The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald LLP of United States.
The Respondent is YingWangXinXiKeJiYouXianGong xuan, YingWangXinXiKeJi CO.LTD. of Zhuhai, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain names and are registered with T, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2016. On November 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 22, 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.
On November 22, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 22, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 December 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2016.
The Center appointed Francine Tan as the sole panelist in this matter on January 6, 2017. 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 the registered proprietor of the AUTODESK trade mark in the United States and in many other jurisdictions. The AUTODESK trade mark has been used since 1983 in conenction with its commercial offering to the public of licensed copies of computer software programs. The trade mark was registered on January 29, 1985 in the United States (Registration No. 1316772). The trade mark is also registered in China (Registration No. 307891) where the Respondent is located.
There are over 9 million users of the Complainant’s AUTODESK products. The Complainant has distributed over 9.3 million standalone copies of its AUTODESK products. It has spent millions of dollars in advertisements and promotional efforts in relation to products that incorporate the AUTODESK trade mark.
The domain name was registered by the Complainant in 1989 which resolves to the Complainant’s website.
The disputed domain names were registered on March 8, 2012.
The disputed domain names each resolve to landing pages that contain sponsored links with no other content. The said landing pages lead to other pages of sponsored links that lead to third-party advertisements, some of which are in relation to software products which directly compete with the Complainant’s software products.
The Complainant tried on three occasions to contact the Respondent regarding the disputed domain names but received no response. 5. Parties’ Contentions A. Complainant
The disputed domain names are confusingly similar to the Complainant’s AUTODESK trade mark in which it has registered and common law rights. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant to the analysis of identity or confusing similarity under paragraph 4(a)(i) of the Policy. The first disputed domain name consists entirely of the AUTODESK trade mark preceded by the letter “i” while the second disputed domain name consists entirely of the AUTODESK trade mark preceded by the word “iPad” which is a trade mark owned by Apple Inc. In this case, the AUTODESK mark forms the dominant parts of the disputed domain names. The mark AUTODESK has a high degree of inherent distinctiveness, being an arbitrary word with no meaning. The inclusion of the letter “i” in the first disputed domain name and the use of the word “iPad” in the second disputed domain name do not detract from or contradict the connection in the public’s mind between the AUTODESK mark and the Complainant.
The Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has never authorized the Respondent to incorporate the AUTODESK trade mark into domain names, to use the AUTODESK trade mark in any of the Respondent’s websites, or to use the said mark in any other manner. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent or any other person or entity doing business as “” or “”. The Respondent knew or should have known of the Complainant’s exclusive rights in the famous AUTODESK mark when it registered the disputed domain names. The disputed domain names were registered decades after the Complainant began obtaining registrations covering the AUTODESK mark and after the Complainant registered and began using the domain name.
The Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services. The Respondent registered the disputed domain names because they incorporate the AUTODESK mark and due to user confusion, generate traffic to the Respondent’s websites and, in turn, to third-party advertisements. This enables the Respondent to commercially profit from advertisements for products that compete directly with the Complainant’s products. It is not making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain.
Further, the Respondent has never been commonly known by the disputed domain names.
Upon the evidence presented, the Complainant has shown a prima facie case that the Respondent in this regard. The Respondent cannot meet its burden to prove otherwise.
The Respondent has registered and is using the disputed domain names in bad faith. It is implausible that the Respondent registered the disputed domain names in good faith without knowledge of the Complainant’s rights in AUTODESK. The Respondent has registered the disputed domain names to intentionally attempt to attract, for commercial gain, consumers to a website containing sponsored linkes by creating a likelihood of confusion with the AUTODESK mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s opportunistic bad faith in registering and using the disputed domain names is evident. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Issue: Language of the Proceeding
Paragraph 11 of the Rules prescribes that in the absence of an agreement between the parties or unless specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement. The Registration Agreement in this case is Chinese whereas the Complainant requested that English be the language of the proceeding on the basis that the Respondent has repeatedly used the English language in connection with the Respondent’s registration and use of the disputed domain names. The incorporation of (i) the English letter “i” and (ii) the word “ipad”, and the affiliation of the English language landing pages to which the disputed domain names resolve, demonstrate that the Respondent is sufficiently well-versed in the English language such that the Respondent is capable of understanding the Complaint and related annexes in English and of responding in English.
The Complainant will incur significant additional expense and delay if forced to translate the Complaint and annexes filed into Chinese.
The Respondent did not reply to the Center on the issue of the language of the proceeding.
The Panel makes the determination in this case, pursuant to the discretion it has under paragraph 11 of the Rules, that English shall apply as the language of the proceeding. The Panel has taken into consideration the interest of ensuring that the administrative proceeding takes place “with due expedition” (paragraph 10(b) of the Rules).
The trade mark involved in this case is a widely-known English language mark. It has been combined with an English term “ipad” and a letter from the English alphabet, “i”. It is therefore, more likely than not, that the Respondent is familiar with the English language. To require the Complainant to translate the Complaint and relevant accompanying documents into Chinese would be burdensome in terms of costs and time, whereas it does not appear merited in the circumstances of this case. The Respondent has been silent throughout this proceeding. It was moreover afforded the opportunity to request that Chinese be the language of the proceeding but did not do so. The Respondent was notified by the Center in both Chinese and English of the opportunity it had to rebut the Complainant’s assertions and could have chosen to respond to the Complaint in Chinese. The Panel is therefore of the view that the Respondent would not be prejudiced by its decision on this issue.
Substantive Issues B. Identical or Confusingly Similar
The Panel finds that the Complainant has established it has rights, both by virtue of its trade mark registrations and by common law, in the mark AUTODESK. The Panel agrees that the disputed domain names are confusingly similar to the said mark. The additions of the letter “i” and the term “ipad” do not serve to remove the confusing similarity between the respective disputed domain names and the Complainant’s AUTODESK mark. The AUTODESK mark is clearly identifiable in the disputed domain names. The second disputed domain name is furthermore suggestive to consumers that the Respondent’s domain name links to a website that offers AUTODESK software appropriate for use with iPads (i.e., the products of Apple, Inc.). The addition of the “.com” gTLD, being a technical requirement of domain names, is immaterial.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Panel agrees that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The use and registration of the disputed domain names was not permitted nor authorized by the Complainant. There is also no evidence that the Respondent is commonly known by the disputed domain names. The AUTODESK trade mark has been in use for a long time by the Complainant and associated exclusively with the Complainant; and registered rights in this distinctive and unique word, “autodesk”, were secured by the Complainant decades before the disputed domain names were registered.
The AUTODESK mark is a widely-known trade mark and it is highly unlikely that the Respondent was unaware of the Complainant and its mark when it registered the disputed domain names since the disputed domain names comprise the primary word, “autodesk”.
The Panel draws a negative inference from the fact that the Respondent did not file any response in the proceeding nor respond to the Complainant’s email communications. The Respondent has not provided any evidence to justify its claim to the disputed domain names which would show that it has a legitimate interest therein.
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The disputed domain names were registered and are being used in bad faith. As stated earlier, it is not plausible that the Respondent was unaware of the Complainant and its AUTODESK mark when it registered the disputed domain names. The Respondent’s reproduction of the well-known AUTODESK trade mark in its entirety in the disputed domain names and the use thereof in relation to sponsored links which lead to advertisements of competing products of third parties proves that the Respondent was aware of the Complainant’s trade mark and its products. The disputed domain names are so obviously connected with the well-known AUTODESK trade mark that its use by the Respondent who has no connection to the trade mark suggests opportunistic bad faith. The word “autodesk” has no other apparent meaning or significance other than as the trade mark of the Complainant. It would not be easy to conceive how the Respondent would be able to deny prior knowledge of the Complainant and its AUTODESK mark and to explain credibly, that the choice of the domain names in this case was made entirely in good faith and the identity with the Complainant’s AUTODESK mark was pure coincidence.
The circumstances in this case are described in paragraph 4(b)(iv) of the Policy: the Respondent, “by using the domain name[s], [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [its] web site or location or of a product or service on [its] web site or location”. The Panel is persuaded that that is the motivation for why the Respondent registered the disputed domain names.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(iii) 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 names, and , be transferred to the Complainant.
Francine Tan
Sole Panelist
Date: January 13, 2017
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