The Complainant is Autodesk, Inc., United States of America, represented by Donahue Fitzgerald LLP, United States of America (“United States”).
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / han daxia, China / huang xiahua, China.
2. The Domain Names and RegistrarsThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 3, 2021 and August 12, 2021, the Registrars transmitted by email to the Center their verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 16, 2021 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 August 26, 2021.
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 of the Complaint, and the proceedings commenced on August 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on October 6, 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.
4. Factual BackgroundThe Complainant, Autodesk, Inc. is a corporation based in the United States. It is a manufacturer and distributor of software products. The Complainant has continuously used its AUTOCAD mark in connection with its commercial offerings of licensed copies of computer software programs, associated user manuals, and related documentation since 1983. The Complainant sells licenses all over the world for its various software products that incorporate the AUTOCAD mark into their names. Two of the Complainant’s software products are AutoCAD 2010 software and AutoCAD 2012 software. The Complainant has over 9,000,000 users of its products.
The Complainant owns a range of trade mark registrations for the AUTOCAD mark in different jurisdictions, including the United States Registration No.1316773 registered on January 29, 1985 in class 9 and Chinese Registration No. 307895 registered on February 9, 1987.
The Complainant is the owner of the domain name
The Respondent is See PrivacyGuardian.org / han daxia / huang xiahua.
The disputed domain names
The Complainant contends that it owns the exclusive right to use the AUTOCAD mark. The addition of a generic Top-Level Domain (“gTLD”) “.com” is irrelevant to the analysis of confusing similarity. The disputed domain names incorporate the Complainant’s AUTOCAD mark and they are confusingly similar to the Complainant’s AUTOCAD mark. “2010” and “2012” in the disputed domain names were chosen purposely by the Respondent as an express reference to two of the Complainant’s software products, namely AutoCAD 2010 software and AutoCAD 2012 software. The remaining letters “xiazai” and “z” do not dispel the connection in the public's mind between the AUTOCAD mark and the Complainant. The appendage of the suffixes to the AUTOCAD mark does not remove the confusing similarity between the subdomains and the AUTOCAD mark.
The Complainant further alleges that it has never authorized the Respondent to use the AUTOCAD mark in connection with the distribution of unauthorized copies of any of the Complainant’s software products. The Respondent knew or should have known of the Complainant’s exclusive rights in the AUTOCAD mark when registered the disputed domain names. The Respondent has never used the disputed domain name in connection with a bona fide or legitimate offering of goods or services. The Respondent has been using the disputed domain name to trick consumers looking for information on the Complainant and/or its AutoCAD software products into unwittingly visiting the Piracy Webpages where the Respondent facilitates and instructs visitors as to how to obtain and install illegal copies of several of the Complainant's software products. The Respondent has never been commonly known by the disputed domain names.
The Complainant finally asserts that the Respondent knew or should have known of the registration and use of the AUTOCAD mark prior to registering the disputed domain names. The Respondent is using the disputed domain names to distribute illegal copies of several of the Complainant’s products. The Respondent cannot argue that they have any connection to the Complainant sufficient to support any possible good faith explanation for Respondent's registration and use of the disputed domain names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Procedural Issues: Consolidation of Multiple Domain Names and Respondents The Panel notes that the present Complaint has consolidated two domain name disputes.Pursuant to Paragraphs 3(c) and 10(e) of the Rules, a complaint may relate to more than one domain name if the domain names are arguably registered by the same domain-name holder and the Panel has the power to decide a request by a party to consolidate multiple domain name disputes. The Panel has to look at whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all parties. (See section 4.11.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
In this case, the two disputed domain names are
(a) the disputed domain names were registered within a short time period (i.e., September 17, 2013 and October 8, 2013);
(b) the composition of the disputed domain names is similar, both beginning with the Complainant’s AUTOCAD mark in full followed by some numbers (i.e., “2010” and “2012”) and then English letters (i.e., “z” and “xiazai”); and
(c) the resolved websites of both disputed domain names are similar in content and layout.
The above facts lead the Panel to find that the disputed domain names are under the common control of the same registrant. Further, the Respondents have neither objected to the Complainant’s request for consolidation nor substantively responded to the Complaint. Accordingly, the Panel accepts the Complainant’s contentions and agrees to consolidate these two domain name disputes.
7. Discussion and Findings A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has adduced evidence to demonstrate their established rights in the AUTOCAD mark.
The Panel notes that the AUTOCAD mark is wholly encompassed within the disputed domain names. In cases where a domain name incorporates the entirety of a trade mark, 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. See section 1.7 of the WIPO Overview 3.0.
Moreover, the additional elements “2010xiazai” and “2012z” do not preclude a finding of confusing similarity between the AUTOCAD mark and the disputed domain names. It is accepted by previous UDRP panels that the addition to the complainant’s trade marks of words or terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not affect the finding of confusing similarity of the disputed domain name from the trade mark under the first element of the Policy. The Panel notes that the elements “2010”, “2012” and “xiazai” (which is the Chinese pinyin of the word “下载 ” meaning “download” in English) are closely related to the Complainant’s software products, therefore, do not affect the confusing similarity between the disputed domain names and the Complainant’s AUTOCAD mark. Similarly, the meaningless letter “z” does not affect the confusing similarity between the disputed domain name
Lastly, it is permissible for the Panel to ignore the gTLD, in this case “.com”, under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsIn circumstances where the Complainant possesses exclusive rights to the AUTOCAD mark, whereas the Respondent seems to have no trade mark rights, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The disputed domain names both resolve to a webpage displaying the Complainant’s AUTOCAD mark and advertising installation of copies of the Complainant’s software products. The Respondent has not provided evidence of a legitimate noncommercial or fair use of the disputed domain names or reasons to justify the choice of the term “autocad” in the disputed domain names. Further, there is no indication to show that the Respondent is commonly known by any of the disputed domain names or otherwise has rights or legitimate interests in them. In addition, the Complainant has not granted the Respondent any license or authorization to use the Complainant’s AUTOCAD mark or register the disputed domain names. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
The disputed domain names consist of the Complainant’s AUTOCAD mark in its entirety and in the circumstances, creates a risk of implied affiliation with the Complainant that prior UDRP panels have consistently found cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the trade mark owner, i.e., the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s AUTOCAD mark had been registered well before the registration of the disputed domain names. Through use and advertising, the Complainant’s AUTOCAD mark is known throughout the world for software products. Search results using the key words “autocad” on the Internet search engines direct Internet users to the Complainant and its products, which indicates that an exclusive connection between the AUTOCAD mark and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s AUTOCAD mark when registering the disputed domain names.
Section 3.1.4 of the WIPO Overview 3.0 states that the “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names incorporate the Complainant’s widely known AUTOCAD mark plus the descriptive elements “2010”, “2012” and “xiazai” (which is the Chinese pinyin of the word “下载” meaning “download” in English) that are closely related to the Complainant’s software business, thus, creating a presumption of bad faith.
The Panel notes that each of the disputed domain names resolve to a website displaying the Complainant’s AUTOCAD mark and advertising installation of copies of the Complainant’s software products. The Panel is of the view that the Respondent intentionally created a likelihood of confusion with the Complainant’s AUTOCAD mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. This demonstrates bad faith registration and use of the disputed domain names, as provided in paragraph 4(b)(iv) of the Policy.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
8. DecisionFor 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
Rachel Tan
Sole Panelist
Date: October 20, 2021