ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Autodesk, Inc. v. Bilal Ahmed, All Products Case No. D2022-0799 1. The Parties 1.1 The Complainant is Autodesk, Inc., United States of America ("United States"), represented by Donahue Fitzgerald LLP, United States. 1.2 The Respondent is Bilal Ahmed, All Products, Pakistan. 2. The Domain Name and Registrar 2.1 The disputed domain name
(the "Domain Name") is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2022. At that time the publicly available WhoIs details for the Domain Name identified the "Registrant Organization" as "All Products" of "Punjab" and "Pakistan". On March 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 8, 2022, the Registrar transmitted by email to the Center its verification response disclosing more detailed registrant and contact information for Domain Name, and identifying the "Registrant Name" as "Bilal Ahmed". The Center sent an email communication to the Complainant on March 11, 2022, 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 on March 12, 2022. 3.2 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"). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 15, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 12, 2022. page 2 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 26, 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 Background 4.1 The Complainant is a United States based corporation with its principal place of business in the State of California. It creates and provides software products and services for the architecture, engineering, construction, manufacturing, media, education, and entertainment industries. 4.2 The Complainant was founded in 1982 by John Walker, who was a co-author of the first versions of the Complainant's AutoCAD computer-aided design software. The Complainant's reported income in 2021 was USD 3.79 billion. 4.3 The Complainant is the owner of registered trade marks in various jurisdictions that comprise or incorporate the term "Autodesk". They include: (i) United States registered trade mark no 1316772 for AUTODESK as a typed drawing in class 9 dated January 29, 1985. (ii) European Union registered trade mark no 004036687 for AUTODESK as a word mark in class 9, 42 and 42 dated July 24, 2006. 4.4 Since 1989, the Complainant has owned the domain name and used it as an online portal to webpages in its official website where it markets its software products. 4.5 The Complainant has also been the successful party in a number of previous proceedings under the Policy. They include: - Autodesk, Inc. v. Private Registration (name), WIPO Case No. D2011-1986; - Autodesk, Inc. v. Milo Kram, WIPO Case No. D2016-1779; - Autodesk, Inc. ("Autodesk") v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2016-2063; - Autodesk, Inc. v. Marek Jakubczak, The Blue Solutions Corp, WIPO Case No. D2015-1791; - Autodesk, Inc. v. zhang jie, WIPO Case No. D2019-1583; - Autodesk, Inc. v. Shao Juan Huang, WIPO Case No. D2020-2156. 4.5 If the WhoIs details disclosed for the Domain Name are accurate, the Respondent would appear to be an individual or business based in Pakistan. 4.6 The Domain Name was registered on September 27, 2021. It has been used following registration for a website that advertises and distributes illegal and unlicensed copies of the Complainant's software. 4.7 On November 18, 2021, the Complainant's lawyers sent a cease and desist letter to the Respondent in respect of the Domain Name and its use. The Respondent did not Respond to that letter. 4.8 As at the date of this decision the website operating from the Domain Name continues to offer downloads of the Complainant's software. page 3 5. Parties' Contentions A. Complainant 5.1 The Complainant describes its business (or the most part indirectly by means of exhibits to a declaration from the Complainant's attorney). It refers to its registered trade marks and also contends that as a result of the use of the AUTODESK mark since at least 1983 it also has common law rights in the same. 5.2 The Complainant describes the way in which the Domain Name has been used since registration. It provides evidence in the form of website screenshots in this respect that show a website offering for download the Complainant's products. According to the Complainant, many of the products made available upon the website are described as being an "English cracked version", but this is not apparent from the screenshots provided. 5.3 The Complainant contends that the Domain Name is being used by the "Respondent to trick internet users looking for information on Autodesk's software products into instead visiting the Piracy Website where Respondent advertises and distributes illegal copies of Autodesk's software products". 5.4 The Complainant maintains that the Domain Name incorporates its AUTODESK mark and that this is sufficient for a finding that the Domain Name is confusing similar to its mark. It contends that the Respondent cannot establish any right or legitimate interest in the Domain Name and that the registration and use made of the Domain Name was with knowledge of the Complainant's mark and in bad faith. B. Respondent 5.5 The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a formal Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall "draw such inferences therefrom as it considers appropriate". A. Identical or Confusingly Similar 6.4 The Complainant has satisfied the Panel that it has a number of registered trade marks, including in the United States and in the European Union, that comprise or incorporate the word "autodesk". In page 4 order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is "recognizable within the disputed domain name" (as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). 6.5 The Panel accepts that the most sensible reading of the Domain Name is as the term "autodesk" in combination with the words "products" and the ".com" Top-Level Domain ("TLD") (and, indeed, from the way in which the Domain Name has been used it is clear that the Respondent also intends it to be read this way). As a consequence, the term "autodesk", in which the Complainant has trade mark rights, is clearly recognisable in the Domain Name. The Complainant has, therefore, satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith 6.6 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and registration and use in bad faith in turn. However, in this case it is more convenient to consider those issues together. 6.7 The Panel accepts that the Domain Name was indeed registered and is being held for the purpose of supplying counterfeit copies of the Complainant's software. The Panel also accepts that Internet users looking for genuine copies of the Complainant's software may by reason of the Domain Name find themselves at that website and download those copies instead. 6.8 Why the Respondent is offering these copies and what if anything it may gain by reason of this activity is unclear. However, the offering of counterfeit software is not a bona fide offering of goods and services, and the use of the Domain Name for such a purpose provides prima facie evidence that the Respondent neither has a right or legitimate interest in the Domain Name for the purposes of the Policy (as to which also see section 2.15 of the WIPO Overview 3.0). Further, registering and using a Domain Name for such a purpose involves registration and use in bad faith. If done for commercial gain it would likely fall within the example of circumstances demonstrating bad faith set out at paragraph 4(b)(iv). If not done for commercial gain it would likely fall within the example of circumstances demonstrating bad faith set out at paragraph 4(b)(iii). But regardless of whether it strictly falls within either, both or neither of these non-excusive examples, does not matter. The registration and use of a domain name that incorporates another's trade mark to provide counterfeit or piratical version of another products in deliberate disregard of the intellectual property rights of that other party, is a clear example of registration and use in bad faith (see in this respect section 2.13 of the WIPO Overview 3.0). 6.9 In the circumstances, the Complainant has made out the requirement of paragraph 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant. /Matthew S. Harris/ Matthew S. Harris Sole Panelist Date: May 10, 2022
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