Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States.
Respondent is YongHoon Lee, eMedia of Seoul, Republic of Korea. 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 August 31, 2016. On September 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on September 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 4, 2016.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on October 10, 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 is a company organized under the law of the United States that is active in the software industry.
Complainant has provided evidence that it is the owner of various registered trademarks relating to the term “Autodesk”, including the following which clearly predates the registration of the disputed domain name:
- Word mark AUTODESK, United States Patent and Trademark Office (USPTO), Registration No. 1,316,772; Registration Date: January 29, 1985; Status: Active.
Complainant also owns and operates the domain name used as the portal to Complainant’s official website at “www.” promoting Complainant’s business and products.
The disputed domain name was registered on March 3, 2000. By the time of the rendering of this decision, it resolves to a generic pay-per-click (“PPC”) website at “www.” that provides for various hyperlinks to third-party’s websites.
Complainant sent pre-procedural correspondence to Respondent under the public WhoIs contact details provided for the disputed domain name on May 16, 2012, June 21, 2012, August 28, 2012 as well as on September 27, 2012 requesting the transfer of the disputed domain name, to which Respondent apparently did not reply.
Complainant requests the transfer of the disputed domain name. 5. Parties’ Contentions A. Complainant
Complainant contends that it has used the AUTODESK trademark already since 1983 in connection with Complainant’s commercial offering to the public of licensed copies of computer software programs, associated user manuals, and related documentation. Complainant claims to have over 9 million users of AUTODESK products all over the world, working with approximately 1,700 channel partners, 3,300 development partners and 2,000 authorized training centers to assist Complainant’s customers with their worldwide use of Complainant’s products. Moreover, Complainant purports to have spent millions of dollars to advertise and to promote around the world its products under the AUTODESK trademark, which meanwhile has cultivated even a sufficient secondary meaning.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s AUTODESK trademark as it consists only of a very minor misspelling thereof, that is due to the substitution of the letter “e” for the letter “i”.
Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since (1) Complainant has never authorized Respondent to use the AUTODESK trademark or to incorporate it into a domain name (2) Respondent knew or should have known of Complainant’s world-famous AUTODESK mark when registering the disputed domain name 17 years after Complainant began obtaining registrations covering the AUTODESK trademark and 11 years after Complainant registered and began using the domain name as the portal to Complainant’s official website, which is reinforced by the fact that the disputed domain name consists of a minor misspelling of the AUTODESK trademark and also by the fact that some of the sponsored links on Respondent’s website under the disputed domain name are for third-party products that directly compete with those of Complainant, (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services as it simply redirects to a website of third-party links pointing to other websites offering competing or strongly related products to those of Complainant, (4) no evidence suggests that Respondent has ever been called by any name incorporating the AUTODESK trademark or being “commonly known” thereby and (5) there is no other possible explanation as to why Respondent chose the disputed domain name than that it was done for commercial reasons and with the intent to misleadingly divert consumers.
Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) the deliberate misspelling of Complainant’s distinctive and famous AUTODESK trademark is clear evidence of typosquatting and, thus, of Respondent’s bad faith, (2) given that the AUTODESK trademark is well known, it would be impossible for Respondent to assert to have registered the disputed domain name in good faith and without knowledge of the AUTODESK trademark, particularly as the disputed domain name consists merely of a minor misspelling thereof, (3) Respondent intentionally attempted to attract visitors to the website at “www.” by creating a likelihood of confusion with the AUTODESK trademark, and (4) given the millions of copies distributed by Complainant to the public under the AUTODESK trademark and the enormous efforts and expenses that Complainant has undertaken and incurred to promote its AUTODESK trademark as a unique source identifier of its products, Respondent’s registration of the disputed domain name is obviously connected thereto and, thus, proves Respondent’s opportunistic bad faith in both registering and using the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the AUTODESK trademark in which Complainant has shown to have rights.
The disputed domain name incorporates the AUTODESK trademark in its entirety, except the
typo-misspelling arising from the letter switch “autodesk” into “autodisk” due to the substitution of the letter “e” for the letter “i”. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g.,PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). The fact that the disputed domain name includes a simple misspelling of Complainant’s AUTODESK trademark varying by just one letter switch from “e” to “i” is not at all in contrast to such finding of a confusing similarity. Typo-squatted domain names are on the contrary intended to be confusing so that Internet users, who unwillingly make common typing errors, will enter the typo-squatted domain name instead of the correctly spelled trademark (see, e.g., Intesa Sanpaolo S.p.A. v. Ni Hao/Two Stooges LLC,WIPO Case No. D2011-1640; National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini,WIPO Case No. D2002-1011).
Besides, it has become a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2), that the application of the confusing similarity test under the UDRP will typically involve a straightforward visual or oral comparison of the concerned trademark with the alphanumeric string in the disputed domain name and that the test is satisfied if the relevant trademark would generally be recognizable as such therein. Against this background, it must be found that – independent from the Panel’s findings that the disputed domain name indeed constitutes a typo-squatted version of Complainant’s AUTODESK trademark – the latter is still easily recognizable as such in the disputed domain name, which, in turn, results in a finding of confusing similarity.
Therefore, the first element under the Policy set forth by paragraph 4(a)(i) in the case at hand is fulfilled. B. Rights or Legitimate Interests
The Panel is further convinced that, on the basis of Complainant’s undisputed contentions, Respondent apparently has neither made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent makes a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized by Complainant to use its AUTODESK trademark, neither for a domain name nor in any other way. Also, there is nothing in the available record to indicate that Respondent’s name somehow corresponds with the disputed domain name.
Complainant has produced evidence that the disputed domain name resolves to generic PPC website at “www.” which, in turn, redirects Internet users to a variety of third-party websites connecting, inter alia, to products competing with those of Complainant on the software market. The Panel, therefore, concludes that the disputed domain name – irrespective of the alleged reputation of the AUTODESK trademark throughout the world – obviously alludes to Complainant’s AUTODESK trademark and its software products. Respondent is using the disputed domain name to seek “pay-per-click” revenue from those diverted Internet users who are trying to reach Complainant, but due to the confusing similarity of the disputed domain name with Complainant’s AUTODESK trademark end up at Respondent’s website at “www.”. Such use is neither noncommercial because it has the predominant purpose of generating advertising revenues, nor is it fair because Internet users by confusion are brought to a general website with information about a variety of businesses and services that are not specifically tailored to Complainant.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating the contrary (see WIPO Overview 2.0, paragraph 2.1). In the case at hand, Respondent did not reply to Complainant’s allegations, neither as they were included in the pre-procedural communication of the year 2012, nor as they are set forth in the Complaint duly notified to Respondent by the Center on September 13, 2016.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The Panel takes the view that the redirection of the disputed domain name, which is confusingly similar to Complainant’s AUTODESK trademark by means of a typical typosquatting, to a generic PPC website in order to generate “pay-per-click” revenue without Complainant’s permission to do so, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website, by creating a likelihood of confusion with Complainant’s AUTODESK trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances may be treated as evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel also takes into account that Respondent apparently provided false WhoIs information since the delivery of the written notice sent to Respondent via courier on September 13, 2016 failed because of incorrect address details. This sheds further light on Respondent’s behavior, supporting the conclusion of registration and use of the disputed domain name in bad faith.
Therefore, the Panel finds that also the third element under the Policy as set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, Complainant has satisfied all of the three requirements of paragraph 4(a) 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 name be transferred to Complainant.
Stephanie G. Hartung
Sole Panelist
Date: October 14, 2016
Full & Egal Universal Law Academy