The Complainant is Autodesk, Inc., United States of America, represented by Donahue Fitzgerald LLP, United States of America (“United States”).
The Respondent is Lee Zong Rui, Taiwan Province of China. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 12, 2021. On January 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 14, 2021, 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 February 9, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 3, 2021. The Center appointed Sok Ling Moi as the sole panelist in this matter on March 9, 2021. 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. Due to unforeseen circumstances, the Panel extended the Decision due date to April 6, 2021. 4. Factual Background The Complainant is an American multinational software corporation that makes software products and services for the architecture, engineering, construction, manufacturing, media, education, and entertainment industries. The Complainant has continuously used the mark AUTOCAD in commerce since 1983 and incorporates the mark into the name of some of its software products, such as the “Autodesk AUTOCAD” software. The Complainant has distributed over 9 million copies of its AUTOCAD software and spent millions of dollars to advertise and promote its software products around the world. The Complainant is the proprietor of numerous trade mark registrations in more than 70 countries worldwide for AUTOCAD, including the following: Jurisdiction Mark Registration No. Registration Date United States AUTOCAD 1316773 January 29, 1985 European Union AUTOCAD 004036745 July 17, 2006 China AUTOCAD 307895 May 6, 1987 The Complainant is also the registered proprietor of the domain name The disputed domain name The Complainant claims that the disputed domain name is confusingly similar to its trade mark. The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain name to publish a website purportedly offering for download illegal and unlicensed copies of the Complainant’s AUTOCAD software products was for the purpose of trading on the Complainant’s goodwill for financial gain. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant contends that the disputed domain name is used to create confusion and mislead Internet users into believing that the Respondent’s website is authorised by the Complainant. The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. For all of the above reasons, the Complainant requests for the transfer of the disputed domain name to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred: (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 in bad faith. On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows: A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in AUTOCAD by virtue of its use and registration of the same as a trade mark. The disputed domain name effectively incorporates the Complainant’s AUTOCAD trade mark in its entirety. The addition of the numeral “2050” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” typically does not impact on the analysis of whether the disputed domain name is identical or confusingly similar to the Complainant’s trade mark. Consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s AUTOCAD trade mark. Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy: (i) before any notice to it 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 has been commonly known by the disputed domain name, even if it 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. (See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited, Taylor Wimpey PLC v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974). The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the AUTOCAD trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “autocad”. According to the evidence submitted by the Complainant, the Respondent is using the disputed domain name to publish a website which purports to offer and distribute unlicensed copies of the Complainant’s software products, including providing links for Internet users to download a “Chinese cracked version” or an “English cracked version” of the Complainant’s AutoCAD software products. The Panel does not find such use to be bona fide use of the disputed domain name for the purposes of the Policy. The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain name. Since the Respondent has failed to respond, the prima facie case has not been rebutted. Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely: (i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or (ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed 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 the respondent’s website or location. There is no doubt that that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name, given that it has purported to offer unlicensed copies of the Complainant’s AUTOCAD software products for download. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith. The Panel determines that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade marks by diverting Internet users seeking the Complainant’s software products to its own website for financial gain. The Panel is satisfied that the Respondent’s purpose of registering the disputed domain name was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s software products to its own website for financial gain. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case. The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. Accordingly, the Complainant has satisfied the requirements of the third element under 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 names Sok Ling MOI
Sole Panelist
Date: April 1, 2021
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