Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Fitzgerald LLP, United States of America.
Respondent is Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States of America / dahone suarez of Naples, Florida, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with D, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2016. On February 5, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 2016, 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 Complainant on February 10, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 16, 2016.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 10, 2016.
The Center appointed M. Scott Donahey as the sole panelist in this matter on March 18, 2016. 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
Complainant does business under the name “Autodesk” and has used the name “Autodesk” since 1983 in conjunction with the provision of licensed software and has incorporated the name into a number of software products. Kalb Declaration, paragraphs 5 and 6. In 1985 the United States Patent and Trademark Office issued its registration of the AUTODESK mark. Handler Declaration, paragraph 6 and Exhibit D; Kalb Declaration, paragraph 7A. Since that time Complainant has registered the AUTODESK mark in more than seventy-two countries around the world. Kalb Declaration, paragraphs 7B – 7F.
There are more than nine million users of AUTODESK products and Complainant has spent millions of U.S. dollars in the promotion of its products around the world. Kalb Declaration, paragraph 8. Numerous media have published articles linking the AUTODESK mark with Complainant’s products. Handler Declaration, paragraphs 7 and 8 and Exhibits E – F.
In 1989 Autodesk registered the domain name and has since used it continuously to resolve to a web site at which Complainant’s products are offered for license. Kalb Declaration, paragraph 10; Handler Declaration, paragraph 9 and Exhibit G.
Complainant has never licensed its AUTODESK mark to anyone purporting to operate under or in conjunction with the domain name.
At the time of the filing of the Complaint in this matter, Respondent was using the disputed domain name to resolve to a web site at which Complainant’s products were purportedly being offered for download at prices significantly below those charged by Complainant for its trademarked software. Kalb Declaration, paragraph 13, 14, and 15; Handler Declaration, paragraph 11 and Exhibit I. Upon the filing of the Complaint, Respondent removed such offerings and references from the web site to which the disputed domain name resolves. Handler Declaration, paragraph 15 and Exhibit M. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s registered mark, that Complainant has not authorized Respondent to use in any way Complainant’s AUTODESK mark nor to market or license any of Complainant’s products, and that Respondent has been using the disputed domain name to resolve to a web site at which Complainant’s copyrighted software products are being offered for download without Complainant’s authorization and in order to confuse Internet users as to the source of the offered software. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of the generic Top-Level Domain (“gTLD”) .com preceded by the Second-Level Domain (“SLD”) “getautodesk,” which consists of Complainant’s AUTODESK mark and the English word “get” or “acquire”. The use of a standard English word which implies that one can acquire the goods identified by the trademark which follows in a domain name is to create a domain name which is confusingly similar to the trademark to which the English word is attached. Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s AUTODESK mark. B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview, 2.0”), Section 2.1.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
Respondent has used the disputed domain name which is confusingly similar to Complainant’s AUTODESK MARK to resolve to a web site at which Complainant’s trademarked and copyrighted products are offered for sale at prices well below those charged by Complainant. Respondent has not been authorized either to use Complainant’s mark or to sell or license Complainant’s products. This is a clear violation of paragraph 4(b)(iv) of the Policy, and constitutes bad faith registration and use of the disputed domain name. Accordingly, the Panel finds that Respondent has registered and is using the disputed 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 disputed domain name, , be transferred to Complainant.
M. Scott Donahey
Sole Panelist
Date: March 24, 2016
Full & Egal Universal Law Academy