The Complainant is Autodesk Inc., California, United States of America, represented by Donahue Gallagher Woods LLP, United States of America.
The Respondents are Telecom Tech Corp., City Panama, Panama and Private Registration (EXP), Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2011. On October 3, 2011, the Center transmitted by email on October 1, 2011 a request for registrar verification in connection with the disputed domain name. After several reminders were sent from the Center, the registrar Bargin Register Inc. finally replied to the Center on October 26, 2011, sending its verification response by email confirming that the Policy applied to the disputed domain name and disclosing the registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 8, 2011 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 November 22, 2011. A further email was sent to the Registrar, requesting confirmation that the expiry date on the public WhoIs for the disputed domain name : October 1, 2012 is correct, as this information was not provided in the verification response of October 26, 2012. As no reply was forth coming the Center proceeded based on expiration date in the relevant WhoIs of that day.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2011.
The Center appointed Linda Chang as the sole panelist in this matter on January 10, 2012. 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. In accordance with paragraph 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy, the date by which the Administrative Panel is required to forward its decision to the Center was extended from January 24, 2012 to January 31, 2012.
The Complainant is informed and believes that: (i) a copy of the Registrar’s registration agreement applicable to the Domain (the “Registration Agreement”) is attached as Exhibit D to the Handler Declaration; and (ii) the registrar has posted its Registration Agreement on the Internet at: /content.php?action=show_agreements&requestfor=registraragreement&from=agree_page. The language of this proceeding is therefore English, the language of the Registration Agreement. 4. Factual Background
This Second Amended Complaint concerns the Respondent’s unauthorised use and incorporation into the disputed domain name of the registered AUTODESK and 3DS MAX trademarks owned by the Complainant (each, a “Mark”; collectively, the “Marks”). For nearly three decades in the case of the AUTODESK Mark, and for over a decade with regard to the 3DS MAX Mark, the Complainant has used the Marks in connection with the Complainant’s commercial offering to the public of licensed copies of computer software programs, associated user manuals, and related documentation (see Declaration of Christine J. Kalb (“Kalb Declaration”), submitted with the Complainant’s original Complaint).
The AUTODESK Mark is the basis of the Complainant’s name. For decades the Complainant has incorporated the AUTODESK Mark into the names applied to many of its software products, including without limitation at least fifty two products registered with the United States Copyright Office in the year 2010 alone. Likewise, the Complainant has incorporated the 3DS MAX Mark into the names of several of its software products, the most recent versions of which include Autodesk® 3ds Max® 2012 software and Autodesk® 3ds Max® Design 2012 software.
The Complainant has continually used its AUTODESK Mark in commerce since at least February 1983 (see Handler Declaration, Exhibit E). On January 29, 1985, the United States Patent and Trademark Office (“USPTO”) granted the Complainant trademark registration number 1316772 covering the AUTODESK trademark as maintained on the USPTO’s Principal Register (see Handler Declaration, Exhibit E; Kalb Declaration) This registration has since achieved incontestable status under federal law in the United States (see Handler Declaration, Exhibit E of the Complaint).
The Complainant has continually used its 3DS MAX Mark in commerce since at least January 2001 (see Handler Declaration, Exhibit F). On April 16, 2001, the Complainant submitted an application to the USPTO to formally register the Complainant’s exclusive rights in and to the 3DS MAX Mark with the United States federal government. On July 8, 2003, the USPTO granted the Complainant trademark registration number 2733869 as maintained on the USPTO’s Principal Register (see Handler Declaration, Exhibit F; Kalb Declaration). As with the AUTODESK Mark, the Complainant has complied with United States federal law to make incontestable its U.S. registration covering, and its corresponding right to exclusive use of the 3DS MAX Mark (see Handler Declaration, Exhibit F).
The Complainant has also registered its exclusive right to use the Marks in other countries and jurisdictions throughout the world. Non exhaustive examples include: (a) on February 10, 1988, the State Administration for Industry and Commerce of the People’s Republic of China granted the Complainant trademark registration number 307891 covering the AUTODESK Mark (see Handler Declaration, Exhibit G; Kalb Declaration); (b) on September 21, 2004, the Complainant applied for a Community Trade Mark from the Trade Marks and Designs Registration Office of the European Union covering the 3DS MAX mark, registration was granted on July 24, 2006 via registration number 004036687 (see Handler Declaration, Exhibit H; Kalb Declaration); (c) on December 6, 2001, the State Administration for Industry and Commerce of the People’s Republic of China granted the Complainant trademark registration number 1678314 covering the 3DS MAX Mark (see Handler Declaration, Exhibit I; Kalb Declaration); and (d) on November 2, 2000, the Trade Marks and Designs Registration Office of the European Union granted the Complainant Community Trade Mark registration number 001936822 for the 3DS MAX mark (see Handler Declaration, Exhibit J; Kalb Declaration).
In total, and not including its Community Trade Mark registrations collectively granted by the countries that comprise the European Union, the Complainant has obtained registrations in and to its: (a) AUTODESK Mark from at least eighty different countries; and (b) 3DS MAX Mark from at least fifteen different countries (see Kalb Declaration).
The Complainant also owns common law rights in the Marks. The Complainant has continuously used the AUTODESK Mark in commerce since/at least February 1983, and has continuously used the 3DS MAX Mark in commerce since/ t least January 2001 (see Handler Declaration, Exhibits E-F; Kalb Declaration) the Complainant sells licenses all over the world and on every continent for its various software products that incorporate the Marks into their names (see Kalb Declaration). Today there are over 9 million users of the Complainant’s products. To accommodate this enormous user base, the Complainant works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorised training centers to assist its customers with their worldwide use of its products, including those with titles that incorporate the Marks. The Complainant has spent millions of dollars to advertise and promote its products around the world. The Complainant has distributed millions of standalone copies, and an additional several million copies bundled into suites, of its products incorporating one or both of the Marks in their titles (see Kalb Declaration). Unsolicited media coverage linking the Marks to the Complainant is prevalent on the Internet and in print media (Handler Declaration, Exhibits K-L of the Complaint.). 5. Parties’ Contentions A. Complainant
The Complainant has never authorised the Respondent to incorporate the Marks into the disputed domain name (see Kalb Declaration; Second Supplemental Declaration of Christine J. Kalb). The Respondent is not authorised to use the Marks in connection with distributing any Autodesk product. The Complainant is not affiliated with and has never endorsed or sponsored the Respondent’s Website.
The Complainant first attempted to contact the Respondent about the Domain on March 8, 2011 (see Handler Declaration, Exhibit M of the Complaint). At that time the Domain resolved to a parked website (i.e., the website) consisting of third party sponsored links (see Handler Declaration, Exhibit C of the Complaint). At the top of the Website, the Respondent had posted a hyperlink (the “For Sale Hyperlink”) bearing the text: “Inquire about this domain.” When clicked, this hyperlink redirected users to the Domain Sponsor Website, through which the Domain is advertised as available for purchase and which advises prospective purchasers that “[t]he domain owner has set a minimum offer value of US $100” (see Handler Declaration, Exhibits B-C of the Complaint).
At the same time, a sponsored third party website link prominently advertised a third party product – “SolidWorks” software – along with the text “Hawk Ridge Systems” (see Handler Declaration, Exhibit C of the Complaint). When clicked, this link directed users to a third party webpage displaying the text “Hawk Ridge Systems #1 Reseller of SolidWorks” and “Fill out the information below to Download the Datasheet to learn more about SolidWorks Simulation” (the “Hawk Ridge Systems Webpage”) (see Handler Declaration, Exhibit N of the Complaint). SolidWorks® software directly competes with the Complainant’s products whose names incorporate the Marks, and Hawk Ridge Systems is a reseller of SolidWorks® licenses (see Kalb Declaration). Other sponsored links on the Respondent’s Website referred users to places like a website hosted by the Los Angeles Film School to advertise educational services in the field of three dimensional animation and websites offering consulting services related to SolidWorks® software (see Handler Declaration, Exhibits O-P).
The Complainant received no response to its initial communication sent to the Respondent (see Handler Declaration). On March 22, 2011, the Complainant tried for a second time to contact the Respondent (see Handler Declaration, Exhibit Q of the Complaint). Again, the Complainant received no response. On April 5, 2011 and April 12, 2011, The Complainant made further attempts to contact the Respondent (see Handler Declaration, Exhibits R-S of the Complaint). Once again, the Complainant received no response.
Sometime after June 8, 2011, the Respondent modified the look—but not the substance—of its website such that it consisted of hyperlinks under the labels “Related Searches” and “Popular Categories” (see Handler Declaration., Exhibit T of the Complaint). Clicking on any of these links opened other pages accessible from within the disputed domain name (each, a “Landing Page”). Each Landing Page consisted of nothing but sponsored third party links under the labels “Ads” and “Web Search Results” (see Exhibit U). Several sponsored Landing Page links blatantly advertised illegal copies of the Complainant’s software products, including without limitation: (a) one bearing the text “Download Autodesk AutoCAD 2007 crack serial keygen” associated with the domain name ; and (b) another with the text “Buy Autodesk AutoCAD 2007 for $99.95 and save $3896.00.” Authorised copies of the Complainant’s products are not distributed with “cracks” or “keygens,” commonly used to illegally circumvent the copyright protection measures built into the Complainant’s products; nor does it authorise copies of any of its products, which have a manufacturer’s suggested retail price of around $4,000 USD per license, for a price remotely close to US D100.
Since the Complainant filed its original Complaint initiating this administrative proceeding, the Respondent has once again modified its website so that it looks similar to the version prior to June 8, 2011 – i.e., a parked website offering third party sponsored links, some of which continue to lead to advertisements for third party products that directly compete with the Complainant’s products (Supplemental Handler Declaration, Exhibit X of the Complaint). For example, the Respondent’s Website continues to display a third party sponsored link bearing the text “SolidWorks 3DCAD Software” which, when clicked, leads users to the Hawk Ridge Systems Webpage (Supplemental Handler Declaration, Exhibit Y of the Complaint). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Under Policy paragraph 4(a)(i), the complainant must demonstrate: (a) it has rights in the Marks; and (b) the domain name is identical or confusingly similar to the Marks. The complainant has satisfied both elements.
The Complainant owns rights in the Marks and owns the exclusive right to use the Marks in the United States of America, China, the countries that comprise the European Union, and in the dozens of other countries around the world from which the Complainant has obtained registrations for the Marks in connection with its use of the Marks. Ownership of a registered mark to which a disputed domain is confusingly similar satisfies Policy 4(a)(i). See Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
The Complainant has also demonstrated its ownership of common law rights in the Marks substantially preceding the Respondent’s registration of the disputed domain name. Such rights arise when the complainant’s mark use results in secondary meaning, i.e. the mark having become a distinctive identifier associated with the complainant or its goods or services. See Australian Trade Commission v. Matthew Reader,WIPO Case No. D2002-0786. The strength of the association is without consequence for a Policy 4(a)(i) analysis. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322.
Secondary meaning can be established by a variety of factors, including without limitation advertising expenditures, consumer linking of the mark to the source, unsolicited media coverage of the product, sales success, and length and exclusivity of the mark usage. See Universal City Studios, Inc. v. Burns,WIPO Case No. 2001-0784. The facts demonstrate that the Complainant has cultivated sufficient secondary meaning in the Marks as unique source identifiers of its products such that the Complainant has proven its common law rights therein.
The addition of a gTLD, whether “.com” or any other extension, is irrelevant to a Policy paragraph 4(a)(i) analysis of identicalness or confusing similarity. See Busy Body, Inc. v. FitnessOutlet Inc.,WIPO Case No. D2000-0127. The inquiry here under Policy paragraph 4(a)(i) concerns only whether the “autodesk3dmax” subdomain is identical or confusingly similar to the Marks.
The subdomain consists of two parts: (i) the word “autodesk”; and (ii) the word “3dmax. ” The former is identical to the AUTODESK Mark. Regarding the latter, panels have routinely found that domain names consisting of obvious misspellings of trademarks – such as omission or addition of single characters – are confusingly similar to the at-issue marks. See Express Scripts, Inc.v. Whois Privacy Protection Service, Inc.,WIPO Case No. D2008-1302; Backstreet Prods., Inc. v. Zuccarini,WIPO Case No. D2001-0654; AltaVista Co. v. Yomtobian,WIPO Case No. D2000-0937. The Respondent’s incorporation of the word “3dmax” into the Domain in lieu of the Complainant’s 3DS MAX mark – i.e., by omitting the “s” after “3d” – does not change the fact that the disputed domain name is identical or confusingly similar to the Marks such that the Complainant satisfies Policy 4(a)(i). B. Rights or Legitimate Interests
The second element the Complainant must establish is that the Respondent has no right or legitimate interest in the Domain in accordance with Policy 4(a)(ii). The Complainant must merely make a prima facie showing of this element to shift the burden to the Respondent to produce conclusive evidence to the contrary. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Upon the evidence presented: (a) The Complainant has made its required prima facie showing, thereby shifting the burden to the Respondent; and (b) the Respondent cannot meet its burden to prove it has any right or legitimate interest in the disputed domain name.
Policy paragraph4(c)(i) through (iii) provide that rights or legitimate interests in a domain name can be established if a respondent demonstrates it either: (a) before receiving notice of the dispute, used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; (b) has been commonly known by the domain name; or (c) is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the complainant’s mark. The Respondent cannot demonstrate any legal right to or legitimate interest in the disputed domain name under any of these tests.
The Complainant has never authorised the Respondent to use the Marks in the disputed domain name or otherwise. The Complainant is the exclusive owner of all rights in and to the Marks in jurisdictions around the world. The Complainant has never granted the Respondent any license, franchise, or other authorisation to incorporate the Marks into the disputed domain name. Accordingly, the Respondent has no basis to claim it has any right or legitimate interest in the disputed domain name.
The Respondent had notice of this dispute when it registered the domain name. Policy paragraph4(c)(i)—concerning whether the Respondent has used the disputed domain name in connection with a bona fide offering of goods—applies only if the Respondent made use of the disputed domain name before any notice to it of the dispute. A respondent who “knew or should have known” of a complainant’s trademark rights at the time of registration is precluded from demonstrating it put the mark to a legitimate use. See SembCorp Indus. Ltd. v. Hu Huan Xin,WIPO Case No. D2001-1092.
The Respondent knew or should have known of the Complainant’s exclusive rights in the Marks when it registered the disputed domain name. This dispute concerns world famous marks used by the Complainant around the globe for more than a quarter century in the case of the AUTODESK Mark and for more than a decade vis-à-vis the 3DS MAX Mark, dozens of worldwide registrations owned by the Complainant encompassing the Marks, and the Respondent having registered the disputed domain name many years after the Complainant obtained its registrations.
The Respondent’s Website features links to third party websites advertising third party products that directly compete with the Complainant’s products and to other websites whose owners commercially offer computer-related goods and services. The Respondent’s Website as modified between June 8, 2011 and August 22, 2011 displayed sponsored ads that blatantly advertised illegal copies of the Complainant’s software products. These advertisements evidence the Respondent’s knowledge at all relevant times of the Complainant’s exclusive rights in the Marks. See Bridgestone Corp. v. Horoshiy, Inc.,WIPO Case No. D2004-0795.
The Respondent thus either had actual or constructive knowledge of the Complainant’s exclusive rights in the Marks when it registered the disputed domain name. See The Sportman’s Guide,Inc. v. Modern Ltd., Cayman Islands,WIPO Case No. D2003-0305. Consequently, the Respondent “had notice of this dispute” when it registered the disputed domain name and cannot use Policy paragraph 4(a)(i) to prove it has any rights or legitimate interests therein.
The Respondent cannot establish any right or legitimate interest in the disputed domain name under Policy 4(c)(i) because it has never used the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent registered and has been using the disputed domain name: (a) because it incorporates the Marks and, due to user confusion, generates traffic to the Respondent’s website containing links advertising third parties’ products and services that directly compete with those provided by The Complainant and from which the Respondent presumably profits when users click on these; and (b) for the primary purpose of selling the disputed domain name for an amount far in excess of any out-of-pocket registration costs the Respondent may have incurred vis-à-vis the disputed domain name.
Associating a domain name incorporating another’s mark with a website of sponsored third party links to other websites offering competing or strongly related products to those of the trademark owner is not a bona fide offering of goods or services under Policy paragraph 4(c)(i). Panels have repeatedly held that “registering a domain name incorporating a well-known trade mark and using it to misdirect Internet users to websites offering competing products and services, with the apparent intention of earning click-through revenue, does not give rise to a legitimate interest”. See Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./Reinhard Herrmann,WIPO Case No. D2009-0904; see also Lockheed Martin Corporation v. NBPro Hosting,WIPO Case No. D2003-0859 (“[i]t is well-settled that the use of another’s trademark to sell competitive goods and services is an act of trademark infringement, and cannot under any circumstances be considered to be a bona fide offering of goods and services”); Lego Juris A/S v. Privacy P/SMVS Consultancy Private Limited,WIPO Case No. D2009-1094.
The Domain incorporates the Complainant’s Marks and resolves to a website publishing sponsored links to third party websites offering competing or strongly related products to those marketed by the Complainant, including without limitation Autodesk’s 3ds Max® software. (See, e.g., Handler Declaration, Exhibit C, and Supplemental Handler Declaration, Exhibit X [both displaying sponsored link advertising third party SolidWorks® software]). Under these circumstances, the Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).
The Respondent cannot establish any right or legitimate interest in the disputed domain name by pointing to the changes implemented to the Respondent’s website sometime after June 8, 2011. At all times the Respondent’s Website has been merely a collection of sponsored links advertising third party products, some of which compete directly with the Complainant’s products. Moreover, some of those sponsored ads blatantly advertised illegal copies of the Complainant’s software products. The use of a domain name to pursue an illegal activity cannot be considered a bona fide use under the UDRP. See Prada S.A. v. Michael Faronston,WIPO Case No. D2006-0585.
This conclusion is unaffected by any assertion the Respondent may raise that it has made “demonstrable preparations to use” the Domain as allowed by Policy, paragraph 4(c)(i). Firstly, any such preparations would need to be in connection with a bona fide offering of goods or services, which the Respondent cannot prove. Secondly, the Respondent’s website has at all times consisted of nothing more than a sponsored link farm since it registered the Domain over four years ago. Neither such extended “use” nor even an affidavit from the Respondent testifying to its supposed planned use of the disputed domain name in the future would be sufficient evidence of any “demonstrable preparations to use” the domain name. The Respondent would instead need to provide documentary evidence actually substantiating the steps it has taken to prepare for anticipated use of the Domain. See AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corp. Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485. The Complainant submits that no such documentary evidence exists.
The Respondent also cannot avoid the conclusion that it has never used the domain for a bona fide offering of goods or services given the posting of the For Sale Hyperlink on its website and use of the Domain Sponsor Website in an attempt to sell the disputed domain name for a profit. As described in Repsol Butano, SA v. NURINET,WIPO Case No. D2009-1636: the respondent uses the disputed domain name in connection with domain name parking services. The respondent includes a link under the legend of “The domain may be for sale by its owner!” which, when clicked links the user to the domain name reseller “”, where it also states “ (REPSOL BUTANO) is for sale.” This is not a bona fide offering of goods and services. This finding and the facts supporting it are directly applicable to the present dispute. Thus the Respondent cannot avail itself of Policy paragraph 4(c)(i) to prove any right or legitimate interest in the disputed domain name.
Under Policy paragraph 4(c)(ii) the Respondent may attempt to prove a right or legitimate interest in the disputed domain name by establishing it has been known by the disputed domain name. “What paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known . . . prior to registration of the disputed domain name.” See Paule Ka v. Paula Korenek,WIPO Case No. D2003-0453. Further, “the registration and use of the disputed domain name, in connection with the Respondent’s website, does not by itself support a conclusion that the Respondent was commonly known by the domain name. ” See Yakka Pty Ltd. v. Mr. Paul Steinberg,WIPO Case No. D2004-0502.
No evidence suggests that the Respondent has ever called itself by any name incorporating the Marks or been “commonly known” by either of the Marks or the domain name. This is demonstrated by reference to the contact information the Respondent specified for itself for the disputed domain name’s public WhoIs record, which does not mention either of the Marks. It is also demonstrated by the Registrar’s recent identification of “Telecom Tech Corp.” as its supposed real name.
Policy paragraph 4(c)(iii) allows a respondent to claim a right or legitimate interest in a domain name if it can demonstrate it has been “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent cannot satisfy this test since its: (a) use of the disputed domain name has always been commercial; and (b) intent has always been to misleadingly divert consumers looking for the Complainant or its products, whose names incorporate one or both of the Marks, for the obvious purpose of redirecting those consumers to third party websites advertising either products that directly compete with the Complainant’s products or illegal copies of the Complainant’s products.
The “use of [a] Domain Name . . . simply to provide links to web sites (a practice typically engaged in to collect referral fees) cannot be considered . . . a noncommercial use.” See Lego Juris A/S, supra. The Respondent’s use of the disputed domain name at all times has been commercial given the third party sponsored links that comprise the Respondent’s Website and the singular commercial purpose of the third party websites to which those sponsored links resolve.
It is clear that the Respondent’s incorporation of the Marks into the disputed domain name was done with the intent to misleadingly divert consumers. There is no other explanation as to why the Respondent chose the domain name as the vehicle by which Internet users are routed to its Website: the content of the Respondent’s website is unrelated to the Complainant and legitimate, licensed copies of its products; the Respondent’s website contains links to third party websites where various third party products which directly compete with the Complainant’s products are advertised; and the Respondent has used its Website to route consumers to other third party-websites through which illegal copies of the Complainant’s products may be downloaded.
Any “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847; see also F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.,WIPO Case No. D2008-0422.
The conclusion that the Respondent cannot avail itself of Policy paragraph 4(c)(iii) to claim a right or legitimate interest in the Domain is unaffected by the occasional display on its Website of advertisements with links to websites promoting legitimate, licensed copies of the Complainant’s products. As noted in Asian World of Martial Arts Inc.v. Texas Int’l Prop. Assocs.,WIPO Case No. D2007-1415, while that respondent’s websites offered links to the complainant’s products, they also “offer[ed] links to and advertisements for the Complainant’s competitors. This does not constitute fair use but instead appears to constitute deceptive bait and switch advertising practices.” The Respondent’s actions and omissions in connection with the disputed domain name are deceptive advertising tactics subjecting the disputed domain name to a transfer decision. C. Registered and Used in Bad Faith
To obtain the relief it seeks the Complainant must satisfy Policy paragraph 4(a)(iii) by showing the Respondent registered and is using the disputed domain name in bad faith. Policy 4(b) enumerates non-exclusive situations in which the Panel must make a bad faith finding against the Respondent for its registration and use of the disputed domain name. The record establishes at least five grounds proving the Respondent’s bad faith in registering and using the disputed domain name.
1. The Respondent’s bad faith is established by the fame of the Marks.
“A finding of bad faith may be made where the Respondent “knew or should have known” of the registration and use of the trademark prior to registering the domain name.” See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Similarly, “registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.” See The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113. Such is the case with the Respondent’s registration of the Domain nearly three decades after registration and obtaining common law rights in the world famous AUTODESK Mark. It is therefore not plausible for the Respondent to argue that it innocently registered the Domain in good faith and without knowledge of the Complainant’s rights.
2. Respondent has intentionally attempted to attract visitors to its website by creating a likelihood of confusion with the Marks.
The Respondent’s bad faith under Policy paragraph 4(b)(iv) is established because the Respondent “intentionally attempted to attract, for commercial gain, Internet users to . . . [its] . . .web site or other on-line location, by creating a likelihood of confusion with . . . [The Complainant’s] . . . mark[s] as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its web site or location.” Stated differently, bad faith under Policy 4(b)(iv) “is concerned with illegitimately ‘attracting’ Internet users to a respondent’s website for commercial gain, by creating confusion as to the website’s affiliation with a trademark owner.” See Lance Armstrong Foundation v. CSA Marketing,WIPO Case No. D2005-0886.
A respondent’s use of a domain confusingly similar to a complainant’s mark for the purpose of attracting traffic to a website without content of its own and that provides links to commercial websites of others, satisfies the bad faith criteria of Policy 4(b)(iv). See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC,WIPO Case No. D2006-0550. For instance, in Emirates v. WhoisGuard Protected,WIPO Case No. D2006-0433, the panel based its transfer decision in part on the fact that: “It is also apparent that the Respondent has sought to attract Internet users for commercial gain, since it appears that the diversion of Internet users via the disputed domain name takes place in connection with a sponsorship scheme, under which the Respondent may receive fees for referrals.”
The Respondent similarly uses a sponsorship scheme on its Website to promote third party businesses whose products and services directly compete with those of the Complainant (see, e.g., Handler Declaration, Exhibit C, and Supplemental Handler Declaration, Exhibit X [both displaying sponsored links advertising third party SolidWorks® software]). The Respondent thus trades off the fame of the Marks by using them, without the Complainant’s authorisation, to attract users to its website, which has no content of its own and is published merely to earn pay-per-click revenues and to be a platform advertising the Domain for sale. This constitutes bad faith registration and use.
The Respondent cannot rebut this conclusion by attempting to disclaim a direct connection to the third party sponsored links appearing on the Respondent’s website, for instance by alleging either the Registrar is solely responsible for selecting and publishing those third party links or that the Respondent may supposedly not be financially benefiting therefrom. Panels have regularly dismissed such arguments by holding respondents ultimately responsible for content published on at-issue websites given their ownership of the disputed domains. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
3. The Respondent’s registration of a domain name so obviously connected with the Complainant and its well-known products proves the Respondent’s opportunistic bad faith.
Panels have recognised the existence of bad faith registration and use where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection to the product suggests opportunistic bad faith.” See Go Daddy Software, Inc. v. Internet Masters,WIPO Case No. D2002-0570; see also RapidShare AG, Christian Schmidt v. PrivacyP, Domain Admin n/a Sergey Malgov,WIPO Case No. D2010-0608.
Such is the case with the Respondent’s registration of the disputed domain name, which is so obviously connected with the Complainant’s fame and that of its software products whose names incorporate the 3DS MAX Mark given the millions of copies the Complainant has distributed to the public and the enormous efforts and expense. The Complainant has undertaken and incurred to promote its Marks as unique source identifiers of its products. The Respondent has no connection to the Complainant or its products that incorporate the Marks into their names, and the Respondent’s opportunistic bad faith is thus proven.
4. The Respondent’s use of the disputed domain name to advertise illegal copies of the Complainant’s products constitutes bad faith registration and use.
A respondent’s use of a disputed domain to pursue an illegal activity automatically qualifies that domain as having been registered and used in bad faith. See Prada S.A.,supra. Here the version of the respondent’s Website available to consumers between June 8, 2011 and November 15, 2011 hosted third party ads blatantly offering to distribute illegal copies of the Complainant’s products. As a matter of law, the Respondent’s use of its website to advertise other websites where consumers may obtain illegal copies of the Complainant’s products constitutes bad faith registration and use.
5. The Respondent registered the disputed domain name primarily for the purpose of selling it for valuable consideration in excess of Respondent’s out of- pocket costs directly related to the disputed domain name.
The Respondent’s bad faith in registering and using the disputed domain name is further evidenced by the fact that the Respondent has attempted to sell the disputed domain name for a price in excess of any out-of-pocket costs the Respondent may have incurred in direct relation to the Domain. If a respondent offers to sell a disputed domain for a price that exceeds usual registration fees, and if the respondent does not support the asking price with reference to documentation establishing the out-of-pocket costs incurred in direct connection with the domain, panels uniformly find that such circumstances constitute bad faith registration and use as a matter of law.
In Systima Limited v. Willie Byrne,WIPO Case No. D2001-0300, the panel found bad faith registration and use under Policy 4(b)(i) by reasoning that the Respondent was aware of the Complainant’s reputation at the time it registered the said domain name. That being the case, it would seem to follow that in offering the said domain name for sale . . . the Respondent on the balance of probabilities registered and maintained the said domain name registration with the intention of selling it to the Complainant. Other panels have reached the same decision without hesitation. See, e.g., L'AIR LIQUIDE Société anonyme pour l'Etude et l'Exploitation des Procédés Georges Claude v. NURINET,WIPO Case No. D2010-0122.
The Respondent registered and has used the disputed domain name with the hope of selling it for a profit. This is proven by the notice on the Domain Sponsor Website evidencing the Respondent’s willingness to accept not less than $100 for the Domain, as well as the Respondent’s use of a domain brokerage service to consummate such a sale. The Complainant submits $100 is at least two times what the Respondent paid in registration fees over the Domain’s life, and $100 appears to be merely the floor from which the Respondent would demand a much higher price once any such negotiations began.
The Respondent therefore had notice of this dispute and of the Complainant’s exclusive rights in the Marks when it registered the disputed domain name. That knowledge, combined with the Respondent’s offer to sell the Domain for an amount in excess of its registration costs, establishes the Respondent’s bad faith registration and use under Policy 4(b)(i). 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 domain name be transferred to the Complainant.
Linda Chang
Sole Panelist
Dated: January 30, 2012
Full & Egal Universal Law Academy