The Complainant is Autodesk, Inc., United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is wu xi si jie ruan jian you xian gong si, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2019 regarding multiple domain names, including . On April 10, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with all domain names the subject of the Complaint as originally filed. On April 11, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information which differed from the named respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 17, 2019 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 May 4, 2019 that named the Respondent and challenged the disputed domain name only.
On April 17 and May 8, 2019, the Center transmitted emails to the Parties in English and Chinese regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding in its amended Complaint and confirmed that request on May 8, 2019. The Respondent sent email communications to the Center in English on May 8 and 10, 2019 but did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on May 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2019. The Center notified the Parties of the commencement of the panel appointment process on June 7, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 14, 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 is a United States software company. One of its products is a 3D modeling and rendering program for design visualization, games, and animation, marketed as “3ds Max”. The Complainant has obtained trademark registrations for 3DS MAX in multiple jurisdictions, including Chinese trademark registration number 1678314, registered on December 7, 2001, and United States trademark registration number 2733869, registered on July 8, 2003, both specifying certain computer programs in international class 9. Those trademark registrations remain in effect.
The Respondent is a Chinese company located in the city of Wuxi. Its name can be translated as Wuxi Sijie Software Co. Ltd.
The disputed domain name was registered on September 8, 2017. It resolves to a website in Chinese that prominently displays the names and logos of a Chinese IT service provider and the Complainant and describes the Chinese IT service provider as the Complainant’s Chinese strategic partner. The website offers for sale copies of the Complainant’s 3ds Max software. Prices are displayed in CNY. The website also displays hyperlinks to the websites of competitors of the Complainant. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s 3DS MAX mark. It consists only of a generic prefix “xy” appended to the Complainant’s mark and a generic Top-Level Domain (“gTLD”) suffix.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never authorized the Respondent to incorporate its mark in the disputed domain name or to use that mark. The Complainant is not affiliated with, and has never endorsed or sponsored, the Respondent or its business or website. The Respondent’s website blatantly markets illegal copies of the Complainant’s products. No evidence suggests that the Respondent has ever been called by any name incorporating the mark or been commonly known by the mark or the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The Complainant’s mark is an invented phase with no meaning other than as a source indicator for its products. The Respondent has been using the disputed domain name to market illegal copies of the Complainant’s products, proving that the Respondent was aware of the Complainant and its trademark when it registered the disputed domain name. The Respondent has been using the disputed domain name to defraud unsuspecting consumers lured to the Respondent's website on the false belief that the same is somehow affiliated with the Complainant. B. Respondent
Prior to formal commencement of the proceeding, the Respondent sought clarification from the Center regarding the claim and provided additional email addresses for correspondence. The Respondent did not otherwise respond to the Complaint. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name contains only English language letters plus English language words that relate exclusively to Autodesk's products; Autodesk conducts its business mainly in English and would incur substantial additional expense and delay if the Complaint and supporting declarations had to be translated into Chinese; and the Respondent communicated with the Center in fluent English.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel notes that in the present proceeding the amended Complaint was filed in English. The Panel observes that the Center sent communications to the Respondent in both Chinese and English, to which the Respondent chose to reply in English, which shows that the Respondent is indeed able to communicate in English. Further, despite having received notice of the amended Complaint in Chinese and English, the Respondent has not expressed any interest in responding to the contentions in it. In these circumstances, the Panel considers that requiring the Complainant to translate the amended Complaint into Chinese would create an undue burden and delay, whereas selecting English as the language of the proceeding will not unfairly prejudice either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a formal Response in Chinese or English, but none was filed. 6.2 Substantive Issues
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in the 3DS MAX trademark.
The disputed domain name incorporates the 3DS MAX trademark, with the exception of the space between “3DS” and “MAX”, because spaces cannot form part of a domain name. The disputed domain name also includes the letters “xy” as its initial element but the trademark 3DS MAX remains clearly recognizable within it. Accordingly, the Panel does not consider that the letters “xy” dispel the confusing similarity between the disputed domain name and the Complainant’s trademark.
The only other additional element in the disputed domain name is the gTLD suffix “.com”. A gTLD suffix is generally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first circumstance above, the disputed domain name is being used in connection with a website that is falsely presented as a website affiliated with the Complainant. It offers for sale copies of the Complainant’s software and also displays hyperlinks to the websites of competitors of the Complainant. Regardless of whether the software offered for sale is pirated or not, these facts show that the Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services as envisaged by the first circumstance of paragraph 4(c) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
As regards the second circumstance above, the name of the Respondent is “wu xi si jie ruan jian you xian gong si”, which can be translated as “Wuxi Sijie Software Co. Ltd”, not “xy3dsmax”. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
As regards the third circumstance above, the disputed domain name resolves to a website that offers software for sale. That is not a legitimate noncommercial or fair use of the disputed domain name covered by the third circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because it did not file any substantive response to the Complainant’s contentions.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.”
The disputed domain name was registered in 2017, many years after the Complainant obtained its trademark registrations for 3DS MAX, including in China, where the Respondent is located. The disputed domain name incorporates the Complainant’s 3DS MAX trademark, combining it only with the letters “xy” and a gTLD suffix. The website to which the disputed domain name resolves prominently displays the Complainant’s name and logo and offers its 3ds Max products for sale. In view of these circumstances, the Panel considers it likely that the Respondent was aware of the Complainant and its 3DS MAX trademark at the time that it registered the disputed domain name and that it registered the disputed domain name in bad faith.
The Respondent uses the disputed domain name in connection with a website that is falsely presented as a website affiliated with the Complainant and that offers for sale the Complainant’s products. Given these facts and the findings at Section 6.2B, the Panel finds that the disputed domain name operates by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website or the products offered for sale on it. This use of the disputed domain name is intentional and for commercial gain as contemplated by paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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.
Matthew Kennedy
Sole Panelist
Date: July 1, 2019
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