was the first person to register the disputed domain names does not defeat the Complainant’s trademark rights where the disputed domain names are confusingly similar to the Complainant’s trademark.
As explained in section 5B above, the disputed domain names are confusingly similar to the Complainant’s trademark for the purposes of the Policy. Moreover, this is not a case where the use of the disputed domain names is not likely to lead to confusion as to source. On the contrary, the close resemblance of the disputed domain names and the services offered by the Respondent to the Complainant’s trademark and services is highly likely to suggest an association with the Complainant. At the very least, the disputed domain names take advantage of the trademark significance of the term “Photoshop” without the Complainant’s permission to attract potential users of image editing services to the Respondent’s site.
The evidence does not show whether the Complainant holds trademark rights in Ukraine where the Respondent is based. However, the websites to which the disputed domain names were available online in both Russian and English versions are accessible by anyone anywhere in the world including from the Russian Federation, whether the Complainant does have relevant registered rights. There is no suggestion that the Respondent’s website was directed only to an audience in Ukraine or that it was not accessible by someone from the Russian Federation or anywhere else. On the contrary, it appears that the Complainant’s representatives accessed the website from the Russian Federation. In these circumstances and bearing in mind the global nature of the Internet, the Panel finds that the use of the disputed domain names which are confusingly similar to the Complainant’s trademark in connection with an online image-editing service, albeit one provided for free, is not a bona fide offering of goods or services under the Policy whether or not the Complainant has trademarks in the Ukraine.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
In the present case, there can be no dispute that the Respondent was well aware of the Complainant’s trademark. See Adobe Inc. v. Kovalyov Alexandr Viktorovich WIPO Case No. D2021-1081.
It appears that the Respondent has proceeded on a very narrow understanding of the scope of the Complainant’s trademark, contending that the Complainant does not own either “фотошоп” or “fotoshop”.
First, regardless of the Respondent’s position, as explained in section 5B above objectively viewed the disputed domain names are confusingly similar to the Complainant’s trademark. Moreover, and in any event, the Panel also finds that there is likely to be confusion by association. The registration and use of the disputed domain names to provide what is essentially a competing service online clearly constitutes registration and use in bad faith under the Policy in the absence of a right or legitimate interest in the disputed domain names.
The Panel also rejects the Respondent’s apparent contention that a finding in favour of the Complainant would somehow give the Complainant an unjustified monopoly or preclude the Respondent from providing his online image-editing services. As the Respondent himself points out, both he and the holder of the third domain name have quickly found alternative domain names to provide their services from. The use of the disputed domain names, which are confusingly similar to the Complainant’s trademark, seeks unfairly to capitalise on their resemblance to the Complainant’s trademark.
Accordingly, the Complainant has established all three requirements under the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, <fotoshop-online.org>, and <online-fotoshop.com>, be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: September 20, 2021