The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Fitzgerald LLP, United States of America.
The Respondent is Cayman Ninety Business of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Names and Registrar
The disputed domain names and are registered with R Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 5, 2015, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on September 16, 2015. 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 for some 30 years has marketed and licensed to the public worldwide, computer software programmes, associated user manuals and related documentation using the mark AUTOCAD.
The Complainant, which has its principal place of business in California, first obtained a United States Trademark registration for AUTOCAD on January 29, 1985. Since then, it has obtained registrations for that mark in 76 different countries. There are over 9 million users of the Complainant’s products worldwide. The Complainant has spent millions of dollars in advertising and promoting its products and has distributed some 9.3 million standalone copies and some 8.5 million bundled copies of its products, all incorporating the Complainant’s trademarks. It has owned the domain name since 1998, through which it conducts online sales of its products.
The Respondent has no connection with the Complainant which never authorized the Respondent to reflect the Complainant’s trademark in a domain name. Each of the disputed domain names resolved a parked website consisting entirely of sponsored links. When these links are clicked, users are directed to other webpages labelled “Sponsored Listings” which contain additional sponsored links. These lead users to third party websites selling products and services unrelated to the Complainant. Some lead to advertisements for products directly competing with the Complainant’s products.
The Complainant tried four times to contact the Respondent’s agent regarding the disputed domain names but received no response.
The Complainant presented two declarations made under penalty to support its case. They were most comprehensive and helpful to the Panel. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s trademark.
The Respondent was given no right to reflect the Complainant’s trademarks in the disputed domain names. None of the situations in paragraph 4(c) of the Policy apply
The Respondent registered and is using the disputed domain names in bad faith. It must have known of the Complainant’s worldwide reputation and the international fame of its mark. The long notoriety of the mark makes it unlikely that the Respondent would not have known of it at the date of registration of the disputed domain names.
The Respondent is causing confusion for Internet users by displaying products which compete with the Complainant’s through websites accessed by the disputed domain names. See paragraph 4(b)(iv) of the Policy. The Respondent has shown opportunistic bad faith by registering domain names obviously connected with a well-known product. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(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 respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain names are confusingly similar to the Complainant’s mark. They both incorporate the trademark in full and have the generic additions of “go” and “helper”. These additions do nothing to dilute the confusing similarity and rather enhance it.
Paragraph 4(a)(i) of the Policy is established. B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority to reflect the registered trademark in the disputed domain names.
In the absence of any claim by the Respondent that one or other of the situations set out in Paragraph 4(c) of the Policy applies to it, the lack of authority from the Complainant is sufficient. The Respondent could have filed a Response but did not do so.
Accordingly, paragraph 4(a)(ii) of the Policy is established. C. Registered and Used in Bad Faith
This is just the latest in a long line of cases where a Respondent has been guilty of “opportunistic bad faith”.
Registering domain names confusingly similar to a trademark, used worldwide to market a complainant’s goods and services plus providing links on the websites accessed by the disputed domain names to purchase goods and services of a competitor is a technique employed by many respondents in proceedings under the Policy. Panelists have had little difficulty over the years in detecting this blameworthy conduct and making appropriate orders to reduce the consequences for trademark owners.
In the present case, the disputed domain names were registered by the Respondent which are obviously connected with a universally-known product and were used by someone with no connection with the Complainant or its products.
Bad faith registration and use can therefore easily be inferred from such conduct. See, e.g., Go Daddy Software Inc v Internet Masters,WIPO Case No. D2002-0570. It can also be inferred from the obvious confusion caused to Internet users who may think that the Respondent’s websites have some connection with or authorization from the Complainant.
Accordingly, paragraph 4(a)(iii) of the Policy is established. 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.
Sir Ian Barker
Sole Panelist
Date: September 30, 2015
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