The Complainant is Autodesk, Inc., United States of America (“United States”), represented by Donahue Fitzgerald, United States.
The Respondent is Shao Juan Huang, China. 2. The Domain Names and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2020. On August 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 18, 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 August 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2020. The Center appointed Gabriela Kennedy as the sole panelist in this matter on September 29, 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 The Complainant is a multinational software design and services company that offers computer-aided design software. The Complainant has continuously used the AUTOCAD trade mark since 1983 and has distributed over 9.3 million standalone copies of its software, with over an additional 8.5 million copies bundled into suites of its products that incorporate the AUTOCAD trade mark into their names. The Complainant is the owner of numerous trade mark registrations for the AUTOCAD mark in various jurisdictions, including, inter alia, the AUTOCAD trade mark (Reg. No. 1316772) registered on January 29, 1985 in the United States, and the AUTOCAD trade mark (Reg. No. 307891) registered on May 6, 1987 in China. The Complainant also owns and operates the domain name The Respondent registered the Disputed Domain Name on February 5, 2020. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s AUTOCAD trade mark, which has been wholly incorporated into the Disputed Domain Name. The addition of the generic suffix “96” does not remove the confusing similarity between the Disputed Domain Name and the Complainant’s AUTOCAD trade mark; (b) The Complainant has never authorised or given permission to the Respondent, who is not associated with the Complainant in any way, to use its AUTOCAD trade mark. The Respondent knew or should have known of the Complainant’s rights in the AUTOCAD trade mark when the Disputed Domain Name was registered. The website to which the Disputed Domain Name resolves contains pornographic content and therefore has never been used, and has not been put into use, by the Respondent for any bona fide offering of goods or services. The Respondent was also not commonly known by the Disputed Domain Name. Therefore, the Respondent has no rights or legitimate interest in the Disputed Domain Name; and (c) The Complainant’s AUTOCAD trade mark is well-known throughout the world and their registrations predate the creation of the Disputed Domain Name. The Respondent’s registration of the AUTOCAD trade mark as a domain name is a clear indication of bad faith as the website to which the Disputed Domain Name resolves publishes pornographic content which tarnishes the Complainant’s AUTOCAD trade mark and damages the Complainant’s goodwill therein. The Disputed Domain Name is also clearly connected with the Complainant’s well-known AUTOCAD trade mark and product, and its use by the Respondent, with no connection to the Complainant or the AUTOCAD trade mark or product, suggests opportunistic bad faith. As such, the Disputed Domain Name was registered and has been used by the Respondent in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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 Panel accepts that the Complainant has rights in the AUTOCAD trade mark, based on its various trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case) may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Disputed Domain Name incorporates the Complainant’s AUTOCAD trade mark in its entirety with the addition of a generic suffix “96”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0. The mere addition of the numbers “9” and “6” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s AUTOCAD trade mark. The Panel finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s AUTOCAD trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the AUTOCAD trade mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the AUTOCAD trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue. There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services, since the Disputed Domain Name resolves to a website that contains pornographic content and a series of hyperlinks to another third party webpage (which also contains pornographic content). The Panel agrees with the Complainant that such use of the Disputed Domain Name does not constitute a bona fide offering of goods and services. There is also no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name. Further, no evidence has been provided to suggest that the Disputed Domain Name has been used in connection with any legitimate non-commercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. The Complainant’s AUTOCAD trade mark is fairly well-known. A quick Internet search conducted by the Panel shows that the top search results returned for the keyword “AUTOCAD” are the Complainant’s websites and third party websites providing information relating to the Complainant’s AUTOCAD products. The Panel accepts the Complainant’s argument that the Respondent must have been aware of the Complainant and their rights in the AUTOCAD trade mark. As such, the fact that the Disputed Domain Name incorporates the Complainant’s AUTOCAD trade mark in its entirety creates a presumption of bad faith. In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name has been registered and is being used by the Respondent in bad faith: (i) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name; (ii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainant’s AUTOCAD trade mark, and that the website to which the Disputed Domain Name resolves contains obscene content and hyperlinks to third party gambling and pornography-related websites; (iii) any use of the Disputed Domain Name would likely mislead Internet users into believing the Disputed Domain Name is associated with the Complainant, particularly given that the Disputed Domain Name is almost identical to the Complainant’s domain name (iv) the Respondent failed to respond to the Complainant’s correspondence and, after its website was taken down by the original hosting provider, took active steps to switch to another hosting provider in order to continue to make the website accessible to the public again. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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 Gabriela Kennedy
The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
(i) before any notice to him 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 was in connection with a bona fide offering of goods or services;
Sole Panelist
Date: October 13, 2020
Full & Egal Universal Law Academy