The Complainant is Autodesk of San Rafael, California, United States of America (“U.S.”), represented by Donahue Gallagher Woods LLP, U.S.
The Respondent is MumbaiDomains of Maharashtra, India. 2. The Domain Names and Registrars
The disputed domain names and are registered with eNom and
F (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2012. On February 14, 2012, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 14, 2012, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint on February 17, 2012.
The Center verified that the Complaint together with the amendment to 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 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 U.S. and owns registrations for the trademarks AUTODESK and AUTOCAD 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 and AUTOCAD marks in the U.S. and many other countries and jurisdictions throughout the world, including Canada, the European Union, the People’s Republic of 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 eighty (80) different countries and its AUTOCAD mark in at least seventy-six (76) countries around the world. It has provided evidence of its various trademark registrations. It has used the marks 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 marks into their names and/or include the marks 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 marks and/or that include the marks in product packaging. It has spent millions of U.S. dollars to advertise and promote 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 marks incorporated into their names and/or include the marks in product packaging.
The disputed domain names resolved to parked websites consisting of 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 registered on January 6, 2004, and the disputed domain name on May 11, 2004.
The Complainant attempted to contact the Respondent on November 30, 2011 and on other occasions but received no response. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to the trademarks AUTODESK and AUTOCAD. The Complainant owns both registered and common law rights in those marks around the world and has made extensive and long use of those marks on its software and other products as mentioned above.
It contends that the disputed domain names merely add the generic term “www” and the registration of domain names with insignificant modifications constitutes typo-squatting. They are nonetheless confusingly similar. The principal components of the marks are contained in the disputed domain names.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the disputed domain names. It has not granted the Respondent any license or authorization of any kind to use the trademarks. The Respondent has no prior rights or legitimate interest in the disputed domain names and the registration and use of the Complainant’s trademarks preceded the registration of the disputed domain names by many years, indeed several decades. The Respondent had therefore actual or constructive notice of the Complainant’s rights in the marks at the time the Respondent registered the disputed domain names and cannot therefore claim that it had any rights or legitimate interests therein.
The Respondent is also not using the disputed domain names in connection with a bona fide offering of goods or services. Instead the Respondent has intentionally chosen the disputed domain names 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 names and does not give rise to any legitimate interests. The Respondent has also never been commonly known by the disputed domain names. Further the Complainant contends that the Respondent’s commercial use of the marks 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 names were registered and are being used in bad faith. The Complainant contends that the Respondent must have known of the Complainant’s legal rights in the trademarks at the time of the registration. It must have been the fame of the trademarks that motivated the Respondent to register the disputed domain names, 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 marks. Further, the Respondent’s registration of the disputed domain names was so obviously connected with the Complainant and its marks 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 names:
(i) that the disputed domain names are 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 names; and
(iii) that the disputed domain names have been registered and are 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 and AUTOCAD marks. Those marks have been registered in many countries around the world and as the evidence adduced by the Complainant has demonstrated, the marks have been extensively used on the Complainant’s products and have acquired fame and reputation around the world.
The Panel accepts that the disputed domain names are confusingly similar to the Complainant’s trademarks.
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 names reproduce the marks but merely include the generic letters “www” before the marks without a period. The marks are however instantly recognizable as the dominant or principal component of the disputed domain names. The Panel accepts the evidence of the Complainant that the marks have acquired widespread fame and reputation around the world and have also acquired sufficient secondary meaning as source identifiers of the Complainant’s marks.
The addition of the generic letters “www” does not prevent the disputed domain names from being regarded as confusingly similar to the marks. That addition of those letters would constitute insignificant modifications of the marks and would not prevent a finding of confusing similarity. Indeed, panels have found that domain names that combine generic terms with the AUTOCAD and AUTODESK marks to be confusingly similar to the marks: Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426; Autodesk, Inc. v. Private Registration (EXP), WIPO Case No. D2011-1860. 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 websites associated with the disputed domain names, as the Complainant contends.
Neither would the presence of the TLD “.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 names are confusingly similar to the Complainant’s trademarks 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 trademarks. 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 names incorporating the Complainant’s mark.
The registration of the disputed domain names was long after the Complainant had registered and used its trademarks, indeed by several decades. The evidence is that the disputed domain name was registered on January 6, 2004, and the disputed domain name on May 11, 2004, which were long after the Complainant began doing business around the world some three decades ago and had its trademarks registered around the world. The undisputed evidence is that the Complainant began using its trademarks 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 marks at the time the Respondent registered the disputed domain names and that it is therefore very unlikely that the Respondent could any rights or legitimate interests therein.
In the Panel’s view, the Respondent has intentionally chosen the domain names based on well-known registered trademarks in order to generate traffic to its websites. The use of the websites to obtain revenue from such links is not a bona fide use of the disputed domain names. 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 names or that the disputed domain names are in any 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 names. 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 names.
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 names.
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 names have been registered and used in bad faith.
The Complainant submits that the Respondent registered and is using the disputed domain names 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 names were registered well after the Complainant’s marks were in use and became well-known. The Panel finds that the Respondent either knew or must have known about the Complainant’s marks and business when registering the disputed domain names. It is highly improbable that given the reputation and fame of the AUTOCAD and AUTODESK trademarks, the Respondent was unaware of them at the time of the registration of the disputed domain names. The Panel finds that in this case the registration of the well-known trade marks as part of domain names is a clear indication of bad faith in itself.
The Respondent’s choice of the disputed domain names which incorporate the Complainant’s marks 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 marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites.
The addition of the letters “www” to the marks at the beginning of the disputed domain names is also 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, Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; 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 names were registered and are 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 names, and , be transferred to the Complainant.
Richard Tan
Sole Panelist
Dated: March 29, 2012
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