The Complainant is Autodesk, Inc., United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is Oring Ltd, Malta. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 22, 2020, 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 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent sent an email communication on June 24, 2020. On June 24, 2020, the Center sent a communication the Parties regarding possible settlement. The Complainant requested a suspension of the proceeding on June 25, 2020. The proceeding was suspended until July 25, 2020. On July 31, 2020, the Complainant sought to have the proceeding reinstituted in the absence of any settlement. Further to the Complainant’s request, the proceeding was reinstituted as of August 3, 2020. The Response due date was August 25, 2020. The Respondent did not submit a formal response. The Center notified the Parties of the commencement of the Panel appointment process on August 26, 2020. The Center appointed William A. Van Caenegem as the sole panelist in this matter on September 4, 2020. 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 On January 29, 1985, the Complainant was granted United States registration No. 1316772 for the mark AUTODESK. The Complainant has also registered the AUTODESK mark in other jurisdictions. Registration was granted to the Complainant in the European Union in 2006: Reg No. 004036687. This registration covers Malta, where the Respondent is based. The Complainant points out that it owns trademark registrations covering Autodesk in at least 72 countries. Since 1989, Autodesk has owned the The disputed domain name resolves to a website the content and layout of which mirror the content and layout of the Autodesk Fusion Connect Website. The disputed domain name was registered on March 7, 2016. 5. Parties’ Contentions A. Complainant The Complainant points out that including a complainant’s registered trademark in a disputed domain name is sufficient without anything more to establish that the latter is confusingly similar to that trademark for the purposes of the Policy. The Complainant adds that the relevant parts of the disputed domain name consist of the name of one of its software products, i.e., the words “Fusion Connect” appended to the mark AUTODESK. The Complainant contends that the only plausible conclusion is that the “Fusion Connect” phrase in the disputed domain name reinforces the connection in the public’s mind between the disputed domain name and the Complainant. The Complainant points out that UDRP panels have found repeatedly that a domain name combining the relevant trademark with a generic term is insufficient to defeat an allegation of confusing similarity. The Complainant asserts that it has never authorized the Respondent to either incorporate the mark AUTODESK into the disputed domain name or use it in connection with any commercial activity. Nor for that matter has the Complainant authorized the copying or distribution of its copyright material via the website that is accessible through the disputed domain name. It has not authorized the publication of what it points out is a near replica of the Autodesk Fusion Connect Website. The Complainant refers to this as a blatant attempt to defraud internet users into believing falsely that the Complainant supports the website to which the disputed domain name resolves or is somehow affiliated with it. Further, the Complainant says that the Respondent knew or should have known of its exclusive trademark rights when registering the disputed domain name. The Complainant says its AUTODESK mark is world famous and was used by the Complainant around the globe for decades and supported by worldwide trademark registrations owned in dozens of jurisdictions – including in Europe where the Respondent resides. The AUTODESK mark has no meaning except as Autodesk’s name and as a source indicator of the Complainant’s products, services, and events. The disputed domain name is made up entirely of one of the Complainant’s software products, and the website accessible through the disputed domain name discusses Autodesk and Autodesk Fusion Connect software. The Complainant also maintains that the Respondent’s use of the disputed domain name to infringe its copyright and engage in trademark infringement, unfair competition, and fraudulent misrepresentations, proves that the Respondent has no right or legitimate interest in the disputed domain name and no basis to utilize Policy 4(c)(i) to prove any such rights or legitimate interests therein. According to the Complainant, there is no evidence to suggest that the Respondent has ever been called by any name incorporating the AUTODESK mark or been “commonly known” by that mark or the disputed domain name. The Respondent’s registration information does not mention the AUTODESK mark. The Complainant also contends that because of the fame of its AUTODESK mark, the bad faith of the Respondent can be presumed. The Complainant adds that bad faith is apparent given (a) the Complainant’s longstanding registrations granted in the European Union where the Respondent resides; (b) given that the disputed domain name suggests an obvious affiliation with Autodesk; and (c) given that the affiliated website is entirely about Autodesk and the Autodesk Fusion Connect software. There are, according to the Complainant, many indications that the Respondent was aware of the Complainant’s trademark rights when the disputed domain name was registered. The Complainant had owned its trademark rights for decades. The AUTODESK mark is an invented word with no meaning other than as the Complainant’s name and a source indicator of Autodesk’s products, services, and events. The Complainant repeats the points made above and concludes that, in its submission, the Respondent impermissibly trades off the AUTODESK mark’s fame by using it, without the Complainant’s authorization, to confuse internet users into visiting the website where the Respondent again tries to fool those same users into concluding that the Complainant supports the Respondent’s actions in relation to the disputed domain name and affiliated website. This is quintessential bad faith registration and use under the Policy, or so the Complainant contends. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The disputed domain name is not identical to the Complainant’s AUTODESK trademark. However, the disputed domain name incorporates the Complainant’s distinctive AUTODESK trademark in an immediately recognizable manner. It also consists precisely and in its entirety of the name of one of the Complainant’s software products. Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s AUTODESK trademark. B. Rights or Legitimate Interests The Respondent was not authorized to use or incorporate the AUTODESK trademark of the Complainant in any way. There is no evidence that the Respondent is known by or legitimately uses the term “autodesk” as a name in any way. In receipt of the letter of demand of the Complainant, the Respondent maintained that it had immediately removed all content from the affiliated website. However, that in itself does not in any way establish that the Respondent has rights or legitimate interests in the disputed domain name. The Respondent did not express any claim to rights or interests in the disputed domain name in the correspondence put before the Panel. Given the distinctiveness of the AUTODESK trademark and its long use, it is difficult to imagine any legitimate use the Respondent could make of the disputed domain name without the authority of the trademark owner. That conclusion is further reinforced by the fact that the disputed domain name directly and literally refers to one of the Complainant’s products, the Autodesk Fusion software. Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complainant’s AUTODESK trademark is highly distinctive and of long standing. It is used by the Complainant in relation to its products in many jurisdictions, and benefits from trademark registrations in many countries including Malta where the Respondent resides. Given the precise reference to a specific product of the Complainant, in the disputed domain name, it is inconceivable that the Respondent was unaware of the Complainant or its exclusive rights in the AUTODESK mark, let alone any other rights it might have in “Autodesk Fusion Connect”. Irrespective of whether the Respondent removed the infringing content from the affiliated website, for a period it contained or consisted entirely of material in which the Complainant had exclusive intellectual property rights. The Respondent effectively had a mirror website under its control. The only conceivable aim of its actions was to attract consumers to its website by deceiving them into thinking it was a website operated by the Complainant. These actions are clearly in bad faith. Furthermore, removal of such content only after notice of the present proceedings casts a shadow on the Respondent’s motivations and tends to support a finding of bad faith in these circumstances. Therefore, the Panel holds that the disputed domain name was registered and used in bad faith. 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 William A. Van Caenegem
Sole Panelist
Date: September 18, 2020
Full & Egal Universal Law Academy