The Complainant is Autodesk, Inc., United States of America (“United States”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is Chen Nan (陈男), China.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2021. On the following day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 19, 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 amendment to the Complaint in English on November 20, 2021.
On November 19, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On the following day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 in English and Chinese of the Complaint, and the proceedings commenced on November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on January 6, 2022. 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 is a software company. There are over 9 million users of its products. Since 2002, it has offered building information modelling software known as REVIT, which is available in multiple language localizations, including Chinese. The Complainant has incorporated the REVIT mark in the names of certain of its software products, such as “Autodesk Revit Architecture”. The Complainant has obtained multiple registrations of the REVIT trademark in multiple jurisdictions, including the following:
- United States trademark registration number 2565790, registered on April 30, 2002, specifying computer-aided design (“CAD”) software and other goods in class 9; and
- Chinese trademark registration number 4418919, registered on August 21, 2007, specifying goods in class 9.
The above trademark registrations remain current. The Complainant also registered the domain name
The Respondent is an individual resident in China.
The disputed domain name was registered on December 6, 2020. It formerly resolved to a website primarily in Chinese and partly in English titled “青青草 (Qing Qing Cao. Me)” (which may be translated as “Green Grass”) offering pornographic videos and displaying hyperlinks to gambling websites and mobile applications for download. At the time of this Decision, the disputed domain name does not resolve to any active website; rather, it is passively held.
On September 14, 2021, the Complainant’s representative sent a cease-and-desist letter to the Registrar.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s REVIT mark. The Complainant holds both registered and unregistered rights in that mark. The “revitam” subdomain in the disputed domain name consists only of the generic suffix “am” appended to the Complainant’s world famous REVIT mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never authorized anyone, the Respondent included, to use the Complainant’s REVIT mark in connection with any pornography content such as that displayed throughout the Respondent's website. The Complainant is not affiliated with, and has never endorsed or sponsored, the Respondent, his business, anyone doing business as “revitam” and/or “revitam.com”, or the Respondent's website.
The disputed domain name was registered and is being used in bad faith. It is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would be legitimate. The Respondent’s bad faith is established by the fame of the REVIT mark. The Respondent has used the disputed domain name in bad faith with the intention to attract, for commercial gain, users to his website which displays pornography. The Respondent’s registration of the disputed domain name, which is so obviously connected with the Complainant, proves opportunistic bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingParagraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name consists of the English word “revit” related directly to the Complainant and its products and nothing else, with no Chinese characters or words; the disputed domain name is composed entirely of the REVIT mark plus the English phrase “am”; the website to which the disputed domain name resolves displays English words and phrases; and translation of the Complaint would create significant expense and delay.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,
WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,
WIPO Case No. D2008-0293.
The Panel observes that in this proceeding the Complaint and the amendment to the Complaint were filed in English. The website to which the disputed domain name formerly resolved displayed the titles of many videos in English only, from which it is reasonable to infer that the Respondent understands that language. Further, despite the Center having sent the notification of the Complaint, the written notice of the Complaint, and an email regarding the language of the proceeding in both Chinese and English, the Respondent has not commented on the issue of language nor expressed any interest in otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint, as amended, would create an undue burden and delay, whereas accepting it as filed without translation will not cause unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.
6.2 Substantive IssuesParagraph 4(a) of the Policy provides that a complainant must prove the following elements:
(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 in bad faith.
A. Identical or Confusingly SimilarBased on the evidence submitted, the Panel finds that the Complainant has rights in the REVIT mark.
The disputed domain name wholly incorporates the REVIT mark. The disputed domain name also contains the letters “am” after the mark, but the REVIT mark remains clearly recognizable within the disputed domain name.1
The only additional element in the disputed domain name is a generic Top-Level Domain (“gTLD”) suffix “.com” but, as a mere technical requirement of domain name registration, this element may be disregarded in the comparison between the disputed domain name and the REVIT mark. See generally WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark 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 trademark or service mark at issue.
As regards the first and third circumstances set out above, the disputed domain name formerly resolved to a website offering pornographic videos and displaying hyperlinks to gambling websites and offering mobile applications for download. This use was for the commercial gain of the Respondent, if he was paid to direct traffic to the linked websites and mobile applications, or the operators of the linked websites and mobile applications, or both. Although the disputed domain name wholly incorporates the Complainant’s REVIT mark, the Complainant submits it is not affiliated with, and has never endorsed or sponsored, the Respondent, his business, anyone doing business as “revitam” and/or “revitam.com”, or the Respondent's website. Nothing in the content of the website had any apparent connection to the Complainant’s REVIT mark, nor to the operational element of the disputed domain name (“revitam”). The disputed domain name is now passively held. In view of these circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is he making a legitimate noncommercial or fair use of the disputed domain name.
As regards the second circumstance set out above, the Respondent is identified in the Registrar’s WhoIs database as “Chen Nan (陈男)”, not the disputed domain name. There is no evidence that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that prima facie case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
(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.
As regards registration, the disputed domain name was registered in 2020, many years after the registration of the Complainant’s REVIT mark, including in China, where the Respondent is resident. The disputed domain name wholly incorporates the REVIT mark and is very similar to the Complainant’s domain name
The Complainant submits that the letters “am” are used in the disputed domain name as a “generic” suffix. The Panel notes that, taken in isolation, the letters “am” form an English word (the present tense first-person singular form of the verb “to be”) and are also an abbreviation (for example, for ante meridiem meaning “before noon”) but these meanings are not apposite in the context of the disputed domain name, where the letters follow “revit”. The letters “am” are not a descriptive term (cf. Autodesk, Inc. (“Autodesk”) v. Domain Admin / Whois Privacy Corp.,
WIPO Case No. D2016-2063 regarding
WIPO Case No. D2019-1583 regarding
WIPO Case No. D2020-2156, regarding
The Panel notes that the Complainant makes available REVIT software in Chinese and that most of the top search results for “revitam” in the Baidu search engine relate to the Complainant’s REVIT mark and products, while none relate to trademarks for “Revitam” owned by third parties. 2 Further, even though the contents of the website to which the disputed domain name formerly resolved had no apparent connection to REVIT, they had no connection to trademarks for “Revitam” either. Accordingly, the Panel finds it more likely than not that the Respondent had the REVIT mark in mind when he registered the disputed domain name.
As regards use, the disputed domain name formerly resolved to a website offering pornographic videos and displaying hyperlinks to gambling websites and offering mobile applications for download. This use was for the commercial gain of the Respondent, if he was paid to direct traffic to the linked websites and mobile applications, or the operators of the linked websites and mobile applications, or both. Given the findings in Section 6.2.B above, the Panel considers that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website within the terms of paragraph 4(b)(iv) of the Policy. The current passive holding of the disputed domain name does not prevent a finding of bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
7. 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 name
Matthew Kennedy
Sole Panelist
Date: January 17, 2022
1 The Panel takes note that the operational element of the disputed domain name, read as a single element, corresponds to trademarks for “Revitam” owned by third parties, such as Biolab Sanus Farmacéutica Ltda. However, this does not remove the visual impression that the disputed domain name is also a combination of the REVIT mark and the letters “am”. The REVIT mark remains clearly recognizable within the disputed domain name.
2 The Panel notes its general powers articulated inter alia in paragraphs 10 and 12 of the Rules and has conducted basic Internet searches for “revitam” in publicly-available search engines because none was on the record and it considers such information useful to assessing the case merits and reaching a decision. See WIPO Overview 3.0, section 4.8.
3 The record does not include any consent from a third party owner of a “Revitam” mark to the initiation of this dispute by the Complainant. This order is made without prejudice to the rights of third parties in trademarks for “Revitam”.