The Complainant is Autodesk, Inc., United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is Oleg Ryabchikov, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 20, 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.
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 June 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2019.
The Center appointed Mariya Koval as the sole panelist in this matter on July 3, 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, being founded in 1982, is an American multinational software corporation that makes software services for the architecture, engineering, construction, manufacturing, media, education, and entertainment industries. The company has offices worldwide.
The Complainant acquired the rights in the INSTRUCTABLES Trademark (the “INSTRUCTABLES Trademark”) in 2012 and since then it has continuously used this Trademark. The previous owner has used the above trademark since 2005.
The Complainant has the registrations for INSTRUCTABLES Trademark in many jurisdictions, including the Russian Federation, in particular:
- International Registration for INSTRUCTABLES No. 1185289, registered on July 26, 2013, in respect of services 38, 41, 42, and 45;
- International Registration for a stylized robot design No. 1186314, registered on July 30, 2013, in respect of services 38, 41, 42, and 45;
- International Registration for a stylized robot design No. 1196789, registered on August 22, 2013, in respect of services 38, 41, 42, and 45.
The Complainant operates the domain name (registered on June 22, 2005), since its acquisition in 2012, with use of its INSTRUCTABLES Trademark. Under the domain name the Complainant hosts a commercial website where user-created do-it-yourself projects are presented. On the Complainant’s website the users post instructions to their projects, usually accompanied by visual aids, and then interact through comment sections.
The Disputed Domain Name was registered on November 5, 2015. At the date of this decision, the Disputed Domain Name resolves to an active website, which contains articles with lifehacks in the Russian language posted by Internet users. 5. Parties’ Contentions A. Complainant
The Complainant contends that it acquired rights in the INSTRUCTABLES Trademark via an assignment in 2012 from a third party that had been commercially using the mark since 2005. The Complainant has continuously used the INSTRUCTABLES Trademark in connection with commercial offering of its services to the public. In 2012 the Complainant also acquired the domain name ˂˃, under which there is the Complainant’s official Instructables website as a portal for Internet users to find information about the Complainant and the commercial services it offers to the public in connection with its INSTRUCTABLES Trademark.
The Complainant further contends that the Disputed Domain Name is identical to its INSTRUCTABLES Trademark in view of it reproducing the Complainant’s INSTRUCTABLES Trademark in its entirety.
The Complainant also alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name since it has never authorized the Respondent, nor anyone to incorporate the INSTRUCTABLES Trademark into the Disputed Domain Name, to use the INSTRUCTABLES Trademark in any website, to use the INSTRUCTABLES Trademark in any other capacity, to copy and/or publish any part of the Complainant’s official Instructables website. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent, the Respondent’s business or the Respondent’s website. Accordingly, the Respondent cannot demonstrate any legal rights to or legitimate interests in the Disputed Domain Name.
The Complainant also asserts that the Respondent knew or should have known about the Complainant’s exclusive INSTRUCTABLES Trademark rights when he registered the Disputed Domain Name since this dispute concerns a famous trademark used by the Complainant around the globe. Moreover, the INSTRUCTABLES Trademark is an invented mark with literally no meaning except as a source indicator of the Complainant’s services, the look and feel of the website under the Disputed Domain Name is the same as that of the Complainant’s official Instructables website, and the content of the Respondent’s website includes rampant and prominent postings of not only the INSTRUCTABLES Trademark but also of the Complainant’s robot design mark along with articles copied from the Complainant’s official Instructables website.
The Complainant further contends that the Respondent has never used the Disputed Domain Name in connection with a bona fide or legitimate offering of goods or services. Instead, the Respondent registered and has used the Disputed Domain Name, which consists entirely of the INSTRUCTABLES Trademark, for the purpose of misleading Internet users and generating traffic to the Respondent’s website and commercial offerings rather than to the Complainant’s nearly identical domain name, where the Respondent then profits from those visits. Moreover, third-party advertisements are appearing throughout the website under the Disputed Domain Name.
The Complainant also asserts that no evidence suggests the Respondent has ever been called by any name incorporating the INSTRUCTABLES Trademark or been commonly known by the INSTRUCTABLES Trademark or the Disputed Domain Name.
The Complainant further asserts that the Respondent’s use of the Disputed Domain Name cannot be considered as a legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the INSTRUCTABLES Trademark at issue in view of the Respondent’s purpose of registering the Disputed Domain Name and using it for a similar website. This is to misleadingly divert consumers, looking for information about the Complainant and its services, to the Respondent’s website instead, where the Respondent profits from third party advertisements; and the Respondent has been using the Disputed Domain Name and the associated content of the website under it to infringe the Complainant’s INSTRUCTABLES Trademark, such as with the Respondent’s unauthorized, prominent posting on each webpage within its website of both the INSTRUCTABLES Trademark and the robot design mark.
The Complainant argues that the Respondent registered and is using the Disputed Domain Name in bad faith. The Respondent is using the Disputed Domain Name to defraud unsuspecting Internet users lured to the Respondent’s website on the false but understandable belief that the same is somehow affiliated with the Complainant given the Disputed Domain Name differs from the Complainant’s INSTRUCTABLES Trademark and its domain name ˂˃ only by the generic Top-Level Domain (“gTLD”) “.info” and in light of the fact that the Respondent has attempted with its similar website to blatantly mimic the look, feel, and content of the Complainant’s official Instructables website. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy binds the Complainant to prove each of the following three elements to succeed:
(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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Complainant has submitted sufficient evidence of registered INSTRUCTABLES Trademark rights in different jurisdictions, including the Russian Federation. The Complainant’s trademark rights date back to 2005, while the Disputed Domain Name was registered on November 5, 2015.
The Disputed Domain Name reproduces the INSTRUCTABLES Trademark in its entirety combining it with the gTLD “.info”. As it is well accepted, the gTLD does nothing for distinguishing the Disputed Domain Name from the Complainant’s INSTRUCTABLES Trademark for the purposes of the Policy.
According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7 while each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Accordingly, the Panel concludes that the Disputed Domain Name, disregarding the gTLD “.info”, is identical to the Complainant’s INSTRUCTABLES Trademark in which the Complainant has established rights in accordance with paragraph 4(a)(i) of the Policy.
In light of the above, the Panel finds that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests
According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the Complainant, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
The Panel finds that in this case the Complainant has made out a prima facie case. The Complainant has prior rights in the INSTRUCTABLES Trademark, which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has never authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the INSTRUCTABLES Trademark.
According to the WIPO Overview 3.0, section 2.5.1 generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. In this case the Disputed Domain Name contains the Complainant’s distinctive trademark in its entirety which, in itself, obviously implies some kind of connection between the Complainant and the Respondent.
Under section 2.5 of the WIPO Overview 3.0 fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. In accordance with the evidences presented by the Complainant (Exhibit L) and the Panel’s verification, the Disputed Domain Name is being used in connection with a website, which appearance and structure create a strong impression of connection or affiliation with the Complainant. The website contains the “do-it-yourself” articles which are the same as the ones found on the Complainant’s website and hosts third-party advertisements. This also shows that the Respondent’s use of the Disputed Domain Name cannot be considered as a bona fide offering of goods or services.
There is no evidence in this case that the Respondent, being a natural person, is commonly known by the Disputed Domain Name.
Furthermore, the Respondent did not react to the Complaint and did not participate in this proceeding, accordingly, he has failed to present any evidence supporting any rights or legitimate interests in the Disputed Domain Name.
Therefore, this Panel finds that the Respondent does not have any rights or legitimate interests regarding the Disputed Domain Name and that the second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates some circumstances, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on its website or location.
The evidence presented before the Panel shows that the Complainant’s INSTRUCTABLES Trademark has considerable reputation and, accordingly, it is very unlikely that at the time of registering the Disputed Domain Name, reproducing the Complainant’s Trademark in its entirety, the Respondent could not have been unaware of the Complainant’s INSTRUCTABLES Trademark. Previous UDRP panels have concluded that bad faith is established in the case when the complainant’s trademark has been acknowledged to be well-known or in extensive use at the time of registering a domain name, see, e.g., Société des Produits Nestlé S.A. v. Sonia de Ferrero,WIPO Case No. D2016-1300. Thus, the Panel has no doubts that the Respondent acted in bad faith with full awareness of the Complainant and its rights in the INSTRUCTABLES Trademark.
The Disputed Domain Name incorporates the Complainant’s Trademark in its entirety, the appearance of the Respondent’s website copies the Complainant’s website under the domain name and the content of the Respondent’s website consists of “do-it-yourself” articles which are analogous to articles on the Complainant’s website. Moreover, the website under the Disputed Domain Name displays the Complainant’s INSTRUCTABLES Trademark and robot design mark that strengthens the impression that the website is related to or authorized by the Complainant. In this connection the Panel concludes this indicates that the Respondent registered and is using the Disputed Domain Name in bad faith by intentionally creating likelihood of confusion with the famed INSTRUCTABLES Trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, which constitutes, in its turn, registration and use of the Disputed Domain Name in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Accessing the Disputed Domain Name, the Internet users would most likely consider that it is related to or associated with the Complainant and the Complainant’s projects.
The fact that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website is supported by the Respondent’s placement on his website of third-party advertisements and the articles, which have been taken from the Complainant’s official website.
Accordingly, the Panel comes to the conclusion that the Respondent has registered and has been using the Disputed Domain Name primarily to take advantages of the Complainant’s goodwill and reputation and to disrupt the Complainant’s business.
In view of the above, the Panel finds that the Respondent clearly registered and is using the Disputed Domain Name in bad faith and respectively, the Panel concludes that the third element of the Policy has been met. 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.
Mariya Koval
Sole Panelist
Date: July 15, 2019
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