The Complainant is Autodesk, Inc. of San Rafael, California, United States of America ("United States" or "U.S."), represented by Donahue Fitzgerald, United States.
The Respondent is Marek Jakubczak, The Blue Solutions Corp of Astoria, New York, United States. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2015. On October 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 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. Informal communication from the Respondent was received on October 8, 2015 and October 12, 2015.
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 October 16, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2015. The Response was filed with the Center on November 5, 2015. The Complainant submitted a supplemental filing on November 16, 2015.
The Center appointed Michelle Brownlee as the sole panelist in this matter on November 20, 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 owns United States Trademark Registration Number 1316773, European Community Trade Mark Registration Number 4036745, and numerous other registrations in jurisdictions throughout the world for the mark AUTOCAD in connection with computer software. The Complainant's United States registration issued in 1985.
The Domain Name was registered on or about January 22, 2008. 5. Parties' Contentions A. Complainant
The Complainant has used its AUTOCAD trademark in connection with licensed computer software since 1983. The Complaint sells software licenses all over the world. The Complainant has spent millions of dollars to advertise and promote its products that bear the AUTOCAD trademark. The Complainant has distributed more than 9 million standalone copies of software bearing the mark, and another 8.5 million copies of software suites that include software bearing the mark.
The Complainant has owned the domain name since 1998. The Complainant uses the domain name as a portal that routes customers to its official company web site that is hosted at the domain name .
As of August 2011, the Respondent's web site at the Domain Name consisted of a commercial venture that acted as a marketplace for the sale of drawings made with the Complainant's AUTOCAD products and allowed users to find and contract with drafters of drawings rendered with the Complainant's AUTOCAD software. There was no disclaimer of affiliation with the Complainant on this version of the web site. Instead, the bottom of each page stated "Copyright © iA 2008".
As of May 2014, the Domain Name continued to resolve to a commercial web site which stated that it allowed users to "Buy or Sell Royalty Free AutoCad 2d drawings and 3D CAD models" and enabled users to find freelance drafters to customize drawings or models purchased on the site. At that time, the site included advertising that linked to a web page that advertised a software product that directly competes with the Complainant's products. The site still did not include a disclaimer of affiliation with the Complainant.
On June 4, 2014, the Complainant contacted the Respondent via email and asked the Respondent to transfer the Domain Name to the Complainant. The Respondent replied "As for my knowledge words 'I', 'Auto' and 'Cad' can not be a trademark and if autocad is trademarked my domain is not but . I know that my domain may be quite valuable for Autodesk and their product autoCAD – so I am willing to sell my domain to Autodesk if appropriate offer will be present". Shortly after this exchange of emails, the Respondent changed the web site to remove all content except for a statement that says "UNDER CONSTRUCTION".
The Complainant contends that the Domain Name is confusingly similar to its AUTOCAD trademark, that the Respondent has no rights to or legitimate interests in the Domain Name and that the Respondent has registered and is using the Domain Name in bad faith. B. Respondent
The Respondent states that he searched for "autocad" in United States Patent and Trademark Office and World Intellectual Property Office trademark databases, and did not find any registered trademark "IAUTOCAD". The Respondent argues that the logo on the web site on the Domain Name did not resemble the Complainant's logo for its AUTOCAD trademark.
The Respondent states that he has been a Computer-Aided Design (abbreviated "CAD")/AutoCAD drafter for over 18 years. He is the owner of The Blue Solutions Corp., a provider of online drafting services for the woodwork and metalwork industries in the U.S. and Canada since 2006.
The Respondent acknowledges that "Autocad is the name of Autodesk Inc. software that is used to produce CAD drawings". He "agree[s] with the Complainant that Autocad is well know[n] and recognizable software – in matter of fact it is the main and leading CAD software on the market for numerous . . . years. Because of such popularity Autocad drawing has become a synonym of CAD drawing".
The Respondent states that web site at the Domain Name was designed to provide an opportunity for Autocad drafters to sell their royalty-free Autocad drawings and to connect freelance Autocad drafters with clients from all over the world. The Respondent asserts that the "i" in the Domain Name suggests that you can find a person at the site who uses AutoCAD.
The Respondent argues that it is difficult to find an alternate domain name because there are few available domain names, and it is impossible to find short domain names, so he chose the available domain name with the shortest name that was related to the content of the web site.
The Respondent notes that the web site that is hosted at the Domain Name is not popular. It had very few visitors (only two users and zero clients in 2014), and because of that, the Respondent decided to temporarily suspend it to revamp it. In the time that the web site was under construction, the Respondent was developing a new idea for the web site and decided to proceed with a new web site that is a platform where amateur car designers can share their car designs with an online community in order to exchange ideas and experiences. The Respondent states that the web site name "iautocad" is used as an abbreviation of the term "I Auto – Cars Amateurs Designs".
The Respondent denies the Complainant's allegations that he acquired the Domain Name with the intention to sell it to the Complainant. The Respondent states that when he received the letter from the Complainant's lawyer, he thought it could be a scam. He replied to the Complainant's lawyer stating that he was willing to sell the Domain Name in order to see if they would reply, as a scammer would not reply. He submits that his reply did not indicate that he acquired the Domain Name with an intention to sell it. Rather, it only suggests that the Respondent was amenable to working out an amicable resolution to the Complainant's concerns.
The Respondent also denies the Complainant's assertion that the Respondent's passive holding of the Domain Name proves bad faith use. The Respondent argues that he operated a web site at the Domain Name from 2008 until 2014. The web site was under construction for about a year as he developed his new web site, which is currently in operation. The Respondent argues that six years of operation and one year of non-operation does not amount to passive holding.
The Complainant argues that he is not responsible for the advertising for another CAD software program on his web site because the ad was one that was served up by Google Adsense and he had no control over the advertising that was served up. He added the advertising banner to make the web site look more professional and did not profit from the advertising, which only received 53 clicks in total in the entire time it was posted. The Respondent states that his new, redesigned web site does not include any advertising.
The Respondent contends that the Domain Name was not registered in and is not being used in bad faith. He submits that his web site never claimed to be related to the Complainant or its AUTOCAD products, never sold any of the Complainant's products or services or competitive products or services. The Respondent stated that his web site only promoted use of AUTOCAD software worldwide.
The Respondent argues that the Complainant's actions in this matter amount to Reverse Domain Name Hijacking, and asks the Panel to recognize them as such. 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 must 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 Complainant has established that it owns rights in the AUTOCAD trademark, and that this mark is widely-known and distinctive. The addition of the prefix "i" to the Domain Name does not serve to distinguish it from the Complainant's trademark. When a widely-known mark is paired with less distinctive terms, the combination will typically be found to be confusingly similar to the mark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence showing that the Respondent is commonly known by the Domain Name. The Respondent stated that he operates a company called The Blue Solutions Corp. There is also no suggestion by the Respondent that the use of the Domain Name is a noncommercial use without intent for commercial gain. The only question, then, is whether the Respondent used the Domain Name in connection with a bona fide offering of goods or services. The Respondent acknowledges that he was aware of the Complainant's use of AUTOCAD as the name of a well-known and widely used software product. The Respondent's web site offered services related to the Complainant's software. Although the services offered on the Respondent's web site may be a legitimate business undertaking, the use of the Domain Name to attract Internet users by creating confusing similarity to the Complainant's trademark cannot under the circumstances be viewed as a bona fide offering of goods or services using the Domain Name. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has presented ample evidence of the Respondent's bad faith in this case. The Respondent admits that he was aware of the Complainant's well-known software that is sold under the name AUTOCAD. He used the confusingly similar Domain Name in connection with a web site offering services that were related to the Complainant's products and featured advertising for products that were competitive with the Complainant's products. Although the Respondent offers some explanations for his good faith in adoption and use of the Domain Name, they are not plausible. In particular, the Respondent's statement that he chose the Domain Name because of a lack of other suitable available domain names is completely implausible. With numerous generic Top-Level Domains to choose from and use of punctuation and other descriptive terms, it certainly would have been possible to choose a domain name that would have described the Respondent's services and was not confusingly similar to the Complainant's trademark.
When the Complainant contacted the Respondent, he responded by offering to sell the Domain Name. His statement that "I know that my domain may be quite valuable for Autodesk and their product autoCAD – so I am willing to sell my domain to Autodesk if appropriate offer will be present" suggests that he acquired the Domain Name primarily for the purpose of selling it the Complainant.
The Respondent took the content of his web site down after receiving the Complainant's letter, and later put up content that attempts to distinguish the site from the Complainant's trademark. The Respondent's explanations for his actions are not plausible. It appears more likely than not that the Respondent took these actions in order to avoid a finding of bad faith use and registration under the Policy. Accordingly, the Panel finds that the Respondent registered and is using the Domain Name in bad faith. 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 Domain Name, , be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Date: December 4, 2015
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