The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Gallagher Woods LLP, United States.
The Respondent is PrivacyP of Queensland, Australia / Trade Out Investments Ltd of Miranda, Caracas, Venezuela. 2. The Domain Name and Registrar
The disputed domain name is registered with Power Brand Center Corp. (the “Registrar”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 9, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2012, the Registrar transmitted by email to the Center its verification response disclosing 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 February 14, 2012 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 February 17, 2012.
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 February 17, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2012.
The Center appointed Richard Tan as the sole panelist in this matter on March 15, 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
The Complainant is a company based in the United States and owns registrations for the trademark AUTODESK in many countries around the world in connection with software products. It has continually used its trademarks in commerce since at least February 1983.
It has registered its exclusive right to use the AUTODESK mark in the United States and many other countries and jurisdictions throughout the world, including Canada, the European Union, China and India. In total, and not including the aforementioned Community Trade Mark registration collectively granted by the countries that comprise the European Union, the Complainant has obtained registrations covering its AUTODESK mark in at least seventy (70) different countries around the world. It has provided evidence of its various trademark registrations. It has used the mark in connection with its commercial offering to the public of licensed copies of computer software programs, associated user manuals, and related documentation. The AUTODESK mark is also the Complainant’s name.
It sells licenses all over the world and on every continent for its various software products that incorporate the mark into their names and/or include the mark in product packaging. There are over 9 million users of its products. It works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers with their worldwide use of its products known by names that incorporate the mark and/or that include the mark in product packaging. It has spent millions of United States dollars to advertise and promote around the world its products around the world.
It 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 the mark incorporated into their names and/or include the mark in product packaging.
The disputed domain name resolved to a parked website which included third party sponsored links which routed users to additional pages of sponsored links when clicked. Those links contained advertisements for products that directly compete with the Complainant’s products.
The disputed domain name was created on September 20, 2002.
The Complainant attempted to contact the Respondent on May 20, 2011 and on other occasions but received no response. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark AUTODESK. The Complainant owns both registered and common law rights in that mark around the world and has made extensive and long use of that mark on its software and other products as mentioned above.
It contends that the disputed domain name consists of a deliberate misspelling of the AUTODESK name or mark by its use of the word “autodesck” in the disputed domain name. The minor misspelling of a registered mark in a domain name constitutes typo-squatting. The disputed domain name is nonetheless confusingly similar to the registered trademark. The principal component of the mark is contained in the disputed domain name.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It has not granted the Respondent any license or authorization of any kind to use the trademark. The Respondent has no prior rights or legitimate interests in the disputed domain name and the registration and use of the Complainant’s trademark preceded the registration of the disputed domain name by many years, indeed several decades. The Respondent had therefore actual or constructive notice of the Complainant’s rights in the mark at the time the Respondent registered the disputed domain name and cannot therefore claim that it had any rights or legitimate interests therein.
The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain name based on the Complainant’s fame and reputation in order to generate traffic to its website that contains parking pages and sponsored links to goods and services that compete with those offered by the Complainant. The use of the website to obtain revenue from such links to take unfair monetary advantage, is not a bona fide use of the disputed domain name and does not give rise to any legitimate interests. The Respondent has also never been commonly known by the disputed domain name. Further the Complainant contends that the Respondent’s commercial use of the mark is not protected by the fair use doctrine as the use of the disputed domain names was to misleadingly divert customers looking for the Complainant’s products to the Respondent’s or third party websites where the Respondent would make a profit.
The Complainant also contends that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent must have known of the Complainant’s legal rights in the trademark at the time of the registration. It must have been the fame of the trademark that motivated the Respondent to register the disputed domain name, and that conduct constitutes opportunistic bad faith. The Respondent also intentionally attempted to attract visitors to its website by creating a likelihood of confusion with the mark. Further, the Respondent’s registration of the disputed domain name was so obviously connected with the Complainant and its mark that it showed the Respondent’s opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the disputed domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint”. Paragraph 14(b) of the Policy further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences,” from the Respondent’s failure to comply with the Rules, “as it considers appropriate”. While a panel may draw negative inferences from the respondent’s default, paragraph 4 of the Policy requires the complainant to support its assertions with actual evidence in order to succeed: see for example The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; World Wrestling Federation Entertainment, Inc. v. Michael Bosman,WIPO Case No. D1999-0001; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; and Digital Vision, Ltd. v. Advanced Chemill Systems,WIPO Case No. D2001-0827. A. Identical or Confusingly Similar
Based on the evidence adduced by the Complainant as noted above, this Panel has no hesitation in finding that the Complainant owns registered and common law rights in the AUTODESK mark. That mark has been registered in many countries around the world and as the evidence adduced by the Complainant has demonstrated, the mark has been extensively used on the Complainant’s products and has acquired fame and reputation around the world.
The Panel accepts that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel finds that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
In this Panel’s view, this threshold test is satisfied. The disputed domain name misspells the AUTODESK mark by the addition of the letter “c” before the last letter “k”. The Complainant’s mark is however recognizable as the dominant or principal component of the disputed domain name. The Panel accepts the evidence of the Complainant that the mark has acquired widespread fame and reputation around the world and has also acquired sufficient secondary meaning as source identifiers of the Complainant’s mark. It is easy to see how a minor misspelling can be a clear source of confusion. In this Panel’s view, the test of confusingly similarity is clearly satisfied. Indeed, this is a typical case of typo-squatting designed to confuse consumers looking for the Complainant’s website and products and to prompt them instead to visit the website associated with the disputed domain name, as the Complainant contends.
Neither would the presence of the Top-Level Domain “.com” be sufficient to escape a finding of substantial or confusing similarity since that is a technical requirement of registration.
In this Panel’s view, the test of confusingly similarity is clearly satisfied. This Panel accordingly finds that the disputed domain name is confusingly similar to the Complainant’s trademark in which the Complainant has rights. B. Rights or Legitimate Interests
As several UDRP panels have found, a complainant is only required to make out a prima facie case that the respondent lacks rights or legitimate interests and once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of a Response, the Panel is entitled to draw certain inferences against the Respondent that it has no rights or legitimate interests. The Panel accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant has not granted the Respondent any license or authorization of any kind to use the trademark. On the evidence, the Complainant is not in any way associated or affiliated with the Respondent nor is there any relationship between the Complainant and the Respondent that could give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s mark.
The registration of the disputed domain names was long after the Complainant had registered and used its trademark, indeed by several decades. The evidence appears to indicate that the disputed domain name was registered on September 20, 2002, which was long after the Complainant began doing business around the world some three decades ago and had its trademark registered around the world. The undisputed evidence is that the Complainant began using its trademark in commerce since at least February 1983. The Panel accepts the contentions of the Complainant that the Respondent must have had knowledge of the Complainant’s rights in the mark at the time it registered the disputed domain name and that it is therefore very unlikely that the Respondent could claim any rights or legitimate interests therein.
In the Panel’s view, that the Respondent has intentionally chosen the disputed domain name based on a well-known registered trademark in order to generate traffic to its website. The use of the website to obtain revenue from such links is not a bona fide use of the disputed domain name. The use of a mark with an intention to derive advantage from user confusion is not legitimate use and does not confer any rights in favor of the Respondent.
There is also no evidence that the Respondent is or has been commonly known by the disputed domain name or that the disputed domain name is in any other way identified with or related to any rights or legitimate interests of the Respondent.
The Respondent has not filed a Response to the Complaint. It has not demonstrated that it has any rights or legitimate interests in the disputed domain name. In the absence of a Response, the Panel is entitled to draw certain adverse inferences against the Respondent, namely, that it has no rights or legitimate interests in the disputed domain name.
The Panel accordingly accepts the arguments and evidence advanced by the Complainant that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the disputed domain name has been registered and used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The undisputed evidence establishes that the Respondent is not affiliated with the Complainant and has no license or other authorization to use the Complainant’s trademarks or a mark similar thereto.
The disputed domain name was registered well after the Complainant’s mark was in use and became well-known. The Panel finds that the Respondent either knew or must have known about the Complainant’s mark and business when registering the disputed domain name. It is highly improbable that given the reputation and fame of the AUTODESK trademark, the Respondent was unaware of it at the time of the registration of the disputed domain name. The Panel finds that in this case, the registration of the well-known trademark as part of the domain name is a clear indication of bad faith in itself.
The Respondent’s choice of the disputed domain name which incorporated the mark also leads to the conclusion that the Respondent was trying to derive unfair monetary advantage from the Complainant’s reputation by its use of the website which contained sponsored links from which revenue could be derived. That clearly demonstrates that the Respondent intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The deliberate misspelling of the Complainant’s distinctive and famous trademark is clear evidence of typosquatting as was found in decisions like National Association of Professional Baseball Leagues, Inc, d/b/a Minor League Baseball v John Zuccarini,WIPO Case No. D2002-1011, where such acts were found capable of constituting evidence of bad faith.
The Panel also notes that, as found by other UDRP panels, where a domain name is so obviously connected with a well-known product or service, its very use by someone with no connection with the product suggests opportunistic bad faith: see for example Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570 and RapidShare AG, Christian Schmidt v. PrivacyP, Domain Admin / n/a Sergey Malgov, WIPO Case No. D2010-0608.
The Respondent has not submitted any evidence to rebut the Complainant’s claims and assertions. In the absence of such evidence, and based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 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 name be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: March 29, 2012
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