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 James H Park of GimHae-Shi, Republic of Korea. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with DropC LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2019. On March 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 15, 2019, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on March 20, 2019.
The Center verified that the Complaint together with 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 March 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2019.
The Center appointed Nicholas Weston as the sole panelist in this matter on April 23, 2019. 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 operates a NASDAQ listed software business with revenue exceeding USD 2 billion in 2017. The Complainant holds registrations for the trademark AUTOCAD in numerous countries, which it uses to designate computer software programs, user manuals and related documentation. United States Trademark Registration No. 1,316,773, for example, shows a priority date of February 1, 1983 and was registered on January 29, 1985.
The Complainant has owned the domain name since 1998 and has from that time operated an active website as an online portal for Internet users to find information concerning its software products.
The Respondent registered the Disputed Domain Name on January 23, 2018. The Disputed Domain Name resolves to a website that contains sponsored links to third party websites containing various goods and services. 5. Parties’ Contentions A. Complainant
The Complainant cites its United States trademark registrations including No. 1,316,773 used since 1983 and approved in 1985 and numerous other registrations around the world, for the mark AUTOCAD as prima facie evidence of ownership.
The Complainant submits that the mark AUTOCAD is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name . It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the AUTOCAD trademark and that the similarity is not removed by the additional letters “MEP” or the addition of the generic Top-Level Domain (“gTLD”) “.com”. The Complainant submits that the letters “MEP” connote an industry acronym for “mechanical, engineering, and plumbing” and describes a type of design work that can be accomplished using the Complainant’s “AutoCAD® MEP software”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that offers for sale the goods and services of third parties, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and long standing prior use of the Complainant’s trademarks. The Complainant cites a number of previous UDRP decisions involving the Complainant and also submits evidence showing that the name chosen by the Respondent “is exactly the same as the name of Autodesk’s AutoCAD® MEP software”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the 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. A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark AUTOCAD in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the AUTOCAD trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark AUTOCAD; (b) followed by the letters “MEP”; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “autocadmep”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the letters “MEP”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033).
This Panel accepts the Complainant’s contention that the letters “MEP” are an acronym for “Mechanical, Engineering, Plumbing” and finds that the letter “MEP” after the Complainant’s registered trademark is an additional element that does not serve to adequately distinguish the Disputed Domain Name. The addition of a recognized acronym after the mark does little to avoid the conclusion that the Disputed Domain Name is confusingly similar to the Complainant’s AUTOCAD mark, particularly as the evidence is that the Complainant markets a version of its product as “MEP software”. This issue has also been considered in a previous UDRP panel decision involving the very same Disputed Domain Name which held on this point: “the “mep” element, as contended by the Complainant, represents an industry acronym that refers to “mechanical, engineering, and plumbing”. The combination of these two elements is likely to appear to Internet users as representing an online location related to the Complainant’s AutoCAD MEP software product.” (See Autodesk, Inc. v. Bayram Fatih Aksoy,WIPO Case No. D2016-2000).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interest in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of Panel Views on Selected URDP Questions, Third Edition “WIPO Overview 3.0, section 2.1”).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that the evidence is that it resolves to a website containing sponsored links to goods and services offered by third parties, including competitors of the Complainant, in circumstances where “AutoCAD MEP software” is the name of one of Autodesk’s software products.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. The alleged advertisement by the Respondent of “SmartCAm software (published by McKenzie River Software LLC dba SmartCAMcnc, LLC) and Vectorworks software (published by Vectorworks, Inc.),(that) both compete directly with Autodesk’s software products” is inconsistent with Respondent having rights or legitimate interests. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, the trademark AUTOCAD is such a famous mark for software that it would be inconceivable that the Respondent might have registered the mark without knowing of it (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Autodesk v. MumbaiDomains Case No. D2012-0286, supra (“given the reputation and fame of the AUTOCAD and AUTODESK trademarks”); Autodesk, Inc. v. Marek Jakubczak, The Blue Solutions Corp, WIPO Case No. D2015-1791(“The Complainant has established that it owns rights in the AUTOCAD trademark, and that this mark is widely-known and distinctive”); Autodesk, Inc. v. Cayman Ninety Business,WIPO Case No. D2015-1360(“the disputed domain names were registered by the Respondent which are obviously connected with a universally-known product”); and Autodesk, Inc. v. Bayram Fatih Aksoy, supra (“the disputed domain name was registered with knowledge of the well-known AUTOCAD trademark and in view of its popularity”)
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814).
Further, a gap of ten years between registration of a complainant’s trademark and a respondent’s registration of the disputed domain name (containing the trademark) could constitute in certain circumstances additional evidence of bad faith (see Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name thirty-five years after the Complainant first established trademark rights in the AUTOCAD mark.
On the issue of use, the evidence that the Disputed Domain Name resolves to an unauthorized copy of the Complainant’s main website is evidence of bad faith use in accordance with paragraph 4(b)(i) of the Policy.
The Respondent’s use of the Disputed Domain Name is apparently for domain monetization unconnected with any bona fide supply of goods or services by the Respondent. The business model in this case, is for the Respondent to passively collect click through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s AUTOCAD products. Exploitation of the reputation of a trademark to obtain click through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. (See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Lilly ICOS LLC v The Counsel Group LLC,WIPO Case No. D2005-0042; and L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, supra).
The Panel also notes that the Respondent advertised the Disputed Domain Name for sale at least USD 3,800, which the Panel infers is in bad faith as the sum sought is well in excess of any out of pocket costs the Respondent may have reasonably incurred (see adidas-Salomon AG v. Vincent Stipo,WIPO Case No. D2001-0372).
Moreover, the Panel has considered whether the involvement of the Respondent in several UDRP previous cases under the Policy located – all resulting in the transfer of a domain name – is sufficient to establish a “pattern of conduct” for the purpose of paragraph 4(b)(ii). The Panel finds that a “pattern” is evident having regard to the number of transfers: see Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; Centron GmbH v. Michele Dinoia,WIPO Case No. D2006-0915, Coyle Hamilton Ltd., Willis Ltd. v. James Park,WIPO Case No. D2004-0747; Primagas Energie GmbH & Co. KG v. James H Park,WIPO Case No. D2016-0047; BKS Bank AG v. James H Park, WIPO Case No. D2016-2065; Siemens AG v. James H Park,WIPO Case No. D2017-0809; Nalli Chinnasamy Chetty v. James H Park,WIPO Case No. D2017-1373; Playboy Enterprises International, Inc. v. James H Park,WIPO Case No. D2017-1744; Novartis AG v. James H Park,WIPO Case No. D2017-2355; CareFusion Corporation v. James H Park,WIPO Case No. D2018-1244; and Volvo Trademark Holding AB v. James H Park,WIPO Case No. D2018-1255. If the Respondent is a domainer undertaking bulk purchases or automated registrations, he still has a positive obligation to screen proposed registrations to avoid the registration of domain names that infringe the trade marks of others. The pattern is not the product of mere inadvertence but evidence of bad faith.
This Panel finds that the Respondent has taken the Complainant’s trademark AUTOCAD and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain and seeking to sell the Disputed Domain Name for a sum in excess of any out of pocket costs the Respondent may have reasonably incurred. This Panel regards such conduct as prima facie evidence of bad faith use in the absence of a response.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Name be transferred to the Complainant.
Nicholas Weston
Sole Panelist
Date: May 6, 2019
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