The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is Lin Yanxiao of Guangzhou, Guandong, China. 2. The Domain Names and Registrar
The disputed domain names and are registered with eNom, Inc. (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 names. On September 2, 2016, 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 September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2016.
The Center appointed Jane Lambert as the sole panelist in this matter on September 28, 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
The Complainant is incorporated in Delaware in the United States and its principal place of business is at San Rafael in California, United States. It has offices throughout the United States subsidiaries and associate companies around the rest of the world. The Complainant and its subsidiaries and associates develop and distribute specialist applications software for use in architecture, construction, engineering, manufacturing, media and entertainment. One of its best known products is the “AutoCAD” computer assisted design package.
The Complainant has registered AUTODESK as a trade mark for various goods and services in a number of trade mark registries. By way of example, it has registered United States trade mark, with a registration date of January 29, 1985, under registration number 1,316,772, and a European Union trade mark, with a registration date of July 24, 2006, under registration number EU004036687. The latter has been registered for the following goods and services:
Class 9
Computer software, training and instructional manuals used therewith in electronic form; recorded CDs and DVDs.
Class 41
Training and instructional services in the area of computer software.
Class 42
Installation and configuration of computer software; project assessment and development services in the area of computer software and computer software application.
Very little is known of the Respondent beyond the particulars disclosed in the “WhoIs” search.
The disputed domain names were created on March 19, 2003. Both disputed domain names have been used as URLs for landing pages with click-through sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain names on the grounds that:
(i) The disputed domain names are confusingly similar to a trade mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
The trade mark upon which the Complainant relies is AUTODESK which has been registered for various goods and services in trade mark registries around the world, including the United States Patent and Trademark Office and the European Union Intellectual Property Office. The Complainant adds that it could bring an action for passing off or some equivalent cause of action to restrain the use of that mark anywhere in the world because the public and trade associate that mark in relation to software with the Complainant and none other by reason of its massive volume of licensing transactions and advertising of computer programs under that mark. The disputed domain names differ from the AUTODESK mark only by the omission of a character: the letter “o” in the case of and “s” in the case of . The Complainant refers to a number of UDRP cases in which panels have held such misspellings to be confusingly similar to the trade mark in suit.
As to the second ground, the Complainant avers that it has never licensed or authorized the Respondent to use the disputed domain names or any other name that is similar to its trade mark in the course of business or otherwise and that none of the circumstances listed in paragraph 4(c) of the Policy that might entitle a party to use the disputed domains applies to this case. For good measure, the Complainant adds that the Respondent’s commercial use of the AUTODESK mark is not protected by the fair use doctrine under United States trade mark law or otherwise.
As to the third ground, the Complainant says that the registration and use of domain names that are similar to a well-known mark such as AUTODESK is ipso facto an act of bad faith. It also relies on the Respondent’s use of the disputed domain names as URLs for landing pages with click-through links as evidence of registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Finally, the Complainant argues that the Respondent’s registration of domain names so obviously connected with the Complainant’s products proves opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that each and every one of the following elements is present:
(i) Each of the disputed domain names is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) Each disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
Paragraph 4(a)(i) of the Policy requires the Complainant to prove only that it has rights in one trade mark or service mark. The United States trade mark number 1,316,772 and the European Union trade mark number EU004036687 mentioned above satisfy that requirement.
The mark, AUTODESK, is not identical to either of the disputed domain names but it is certainly confusingly similar to both. The similarity is confusing in that a single character is omitted. It is a misspelling or typographical error that is often made and not always spotted. The Complainant has referred to UDRP cases where it has been held that a misspelling or typographical error is confusingly similar but the Panel does not consider it necessary to refer to authority for something so obvious.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests
The Panel holds that the second element is present.
The Complainant has averred that it has not licensed or authorized the Respondent to register or use the disputed domain names and has found no evidence that any of the circumstances set out in paragraph 4(c) of the Policy apply. There is no other evidence in the available record to suggest that the Respondent has rights or legitimate interests in the disputed domain names.
The Respondent had an opportunity to show that it had rights or legitimate interests in the disputed domain names but chose not to avail itself of that opportunity.
In the absence of any evidence to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in respect of either of the disputed domain names. C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy provides that for the purposes of paragraph 4(a)(iii) of the Policy the circumstances listed in that paragraph shall be evidence of the registration and use of a domain name in bad faith if found by the panel to be present.
The fourth of those circumstances is set out in paragraph 4(b)(iv) of the Policy as follows:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Respondent has used the disputed domain names as the URLs for parking pages with sponsored links or searches. A payment or entitlement to a payment is generated whenever one of those links is clicked. Such payment or entitlement to a payment amounts to “commercial gain” for the purposes of paragraph 4(b)(iv) of the Policy.
The Panel has already held the disputed domain names to be confusingly similar to the Complainant’s trade mark and that Internet users looking for the Complainant’s products or services will be attracted to the Respondent’s site by misspelling or mistyping the Complainant’s trade mark.
It follows that all the requirements of 4(b)(iv) of the Policy are satisfied and the Panel may treat that finding as evidence of registration and use in bad faith. No countervailing evidence has been offered by either Party and in the absence of such evidence the Panel finds the disputed domain names to have been registered and used 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 names and to be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: October 1, 2016
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