The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“US”), represented by Donahue Gallagher Woods LLP, US.
The Respondent is Domain Admin, Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2013. On November 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 22, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.
The Center appointed Theda König Horowicz as the sole panelist in this matter on December 31, 2013. 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, Autodesk, Inc. is a US company founded in 1983, which manufactures and distributes software products under the trademark AUTODESK. The AUTODESK software products are licensed all over the world through a channel of partners, development partners and authorized training centers, all of which assist the Complainant’s customers.
The Complainant is the owner of several trademark registrations incorporating AUTODESK, notably:
- US Trademark registration No. 1316772, in international class 9 and US classes, 21, 23, 26, 36 and 38, of January 29, 1985
- PRC (China) Trademark Registration No. 731057, in international class 9, of February 21, 1985
- Benelux Trademark registration No. 0449012, in international classes 9, 16 and 20, of October 5, 1988
- Canadian Trademark registration No. TMA367469, for computer programs and instruction manuals used therewith sold as unit, and floppy disk storage containers, of April 6, 1990
- Community Trademark registration No. 004036687, in international classes 9, 41 and 42 of July 24, 2006.
The Complainant has also been the owner of the domain name since 1989. This domain name is linked to the Complainant’s official website where it advertises and markets its software products.
The registered AUTODESK trademark owned by the Complainant has been used since many years all over the world in connection with the Complainant’s commercial offering to the public of licensed computer software programs, associated user manuals and related documentation.
The Domain Name was registered by the Respondent on February 21, 2011.
The Domain Name is linked to a webpage consisting of sponsored links. Some of the sponsored links relate to websites of the Complainant’s competitors.
Between July and October 2012, the Complainant sent several warning letters to the Respondent asking for the voluntarily transfer of the Domain Name. No response was given to the said letters. 5. Parties’ Contentions A. Complainant
The Complainant claims to have rights in the trademark AUTODESK notably in the US, the European Union, Benelux and Canada, as well as common law rights. The Complainant alleges that the Domain Name is identical or confusingly similar to its protected trademark AUTODESK. The addition in the Domain Name of the generic term “free” does not change the overall impression that the Domain Name is connected to the Complainant. The fact that the Respondent chose the word “free” for the Domain Name prefix improperly indicates that Autodesk software products are available for free at the associated website and thus creates confusion with the Complainant’s official website “www.”.
The Complainant alleges that the Respondent has no rights or legitimate interests in the Domain Name, because (i) Autodesk has never authorized the Respondent to use the trademark AUTODESK in the Domain Name or otherwise, (ii) the Respondent knew or should have known of Autodesk’s exclusive trademark rights when it registered the Domain Name, (iii) the Respondent did not used the Domain Name in connection with a bona fide offering of goods, (iv) the Respondent has never been commonly known by the Domain Name, and (v) the Respondent’s commercial use of the Domain Name does not afford it any right or legitimate interest.
The Complainant is of the opinion that the Domain Name was registered and is used in bad faith by the Respondent because (i) the trademark AUTODESK is famous which means that the Respondent knew or should have known the trademark prior to registering the Domain Name, (ii) the Respondent has intentionally attracted visitors to its website by creating a likelihood of confusion with the Complainant’s trademark, (iii) the Respondent’s registration of a domain name so obviously connected with the Complainant proves the Respondent’s opportunistic bad faith and (iv) the Respondent’s bad faith is proven by the “for sale” notices in the public WhoIs records (Annex S to the Complaint). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is undisputed that the Complainant has rights in the trademark AUTODESK which is registered in the US and in several other countries.
The Panel accepts the Complainant’s contention that the Domain Name is confusingly similar to the Complainant’s AUTODESK trademark.
Indeed, the AUTODESK trademark is a significant and recognizable element of the Domain Name. The addition of the generic and common term “free” as well as of the generic Top-Level Domain (“gTLD”) “.com” does not distract from or change the reading of the Domain Name. As a matter of fact, the said addition is insufficient to prevent threshold Internet user confusion, and to stop considering that the Domain Name is confusingly similar to the Complainant’s trademark and business name.
The Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.” (Policy, paragraph 4(c) “.
The Panels finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Domain Name.
In particular, the Complainant has established that it has never authorized the Respondent to register and/or use the trademark AUTODESK in the Domain Name.
The evidence in the case file also clearly shows that the Respondent did not use the Domain Name in connection with a bona fide offering of goods before receiving the warning letters from the Complainant. Indeed, the Domain Name resolves to a webpage providing sponsored links some of which link to third parties’ businesses in competition with the Complainant (see Lardi Ltd v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1437; Legacy Health System v. Nijat Hassanov,WIPO Case No. D2008-1708).
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the Domain Name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110).
The Respondent has remained silent in these proceedings. The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and is using the Domain Name in bad faith.
With regard to the condition of registration in bad faith, the Panel considers it obvious that the Respondent must have known the Complainant’s trademark AUTODESK and its longstanding rights over the said trademark when it registered the Domain Name, as the Respondent linked the Domain Name containing the Complainant’s trademark AUTODESK to a parking page promoting the services of some of the Complainant’s direct competitors.
With regard to the condition of bad faith use, the Panel underlines that several UDRP decisions have considered that use of a confusingly similar domain name for a website which contains sponsored links to websites of competitors to the complainant undoubtedly constitutes use in bad faith (see MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC.,WIPO Case No. D2006-0550; Emirates v. WhoisGuard Protected,WIPO Case No. D2006-0433; Autodesk v. Private Registration (name),WIPO Case No. D2011-1986).
For the above-mentioned reasons, the Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy are fulfilled as well. 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.
Theda König Horowicz
Sole Panelist
Date: January 20, 2014
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