The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Gallagher Woods LLP, United States of America.
The Respondent is Private Registration (name) of 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 (“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 November 12, 2011. On November 14, 2011, the Center transmitted by email to Bargin Register Inc. (the “Registrar”) a request for registrar verification in connection with the Domain Name. On November 17, 2011, November 22, 2011, November 25, 2011, and November 28, 2011 the Center transmitted by email to Bargin Register Inc. further requests for registrar verification in connection with the Domain Name. No response to the requests for registrar verification in connection with the Domain Name was ever received by the Center.*
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 December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 23, 2011.
The Center appointed Linda Chang as the sole panelist in this matter on January 6, 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. 4. Factual Background
This Complaint concerns the Respondent’s unauthorised use and incorporation into the Domain Name of the registered AUTODESK trademark and REVIT trademark (“Marks”) owned by Autodesk, Inc. According to evidence provided by the Complainant, for nearly three decades in the case of the AUTODESK trademark, and for over a decade with respect to the REVIT trademark, Autodesk, Inc. has used its Marks in connection with its commercial offering to the public of licensed copies of computer software programs, user manuals, and related documentation.
The AUTODESK trademark is the basis for Autodesk Inc.’s name. For decades Autodesk, Inc. has also incorporated its AUTODESK trademark into the names applied to many of its software products, including without limitation its software product named “Autodesk Revit Architecture” and over fifty other products registered with the United States Copyright Office in the year 2010 alone. Similarly, Autodesk, Inc. has incorporated its REVIT trademark into the names of many of its software products, including the “Autodesk Revit Architecture” software product and at least three other products registered with the United States Copyright Office in the year 2010.
Autodesk, Inc. has continually used its AUTODESK trademark in commerce since at least February 1983. On January 29, 1985, the United States Patent and Trademark Office (“USPTO”) granted Autodesk, Inc. trademark registration no. 1316772 covering the AUTODESK trademark as maintained on the USPTO’s Principal Register. This registration has since achieved incontestable status under federal law of the United States.
Autodesk, Inc. has continually used its REVIT trademark in commerce since at least April 2000. On April 30, 2002, the USPTO granted Autodesk, Inc. trademark registration no. 2565790 covering the REVIT trademark as maintained on the USPTO’s Principal Register. This registration has since also achieved incontestable status under federal law of the United States.
Autodesk, Inc. has registered its Marks in other countries and jurisdictions around 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 (“SAICPRC”) granted Autodesk, Inc. trademark registration no. 731057 covering the AUTODESK trademark; (b) on August 21, 2007, the SAICPRC granted Autodesk, Inc. trademark registration no. 4418919 covering the REVIT trademark; (c) on July 24, 2006, the Trade Marks and Designs Registration Office of the European Union (“TMDROEU”) granted Autodesk, Inc. trademark registration no. 004036687 covering the AUTODESK trademark; and (d) on June 8, 2002, the TMDROEU granted Autodesk, Inc. trademark registration no. 002144129 covering the REVIT trademark.
In total, not including the aforementioned Community Trade Mark registrations collectively granted by the countries of the European Union, Autodesk, Inc. has obtained registrations covering AUTODESK trademark and others covering its REVIT trademark from at least 72 countries and 16 countries, respectively.
Autodesk, Inc. also owns common law rights in its Marks. Autodesk, Inc. has continuously used its AUTODESK trademark in commerce since at least February 1983 and has continuously used its REVIT trademark in commerce since at least April 2000. Autodesk, Inc. sells licenses all over the world and on every continent for its various software products that incorporate one or both of the Marks into their names and/or include one or both of the Marks in product packaging. Today there are over nine million users of Autodesk Inc.’s products. To accommodate the enormous user base, Autodesk Inc. 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. Autodesk, Inc. has spent millions of United States dollars to advertise and promote its products around the world and has distributed at least 9.3 million standalone copies, and at least 8.3 million additional copies bundled into suites, of its products that have one or both of the Marks incorporated into their names and/or include one or both of the Marks in product packaging. Unsolicited media coverage tying the Marks to Autodesk is widespread.
The Domain Name was registered on January 2008. 5. Parties’ Contentions A. Complainant
Autodesk, Inc. has never authorised the Respondent to incorporate either of the Marks into the Domain Name. The Respondent is not authorised to use either of the Marks in connection with distributing any Autodesk, Inc. product. Autodesk, Inc. is not affiliated with, and has never endorsed or sponsored any website to which the Domain Name has resolved (collectively, “Respondent’s Website”). The Respondent’s Website consists entirely of sponsored links under the label “Sponsored Listings” (“Sponsored Link”) and additional links to websites within the Respondent’s Website under the label “Related Searches” where additional Sponsored Links are listed.
The “Related Searches” contain text such as “Simple CAD Software”, “3D CAD Cam Software”, “Free CAD Drawing Software”, and “Free AutoCAD Software.” When the Sponsored Links are clicked, users are redirected to various third party-websites selling products and services unrelated to those of Autodesk, Inc. (“Third Party Website”). The Sponsored Links include advertisements for products that directly compete with Autodesk, Inc.’s products. One Sponsored Link includes the text “SolidWorks 3DCAD Software” and links to a Third Party Website maintained by or on behalf of an entity named Hawk Ridge Systems which is described as the “#1 SolidWorks Reseller”. SolidWorks’ software directly competes with Autodesk Inc.’s products and Hawk Ridge Systems is a reseller of SolidWorks licenses.
Other examples include Sponsored Links labeled: (a) “You Should Try progeCAD” along with the text “1/10th Cost, Replace Your ACAD Free 30 Day Full Trial” and which links to a Third Party Website advertising progeCAD software published by third-parties progeCAD S.R.L. and/or ProgeCAD USA; and (b) “2D/3D Analysis and Design” along with the text “Structural Engineering Software Download free, fully working demos” and which links to a Third Party Website advertising Daystar iS software, Multiframe software, and Section Maker software, all of which are published by Daystar Software, Inc. Each of the software products advertised via these Third Party Websites directly competes with Autodesk’s products.
Autodesk, Inc. owns the domain name and routes Internet users who attempt to access the same to the official Autodesk, Inc. website, “”, which is dedicated to advertising “Autodesk Revit Architecture” software published by Autodesk, Inc.
Autodesk, Inc. tried to resolve this dispute by attempting to contact both the Respondent via its email address provided by the publicly available WhoIs database and the Registrar via its email address listed on its website. Autodesk Inc.’s email sent to the Respondent bounced as undeliverable, and the Registrar never responded to the email Autodesk, Inc. sent to it. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy and 3(b)(ix)(1) of the Rules, Autodesk, Inc. must demonstrate: (a) it has rights in the Marks; and (b) the Domain Name is identical or confusingly similar to the Marks. The Panel finds that the Complainant has satisfied both elements.
Autodesk, Inc. owns rights in both Marks and owns the exclusive right to use the Marks in the United States, China, the European Union and dozens of other countries around the world in which Autodesk, Inc. has obtained trademark registrations for the Marks. Ownership of a registered mark to which a disputed domain name is confusingly similar satisfies paragraph 4(a)(i) of the Policy. See Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano,WIPO Case No. D2003-0661.
Autodesk, Inc. has demonstrated its ownership of common law rights in the Marks, substantially preceding the Respondent’s registration of the Domain Name. Such rights arise when a complainant’s use of its trademark results in secondary meaning, i.e. the trademark 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 analysis under paragraph 4(a)(i) of the Policy. 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 mark usage. See Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com,WIPO Case No. D2001-0784. The facts demonstrate that Autodesk, Inc. has cultivated sufficient secondary meaning in both Marks as unique source identifiers of its products such that Autodesk, Inc. has proven its common law rights therein.
The addition of a gTLD, whether “.com” or any other extension, is irrelevant to analysis of identicalness or confusing similarity under paragraph 4(a)(i) of the Policy. See Busy Body, Inc. v. FitnessOutlet Inc.,WIPO Case No. D2000-0127.
In these administrative proceedings, the inquiry under paragraph 4(a)(i) of the Policy concerns only whether the Domain Name is identical or confusingly similar to one or both of the Marks.
When a domain name consists only of two trademarks owned by the complainant, or even one trademark owned by the complainant and a second owned by a third-party, previous UDRP panels have found that the disputed domain names are identical or confusingly similar to the complainant’s trademark or trademarks. See Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,WIPO Case No. D2003-0112 (the disputed domain name consisted of two trademarks owned by the two complainants); Chevron Corp. v.Young Wook Kim,WIPO Case No. D2001-1142 (the disputed domain name consisted of one trademark owned by the complainant and a second owned by a third-party).
Here the Domain Name is, without question, identical to the Marks insofar as it is simply a compilation of both Marks sandwiched together without anything more. On this basis, the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element Autodesk, Inc. must establish is that the Respondent has no rights or legitimate interests in the Domain Name. Autodesk, Inc. must 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) Autodesk, Inc. has made a prima facie showing thereby shifting the burden to the Respondent; and (b) the Respondent cannot meet its burden to prove it has any rights or legitimate interests in the Domain Name.
Paragraph 4(c)(i) through (iii) of the Policy provide that rights or legitimate interests in a disputed 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 in connection with a bona fide offering of goods or services; (b) has been commonly known by the disputed 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. In this Panel’s view, the Respondent cannot demonstrate any rights or legitimate interests in connection with the Domain Name under the Policy.
Autodesk, Inc. is the exclusive owner of all rights in and to the Marks in many jurisdictions around the world. It has never granted the Respondent any license, franchise, or other authorisation to incorporate either of the Marks into the Domain Name. The Respondent is not authorised to use the Marks in connection with distributing any products. Autodesk, Inc. is not affiliated with, and has never endorsed or sponsored the Respondent’s Website. The Respondent has no basis to argue it has any rights or legitimate interests in the Domain Name.
Paragraph 4(c)(i) of the Policy concerning whether the Respondent used the Domain Name in connection with a bona fide offering of goods, applies only if the Respondent made use of the Domain Name before any notice was given of the dispute to the Respondent. 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 trademark to a legitimate use. See SembCorp Industries Limited v. Hu Huan Xin,WIPO Case No. D2001-1092.
The Respondent knew or should have known of Autodesk, Inc.’s exclusive rights in the Marks when it registered the Domain Name. This administrative proceeding concerns two well-known trademarks used by Autodesk, Inc. around the globe for more than a quarter century in the case of the AUTODESK trademark and for more than a decade with regard to the REVIT trademark and dozens of worldwide registrations owned by Autodesk, Inc. encompassing the Marks. The Respondent registered the Domain Name decades after Autodesk, Inc. began obtaining registrations for the AUTODESK trademark and nearly a decade after Autodesk, Inc. began obtaining registrations for the REVIT trademark.
This Panel finds that the Respondent knowingly chose to register a domain name consisting of nothing more than the Marks in an obvious attempt to divert the traffic of Internet users seeking Autodesk, Inc. and and/or its software products whose names incorporate the REVIT trademark. This is evidenced by the fact that the Respondent’s Website has nothing to do with Autodesk, Inc. or its products that incorporate one or both of the Marks into its name, as well as by the fact that the Domain Name is practically identical to Autodesk, Inc.’s active domain name which Autodesk, Inc. uses to direct Internet users to Autodesk, Inc.’s official website advertising its “Autodesk Revit Architecture” software. These facts demonstrate the Respondent’s knowledge at all relevant times of Autodesk, Inc.’s exclusive rights in the Marks.
In addition, the Sponsored Links on the Respondent’s Website and the Third Party Websites, accessible through the website advertise third-party products that directly compete with Autodesk, Inc.’s products, including competing SolidWorks software (as sold through a prominent reseller of SolidWorks software licenses), competing Daystar iS software, Multiframe software, and Section Maker software, and competing progeCAD software. The Respondent’s blatant use of the Domain Name to advertise third-party’s software products that directly compete with those published by Autodesk, Inc. further establishes the Respondent’s knowledge of Autodesk, Inc.’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 Autodesk, Inc.’s exclusive rights in the Marks when the Respondent registered the Domain Name. See The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands,WIPO Case No. D2003-0305. Consequently, the Respondent “had notice of this dispute” at the time of Domain Name registration and cannot use paragraph 4(c)(i) of the Policy to establish any rights or legitimate interests in the Domain Name.
The Respondent cannot establish any rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy because it has never used the Domain Name in connection with a bona fide offering of goods or services. According to this Panel, the Respondent instead registered and has been using the Domain Name simply because it: (a) incorporates the Marks and, due to user confusion, generates traffic to Respondent’s Website and, through the Sponsored Links, to Third Party Websites; (b) thereby enables the Respondent and its affiliates to advertise products that compete directly with Autodesk, Inc.’s products; and (c) presumably allows the Respondent to earn click-through revenues.
Associating a domain name incorporating another’s trademark with a website of sponsored third party links pointing to other websites offering competing or closely related products to those of the trademark owner is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. UDRP panels have 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; Lockheed Martin Corporation v. NBPro Hosting,WIPO Case No. D2003-0859 (“It is well-settled that the use of another’s trademark to sell competitive goods and services is an act of trademark infringement, and cannot [. . . ] be considered to be a bona fide offering of goods and services”); LEGO Juris A/S v. PrivacyP / SMVS Consultancy Private Limited,WIPO Case No. D2009-1094.
The Respondent’s Domain Name incorporates both Marks and resolves to the its Website featuring Sponsored Links advertising competing or strongly related products to those published and marketed by Autodesk, Inc. Internet users who reasonably believe they may through the Domain Name find Autodesk, Inc. or one of its products that incorporates either of the Marks are automatically redirected to advertisements (i.e., the Third Party Websites) selling products and services unrelated to Autodesk, Inc. It is readily apparent that the Respondent chose the Domain Name not only because the Respondent seeks to use the Respondent’s Website to trade off the Marks’ good will, but it has also tried to confuse Internet users attempting to find Autodesk, Inc. or its products through AutodeskInc.’s active website at its domain name , which only very slightly differs from the Domain Name by inclusion of a period between the Marks. Under these circumstances, the Respondent’s use of the Domain Name does not qualify as a bona fide offering of goods or services.
This conclusion is unaffected by any assertion the Respondent may raise that it has purportedly made “demonstrable preparations to use” the website at the Domain Name as put forth in paragraph 4(c)(i) of the Policy. 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 the Respondent registered the Domain Name nearly four years ago. This Panel determines that neither such extended use alone nor even an affidavit from the Respondent testifying to supposed planned use of the Domain Name in the future for something other than a sponsored links farm would be sufficient evidence of demonstrable preparations to use the Domain Name; instead, the Respondent would need to provide documentary evidence actually substantiating steps already taken to prepare for anticipated proper use of the Domain Name. See AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485. Autodesk, Inc. submits that no such documentary evidence exists. The Respondent cannot avail itself under paragraph 4(c)(i) of the Policy to prove any rights or legitimate interests in the Domain Name.
Under paragraph 4(c)(ii) of the Policy the Respondent may attempt to prove a right or legitimate interest in the Domain Name by establishing it has been commonly known by the Domain Name. Accordingly, “[w]hat 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 the Respondent has ever been called by any name incorporating either of the Marks or has been “commonly known” by either of the Marks or by the Domain Name. This is demonstrated by the Respondent’s contact information for the Domain Name provided by the publicly available WhoIs , which does not mention either of the Marks.
Paragraph 4(c)(iii) of the Policy allows the Respondent to claim a right or legitimate interest in a disputed domain name if the Respondent 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.” This Panel finds that the Respondent cannot satisfy this test since its: (a) use of the Domain Name has always been commercial; and (b) intent has always been to misleadingly divert consumers looking for Autodesk, Inc., its products whose names incorporate one or both of the Marks, or the website associated with Autodesk, Inc.’s active website at domain name (which only differs from the Domain Name by inclusion of a single period between the Marks) for the obvious purpose of redirecting consumers via the Sponsored Links on the Respondent’s Website to the Third Party Websites where third-parties’ products which directly compete with Autodesk, Inc.’s products are advertised.
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 Domain Name at all times has been commercial given the Sponsored Links that comprise the Respondent’s Website and the commercial purpose of the Third Party Websites to which the Sponsored Links resolve.
It is clear that the Respondent’s incorporation of the Marks into the Domain Name was done with intent to misleadingly divert consumers. On the evidence submitted, there is no other explanation as to why the Respondent chose the Domain Name as the vehicle by which Internet users are routed to the Respondent’s Website: the content of the Respondent’s Website is unrelated to Autodesk, Inc. and its products; the Respondent’s Website contains links to Third Party Websites where third party’s products that directly compete with Autodesk’s products are advertised; and the Domain Name seeks to take advantage of users looking for Autodesk, Inc.’s official website at domain name .
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; F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.,WIPO Case No. D2008-0422.
The conclusion that the Respondent cannot avail itself of the fair use doctrine is unaffected by any occasional display on Respondent’s Website of advertisements with links to websites promoting legitimate copies of Autodesk, Inc.’s products. As noted in Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415, even though that respondent’s websites offered links to the complainant’s products, they also “offer[ed] links to and advertisements for Complainant’s competitors. That does not constitute [ . . . ] fair use; rather, it appears to constitute deceptive bait and switch advertising practices.” The Respondent’s actions and omissions in connection with the Domain Name are likewise deceptive advertising tactics subjecting the Domain Name to a transfer decision. C. Registered and Used in Bad Faith
To obtain the remedy it seeks Autodesk, Inc. must satisfy paragraph 4(a)(iii) of the Policy by showing that the Respondent registered and is using the 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 a disputed domain name. The record establishes at least four distinct grounds on which the Respondent’s bad faith in registering and using the Domain Name has been conclusively proven.
“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. Stated differently, “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. This is the case with Respondent’s registration of the Domain Name decades after Autodesk, Inc. began obtaining its registered and common law rights in its well-known AUTODESK trademark and nearly a decade after Autodesk, Inc. began obtaining rights in its world-famous REVIT trademark. On the record presented it would be implausible for the Respondent to assert that it registered the Domain Name in good faith and without knowledge of Autodesk, Inc.’s rights.
The Respondent’s bad faith under paragraph 4(b)(iv) of the Policy is established because it “intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Autodesk, Inc.’s Marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. In other words, bad faith under paragraph 4(b)(iv) of the Policy “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 disputed domain name 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 third parties satisfies the bad faith criteria of paragraph 4(b)(iv) of the Policy. 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 supported its transfer decision by noting: “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.”
In this case the Respondent similarly uses a sponsorship scheme on the Respondent’s Website to promote via the Sponsored Links third-parties whose products and services directly compete with those of Autodesk. The Respondent presumably profits when users searching for Autodesk, Inc., its products, or its website attempt to go through the Domain Name but are instead automatically redirected to third-parties’ advertisements that have nothing to do with Autodesk, Inc. The Respondent thus trades off the good will of the Marks by using them, without Autodesk, Inc’s authorisation, to attract for commercial gain users to the Respondent’s Website and the Third Party Websites. The Panel determines that this is bad faith registration and use.
The Respondent cannot rebut this conclusion by attempting to disclaim a direct connection to the Sponsored Links or the advertisements on the Third Party Websites, for instance by alleging either the Registrar is solely responsible for selecting and publishing the content or that Respondent may supposedly not be financially benefiting therefrom. UDRP panels regularly reject such arguments by holding respondents ultimately responsible for content published on their websites given their ownership of the disputed domain names. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267.
UDRP panels have recognised the existence of bad faith registration and use where a disputed 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; 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 Domain Name, which is so obviously connected with the good will of Autodesk and its products whose names incorporate one or both of the Marks. Moreover, through the Domain Name the Respondent blatantly attempts to capitalise on that good will by intentionally taking advantage of consumers who are confused between the Domain Name and Autodesk, Inc.’s active domain name . The near identicalness between the Domain Name, , and the active domain name used by Autodesk, Inc. to advertise its “Autodesk Revit Architecture” software, , in tandem with the Respondent’s use of the Domain Name to advertise third-parties’ products that directly compete with those of Autodesk, Inc., can only mean that the Respondent registered and has been using the Domain Name in bad faith. This Panel holds that no other conclusion is plausible, and the Respondent’s opportunistic bad faith is therefore proven. 7. Decision
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders the Domain Name, , be transferred to the Complainant, Autodesk, Inc.
Linda Chang
Sole Panelist
Dated: January 21, 2012
* The Panel finds that the lack of response of this Registrar has been the subject of previous UDRP decisions. See for example Automobiles Peugot v. Privacy P / Domain Administrator, Domain Tech Enterprises,WIPO Case No. D2011-1002 and Onduline v. Private Registration Do,WIPO Case No. D2011-1129.
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