The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Gallagher Woods LLP, United States.
The Respondent is Nurinet of Gyeongju-si, Gyeongsangbuk-do, Republic of Korea. 2. The Domain Names and Registrar
The disputed domain names and are registered with N. Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2011. On August 24, 2011, the Center transmitted by email to N. Inc. (the “Registrar”) a request for registrar verification in connection with the disputed domain names. On August 25, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2011.
The Center appointed Professor Ilhyung Lee as the sole panelist in this matter on October 3, 2011. 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.
As discussed herein, the Panel determines that English is the language of the proceeding. 4. Factual Background
The Complainant, a United States corporation with its principal place of business in San Rafael, California, produces and sells 3D design, engineering, and entertainment software. It has used the AUTOCAD and 3DS MAX marks for its various products. The Complainant has received registrations for its marks in the United States (on January 29, 1985, for AUTOCAD; July 8, 2003, for 3DS MAX), and in other countries, including the Republic of Korea (on January 19, 1988, for AUTOCAD; March 23, 2002, for 3DS MAX).
The Respondent registered the disputed domain name on August 14, 2009, and on October 20, 2009. 5. Parties’ Contentions A. Complainant
The Complainant contends principally that: (i) the disputed domain names are identical or confusingly similar to the marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainant also states that: it is not affiliated with the Respondent’s websites; the Respondent is not authorized to use the Complainant’s marks; and the “Respondent owns 16,078 domains.” B. Respondent
The Respondent did not reply to the Complainant’s contentions. Paragraphs 5(e) and 14(a) of the Rules permit the Panel to decide the dispute based on the Complaint. The Panel may also draw appropriate inferences from the Respondent’s default, under paragraph 14(b). 6. Discussion and Findings
The Panel must initially address the language of the proceeding. Under paragraph 11 of the Rules, the language of the registration agreement is the language of the administrative proceeding. But the Rules grant the panel discretion to determine otherwise, “having regard to the circumstances.”
Here, the Registrar states that the registration agreement is in Korean. The Complainant submitted its Complaint in English, and requests that English be the language of the proceeding. The Center informed the Respondent, in both English and Korean, that it may object timely to any request that the language of the proceeding be English. The Respondent did not respond. With the Respondent’s default, the Complainant is the only party remaining. The Panel determines that English is the language of the proceeding.
On the merits, the Complainant must demonstrate the presence of each of the three elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Panel determines that the disputed domain names and are identical or confusingly similar to the Complainant’s marks, AUTOCAD and 3DS MAX, respectively. The disputed domain name merely adds to the AUTOCAD mark the generic term “quest” plus the top level domain; the disputed domain name differs from the Complainant’s 3DS MAX mark only by a hyphen replacing the space and the addition of the top level domain. These differences are insufficient to defeat confusing similarity. The Complainant has established rights in the marks, AUTOCAD and 3DS MAX.
The first element of paragraph 4(a) of the Policy is demonstrated. B. Rights or Legitimate Interests
The Complainant has met its initial burden of making a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. The burden shifts to the Respondent to demonstrate any such rights or legitimate interests. The Respondent has defaulted.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances, which, if proven, demonstrate the respondent’s rights or legitimate interests in respect of the domain name. The Panel is unable to ascertain any evidence that would indicate such rights or interests, as described in paragraph 4(c) of the Policy, or otherwise.
The second element is established. C. Registered and Used in Bad Faith
Under the Policy, the Complainant must show that each disputed domain name “has been registered and is being used in bad faith,” as set forth in paragraph 4(a)(iii) of the Policy. Paragraph 4(b) provides a non-exhaustive list of circumstances that are evidence of bad faith in the registration and use of a domain name.
With respect to both of the disputed domain names, the Panel is of the view that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website . . ., by creating a likelihood of confusion with the [C]omplainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the Respondent’s website, under paragraph 4(b)(iv) of the Policy. The Complainant has submitted evidence that the websites of the disputed domain names marketed “third party products and services in the same general field as Autodesk’s products, including without limitation links to a third party website advertising a third party product that directly competes with Autodesk’s products.”
In addition, regarding the disputed domain name , the case record includes correspondence between the parties, wherein the Complainant requested the Respondent to transfer voluntarily the disputed domain name to the Complainant, which would compensate the Respondent for registration and administrative costs. Responses from the email address of the Respondent followed, offering the disputed domain name for EUR 3,900, then EUR 2,500. To the Panel, these circumstances indicate that the Respondent registered or acquired the disputed 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 . . . for valuable consideration in excess of [the] documented out-of-pocket costs directly related to the domain name,” under paragraph 4(b)(i) of the Policy.
The third element is demonstrated. 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 disputed domain names and be transferred to the Complainant.
Ilhyung Lee
Sole Panelist
Dated: October 10, 2011
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