The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald, United States.
The Respondents are Contact Privacy Inc. Customer 0150101990 of Toronto, Ontario, Canada and Balticsea LLC of Kaliningrad, Russian Federation (“Russia”). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2018, 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 February 13, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was March 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 6, 2018.
The Center appointed Alistair Payne as the sole panelist in this matter on March 12, 2018. 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, based in California, develops and licenses software products worldwide through a substantial network of channel, development partners and authorised training centers. The Complainant owns numerous trade mark registrations for its AUTODESK mark including United States mark No. 1316772 registered on 29 January 1985. The Complainant registered its domain name , from which operates its official website, since 1989.
The disputed domain name was registered on January 9, 2011 and resolves to a parking site containing sponsored links. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name wholly incorporates the Complainant’s AUTODESK trade mark. It says that the addition of the letters “ws” appears to be a shorthand for the term “workstation”, term commonly used to describe a machine on which the Complainant’s products may be installed. As a result, says the Complainant, the addition of “ws” does nothing to dispel the overall impression that the disputed domain name is connected with the Complainant and it is therefore confusingly similar to the Complainant’s AUTODESK mark.
The Complainant submits that it has never authorised or licensed the Respondent to use its mark and is not affiliated with and has never sponsored or endorsed the Respondent. It says that the Respondent knew or should have known of the Complainant’s use of its AUTODESK mark for more than 25 years before the Respondent registered the disputed domain name. The Complainant operates all over the world and has made very wide use of its AUTODESK trade mark, which is incorporated into the name of many of its products, including certain of the product names which the Respondent is using in the text of sponsored links on the website to which the disputed domain name resolves. Further, says the Complainant, the Respondent is not commonly known by the disputed domain name and has not used it in connection with a bona fide offering of goods or services. The Complainant says that the Respondent has only used the disputed domain name in a misleading way to divert Internet users to the parked website to which the disputed domain name resolves, in order that the Respondent can earn click through revenues via sponsored links to products that compete directly with the Complainant’s products.
As far as bad faith is concerned, the Complainant says that due to the worldwide use and the fame attached to the disputed domain name, it is inconceivable that the Respondent was not aware of the Complainant’s AUTODESK mark when it registered the disputed domain name and that this is confirmed by the fact that the Respondent has incorporated other trade marks owned by the Complainant, such as AUTOCAD, into the text of the sponsored links displayed in the disputed domain name.
In terms of use, the Complainant argues that the requirements of paragraph 4 (b)(iv) of the Policy are satisfied in that the Respondent has intentionally sought to use the disputed domain name to redirect Internet users to its website at the disputed domain name, which features sponsored links that promote third party products and services that compete directly with the Complainant’s products. The Complainant claims a case of the Respondent acting opportunistically in bad faith and amounts to evidence of registration and use in bad faith under the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns various trade mark registrations for its AUTODESK mark including United States mark No. 1316772, registered on 29 January,1985. The disputed domain name wholly incorporates the AUTODESK mark and adds the abbreviation “ws”. The Complainant submits that “ws” is an abbreviation for workstation and does nothing to dispel the confusing similarity with the Complainant’s mark. The Panel finds that the dominant element of the disputed domain name is the AUTODESK mark and that the addition of the bare letters “ws” (whether considered as an abbreviation for workstation or not) does not distinguish the disputed domain name from the Complainant’s mark and the disputed domain name is therefore confusingly similar to the Complainant’s AUTODESK mark. As a result, the Complainant succeeds under the first element of the Policy. B. Rights or Legitimate Interests
The Complainant submits that it has never authorised or licensed, the Respondent to use its mark and is not affiliated with and has never sponsored or endorsed the Respondent. It says that the Respondent knew or should have known of the Complainant’s use of its AUTODESK mark, considering the Complainant’s very long and worldwide use of its mark, prior to registration of the disputed domain name. In addition, the Complainant notes that its AUTODESK trade mark is incorporated into the name of many of its products, including certain of the product names which the Respondent is using in the text of sponsored links on the website to which the disputed domain name resolves. Further, says the Complainant, the Respondent is not commonly known by the disputed domain name and has not used it in connection with a bona fide offering of goods or services.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In circumstances that the Respondent has not rebutted this case and also for the reasons set out below under part C, the Panel finds that the Complainant also succeeds under the second element of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered on January 9, 2011, many years after the registration of the Complainant’s AUTODESK mark in the United States and after it first use of the mark. The Complainant through its attorneys wrote to the Respondent on various occasions after the registration of the disputed domain name concerning its unauthorised use of the Complainant’s AUTODESK mark. However, the Complainant never received a response. Considering the evidence of the worldwide use of the Complainant’s mark and of the degree of renown attached to it as a consequence and also that the Respondent chose to register a domain name that incorporates not only the Complainant’s coined mark in its entirety, but also the abbreviation “ws” which appears to stand for “workstation” and added onto the Complainant’s mark creates a direct link with it and also considering the Respondent’s failure to respond to the Complainant’s letters, it seems to the Panel more likely than not that the Respondent was well aware of the Complainant’s AUTODESK mark when it registered the disputed domain name.
Paragraph 4(b)(iv) of the Policy deems there to be evidence of bad faith where a respondent has intentionally and for commercial gain attempted to attract Internet users to its website by creating a likelihood of confusion with a mark as to the source, sponsorship, affiliation or endorsement of the website. In this case, it is clear that the disputed domain name wholly contains the Complainant’s reputed AUTODESK mark and resolves to a parking site featuring sponsored links to products and services that compete with those provided by the Complainant. It is likely that Internet users seeking the Complainant’s website could be confused into thinking that the disputed domain name had some association with the Complainant and when clicking onto it would be redirected to the parking site with sponsored competitors links. It is more likely than not that the Respondent benefits commercially from these sponsored links and as a consequence the Panel finds that the requirements of paragraph 4(b)(iv) are fulfilled in this case. The Panel’s view in this regard is only reinforced by the Respondent’s use of a privacy service and its early failure to respond to the Complainant’s correspondence concerning the disputed domain name.
As a result, the Panel finds that the disputed domain name has been both registered and used in bad faith and that the Complainant also succeeds under the third element 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 the Complainant.
Alistair Payne
Sole Panelist
Date: March 19, 2018
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