The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald, United States.
The Respondent is ICS Inc. of Grand Cayman, Cayman Islands. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2016. On October 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 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 the Complainant on October 14, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 19, 2016.
The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on November 29, 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 offers all over the world licensed copies of computer software programs, the associated user manuals, and related documentation. It works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers with their use of the Complainant’s products. Since 1983, the Complainant has distributed over 9.3 million standalone copies, and over an additional 8.5 million copies bundled into suites, of its products.
The Complainant is the owner of the following trademark registrations for AUTODESK (the “AUTODESK trademark”):
- the trademark AUTODESK with registration number 1316772, registered in the United States on January 29, 1985 for goods in International Class 9; and
- the European Union trademark AUTODESK with registration number 004036687, registered on July 24, 2006 for goods and services in International Classes 9, 41 and 42.
On August 3, 1989, the Complainant registered the domain name, and since then it has used it as a portal for its official website.
The disputed domain name was registered on December 14, 2011. It is linked to a parking website containing commercially sponsored links that contain text such as “AutoCAD Download” and “Design CAD Software.” These links redirect visitors to third party websites selling various products and services or to advertisements for third party products, such as BricsCAD software, Solidworks software, and DesignCAD software. 5. Parties’ Contentions A. Complainant
The Complainant submits that since 1983, it has continuously used the AUTODESK trademark in connection with its computer software programs, associated user manuals, and related documentation, and has incorporated the AUTODESK trademark into the names of many of its software products. The Complainant maintains a dedicated Autodesk Education Community webpage on its official website.
The Complainant submits that the disputed domain name is identical or confusingly similar to the AUTODESK trademark. It consists of three words: “autodesk,” “education,” and “community.” According to the Complainant, the Respondent chose the disputed domain name because it entirely incorporates the AUTODESK trademark and causes confusion to Internet users seeking the Autodesk Education Community webpage of the Complainant.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the exclusive owner of all rights in the AUTODESK trademark, and has never authorized the Respondent or anyone doing business as “” to incorporate the AUTODESK trademark into the disputed domain name or to use the AUTODESK trademark in the Respondent’s website at the disputed domain name. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent, its business, or the Respondent’s website. The Complainant submits that the Respondent knew or should have known the AUTODESK trademark when it registered the disputed domain name, because at that time the AUTODESK trademark had already been widely used in commerce for nearly three decades. The Respondent knowingly registered the disputed domain name consisting of the AUTODESK trademark to capture the attention of Internet users searching for the Complainant’s Autodesk Education Community, and to advertise to them third-party software products that directly compete with those of the Complainant. According to the Complainant, the Respondent has not engaged in a bona fide offering of goods or services because it has attempted to earn click-through revenues via sponsored links on the Respondent’s website that lead to advertisements for products that directly compete with the Complainant’s products.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent has used a sponsorship scheme on its website to promote third-party businesses whose products and services compete directly with those of the Complainant. According to the Complainant, the Respondent profits when users searching for the Complainant and for the official Autodesk Education Community page ,reach the disputed domain name and are redirected to advertisements of third parties that compete with the Complainant. The Respondent thus trades off the fame of the AUTODESK trademark by using it to attract for commercial gain users to the Respondent’s website and then to direct those users via sponsored links to third parties’ websites that market products directly competing with the Complainant’s products. The Complainant also contends that the Respondent’s registration of the disputed domain name that is so obviously connected with the Complainant and with the official Autodesk Education Community webpage proves the Respondent’s opportunistic bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed 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 disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the UDRP panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s failure to submit a response entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the reasonable assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the AUTODESK trademark.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) portion of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD part of the disputed domain name.
In view of the above, the relevant portion of the disputed domain name is “autodeskeducationcommunity”. This portion contains three distinguishable elements – “autodesk”, “education” and “community”. The “autodesk” element is identical to the Complainant’s distinctive AUTODESK trademark, while the “education” and “community” element are descriptive and have no distinctiveness. The combination of these three elements is likely to appear to Internet users as representing an online location related to the Complainant’s official Autodesk Education Community webpage.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the AUTODESK trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the AUTODESK trademark and has not been authorized by the Complainant to use it; that the Respondent has knowingly registered the disputed domain name consisting of the AUTODESK trademark and the “education” and “community” elements to capture the attention of Internet users searching for the Complainant’s official Autodesk Education Community webpage, and has not carried out a bona fide activity through the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
There is no evidence in the available record that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain name incorporates the well-known AUTODESK trademark of the Complainant as its distinctive element, with the addition of generic words that represent the name of the Complainant’s Autodesk Education Community service. The Respondent has linked the disputed domain name to a website that contains links to third-party websites that offer software products in competition with the Complainant. This satisfies the Panel that the Respondent must have been aware of the AUTODESK trademark when it registered the disputed domain name, and that it chose to target the AUTODESK trademark because of the likelihood that it will attract traffic to the Respondent’s website and to the sponsored links to third-party websites included in it. In the Panel’s view, in the absence of any evidence to the contrary, such conduct of the Respondent cannot give rise to rights and or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Complainant’s prima facie case has not been rebutted, and that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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 provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed in section 6.B above, the Respondent’s website at the disputed domain name contains links to third-party websites that offer software products in competition with the Complainant, and the disputed domain name is confusingly similar to the AUTOCAD trademark of the Complainant. This satisfies the Panel that the disputed domain name was registered with knowledge of the well-known AUTOCAD trademark and in view of its popularity.
In view of the above, and in the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that the Respondent has registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website and to other online locations, by creating a likelihood of confusion with the Complainant’s AUTOCAD trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
Therefore, the Panel finds that the disputed domain name has been registered and is being 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 name be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: December 16, 2016
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