WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Private Registration (EXP)
Case No. D2011-1860
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Gallagher Woods LLP, United States.
The Respondent is Private Registration (EXP) of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <autodeskusa.com> (“the Domain Name”) is registered with Bargin Register Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 31, 2011, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the Domain Name. On November 2, 2011, November 3, 2011, and November 8, 2011 the Center transmitted by email to Bargin Register Inc. a further three requests for registrar verification in connection with the Domain Name. No response to any of the Center’s requests for registrar verification, or any subsequent communications, was received from Bargin Register Inc. Based on such information as was available (including in the public WhoIs) in light of the Registrar’s failure to reply to the Center’s multiple requests, 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on December 14, 2011. 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 an American corporation, with its principal place of business in California. For nearly three decades it has marketed computer software programs, associated user manuals, and related documentation, under the AUTODESK trademark.
The Complainant’s AUTODESK trademark has been registered on the principal register maintained by the United States Patent and Trademark Office since January 29, 1985. It is also registered in numerous other jurisdictions, including in the European Union (since July 24, 2006).
The Complainant claims common law rights in the AUTODESK trademark, saying that it has continuously used that trademark in commerce since at least February 1983. It sells licenses all over the world for its various software products marketed under the AUTODESK trademark, and it has spent millions of dollars advertising and promoting the AUTODESK trademark around the world. According to a declaration provided with the Complaint, the Complainant has distributed at least 9.3 million stand-alone copies of its “Autodesk” products, and at least an additional 8.5 million copies bundled into suites, all having the AUTODESK trademark incorporated into the product names and/or included in the product packaging.
The Complainant has never authorized the Respondent to incorporate the AUTODESK trademark into a domain name, and the Respondent is not authorized to use that mark in connection with the distribution of any Autodesk products.
The Respondent and the Domain Name
According to the publicly available WhoIs database, the Domain Name was created on October 11, 2006.
With the Complaint, the Complainant provided a declaration from one of its attorneys, Mr. Eric Handler. Mr. Handler described certain online investigations carried out by him, and attached copies of correspondence sent by his firm to the Respondent.
Mr. Handler first accessed the website at the Domain Name (“the Respondent’s website”) on August 23, 2011. He produced a printout of the Respondent’s website as it appeared on that date, and it consisted of no more than a landing page, with links to various third-party websites, including the Complainant’s website at “www.autodesk.com”. Later in the same Internet session, Mr. Handler says that he refreshed the Respondent’s website, and a number of new links appeared (in addition to some which had appeared previously). One of the new links was to a website operated by Hawk Ridge Systems, a reseller of a brand of software which competes directly with the Complainant’s products.
Clicking on a link “Autodesk AutoCAD 2007” on the Respondent’s website as it stood on August 23, 2011, Mr. Handler was taken to a similar landing page, containing links to various third-party websites. Again, one of them was the Complainant’s website. A similar result was produced when Mr. Handler clicked on a “CAD Software” link.
Mr. Handler carried out some further online investigations on October 9, 2011. On this occasion he attempted to visit the Respondent’s website, initially without success. On his first attempt, he was automatically redirected to the website “www.uniblue.com”. This website appeared to offer a PC repair and optimization service, and had no connection with the Complainant. On Mr. Handler’s second attempt, his browser was automatically redirected to the website “www.sevenfiguremastermindteam.com”. This website offered a free presentation on the subject of how the site visitor might make money through Internet network marketing. Again, it had no connection with the Complainant.
On Mr. Handler’s third attempt, his browser was automatically redirected to the website “www.ihomebusinesses.com”, a website marketing a “postcard marketing system”, again with no connection to the Complainant.
Mr. Handler’s fourth and final attempt to access the Respondent’s website on October 9, 2011 was successful: he was taken to a website which was similar in format to the Respondent’s website as it stood on August 23, 2011. There were six click-on links to third-party websites, one being a link to the Complainant’s website, and another being a link to the Hawk Ridge Systems website.
The Complainant also produced with the Complaint a declaration made by Ms. Christine Kalb, a paralegal employed by the Complainant who has responsibility for managing the Complainant’s trademarks portfolio. Ms. Kalb deposed that the Complainant is not affiliated with, and has never endorsed or sponsored, any of the various websites to which the Domain Name has resolved.
In addition to the Hawk Ridge Systems website referred to by Mr. Handler in his declaration, Ms. Kalb noted that one of the links on the Respondent’s website when Mr. Handler visited the Respondent’s website on August 23, 2011, was a link to a third-party website marketing “IronCAD” software. IronCAD software competes directly with the Complainant’s products.
Ms. Kalb also noted in her declaration that a number of the third-party websites to which links were provided on the Respondent’s website appeared to advertise “cracks”, or “keygens”, which are technologies, products, and/or devices that can be used to illegally circumvent copyright protection measures which publishers build into their software products. The “cracks”, or “key gens”, allow users to create and install unauthorized copies of the software products.
One such third-party link (which the Panel noted in the printouts from the Respondent’s website which Mr. Handler produced) was to the website “www.keygenguru.com”. The text on the Respondent’s website which accompanied this link stated: “Buy Autodesk AutoCAD 2007 for $99.95 and save $3,896 …” Ms. Kalb’s evidence was that the Complainant does not distribute any product having a suggested retail price of around USD 4000 per license at a price point that is even remotely close to USD 100 per license.
The Complainant’s representatives sent a cease and desist letter to the Respondent on May 18, 2011. The letter was sent to the administrative contact for the Domain Name as it then appeared in the publicly available WhoIs database for the Domain Name. The letter drew attention to the Complainant’s registered rights in its AUTODESK trademark, and to the Complainant’s goodwill in that trademark. The Complainant’s representatives sought the voluntary transfer of the Domain Name to the Complainant.
The Complainant’s representatives received no reply to that letter. Nor did they receive any reply to follow-up emails sent on June 1, 2011 and June 10, 2011.
5. Parties’ Contentions
The Complainant contends
1. The Domain Name is confusingly similar to the Complainant’s AUTODESK trademark. UDRP panels have routinely found that the integration into a Domain Name of a geographically descriptive element does nothing to lessen the confusing similarity between the disputed domain name and the complainant’s mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant relies on the following matters:
(i) The Complainant has never authorized the Respondent to use the AUTODESK trademark, whether in the Domain Name or otherwise.
(ii) The Respondent knew or should have known of the Complainant’s AUTODESK trademark when it registered the Domain Name. The Complainant’s trademark is world famous, having been marketed around the globe for more than a quarter of a century. The Respondent registered the Domain Name Domain several decades after the Complainant first obtained registered and common law rights in its AUTODESK trademark. Furthermore, the Respondent’s website markets third-party products in the same field as the Complainant’s products.
(iii) The Respondent’s website displays sponsored ads that blatantly hawk illegal copies of the Complainant’s software products. The sponsored advertisements on the Respondent’s website evidence the Respondent’s knowledge at all relevant times of the Complainant’s exclusive rights in its mark. Having regard to its actual or constructive knowledge of the Complainant’s exclusive rights in its AUTODESK trademark when the Respondent registered the Domain Name, the Respondent “had notice of this dispute” when it registered the Domain Name, and cannot claim any right or legitimate interest under paragraph 4(c)(i) of the Policy.
(iv) The Respondent has not used the Domain Name in connection with a bona fide offering of goods. The Respondent’s absence of bona fides is evidenced by the provision of links on the Respondent’s website to third-party websites which compete directly with the Complainant’s products, and to third-party websites offering illegal copies of the Complainant’s products. Secondly, third-party websites to which visitors to the Respondent’s website are sometimes automatically and unwittingly redirected, will have reasonably assumed that they would access a website operated by the Complainant. The Respondent presumably profits each time a link on the Respondent’s website is clicked or anything is purchased from any of the third-party websites. The Respondent’s use of the Domain Name as just described is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
(v) As a matter of law, the use of a domain name to pursue an illegal activity cannot be considered a bona fide use under the Policy (citing Prada SA v. Michael Faronston, WIPO Case No. D2006-0585).
(vi) The Respondent has never been commonly known by the Domain Name. The contact information which the Respondent specified for itself in the WhoIs database record for the Domain Name, does not mention “Autodesk”.
(vii) The Respondent cannot have any rights or legitimate interests under paragraph 4(c)(iii) of the Policy. The Respondent’s use of the Domain Name has at all times been commercial, and its intent has always been to misleadingly divert consumers looking for the Complainant and its products to the Respondent’s website or directly to the third-party websites (where the Respondent presumably profits from click-on through revenues and third-party product/service sales).
(viii) The Respondent has not been making a fair use of the Domain Name. The Domain Name suggests a direct but non-existent affiliation between the Respondent and the Complainant that, in tandem with the sponsored links on the Respondent’s website to third-party websites marketing the products of the Complainant’s competitors and directing Internet users to websites where illegal copies of the Complainant’s products are available, shows that the Respondent’s use has not been fair. The Respondent registered and uses the Domain Name for the obvious purpose of trading on the fame of the Complainant’s mark to falsely lure consumers interested in Autodesk and its products to either the Respondent’s website or to the third-party websites, where the Respondent earns click-through revenues.
3. The Respondent registered and is using the Domain Name in bad faith. The Complainant relies on the following matters:
(i) The fame of the Complainant’s AUTODESK trademark is such that it would be implausible for the Respondent to assert that it innocently registered the Domain Name in good faith and without knowledge of the Complainant’s rights in its AUTODESK trademark.
(ii) The Respondent has intentionally attempted to attract Internet visitors to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s AUTODESK trademark. That behavior constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
(iii) The Respondent has been impermissibly trading off the fame of the Complainant’s trademark, without the Complainant’s authorization, by using that trademark to attract for commercial gain Internet users to the Respondent’s website and to the various third-party websites.
(iv) The Respondent cannot disclaim responsibility for the links to third-party commercial websites (citing Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267).
(v) In this case, the Domain Name is so obviously connected with a well-known product that its very use by someone such as the Respondent who has no connection to the product suggests opportunistic bad faith (citing GoDaddy Software Inc v. Internet Masters, WIPO Case No. D2002-0570 and RapidShare AG, Christian Schmidt v. PrivacyProtector.org Domain Admin / n/a Sergey Malgov, WIPO Case No. D2010-0608).
(vi) A respondent’s use of a disputed domain name to pursue an illegal activity automatically qualifies that domain name as having been registered and used in bad faith (Prada SA, supra). In this case, the additional links accessible through the Respondent’s website blatantly offer to distribute illegal copies of the Complainant’s products.
6. Discussion and Findings
A. What the Complainant must prove under the Policy
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to: “[ . . . ] decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved the first element under paragraph 4(a) of the Policy.
It is the registered proprietor of the AUTODESK trademark in numerous jurisdictions, and that trademark is incorporated in its entirety in the Domain Name. The only addition is the geographical expression “usa” (the “.com” suffix is not taken into account in the comparison required by paragraph 4(a)(i) of the Policy).
At paragraph 1.2 of the WIPO Overview of WIPO Panel Views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the authors note that, in order to satisfy the threshold test for confusing similarity, “the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary descriptive, or negative terms [ . . . ] typically being regarded as insufficient to prevent threshold Internet user confusion“. Not only is the Complainant’s AUTODESK trademark “recognizable as such” within the Domain Name in this case, it is the dominant part of the Domain Name. That is not affected by the addition of the geographical qualifier “usa”, which would be taken by many Internet users as an indicator that they were likely to find at the Domain Name a website operated by the Complainant, primarily for its United States market.
Having regard to the foregoing matters, the Panel is satisfied that the Domain Name is confusingly similar to the Complainant’s AUTODESK trademark.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to the respondent of the dispute, use by the respondent 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) Where 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 trade mark or service mark rights; or
(iii) Where the respondent is making a legitimate non-commercial 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.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of WIPO Overview, 2.0, as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [ . . . ] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case the Domain Name is confusingly similar to the Complainant’s AUTODESK trademark, and the Complainant has not authorized the Respondent to use that trademark, whether in a Domain Name or otherwise. There is nothing in the evidence which raises the possibility of defense under paragraph 4(c)(ii) of the Policy, and the apparently commercial nature of the Respondent’s website (the Respondent has presumably not been providing links to third-party commercial websites without reward) precludes any possibility of a “legitimate non-commercial use” defense under paragraph 4(c)(iii) of the Policy.
The foregoing circumstances provide sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to the Respondent. As the Respondent has not filed any Response, that burden has not been discharged, and the Complainant’s prima facie proof is sufficient for it to make out its case on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(iv) by using the disputed domain name, the respondent having intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other on-line 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.
The Panel accepts that the Complainant’s AUTODESK trademark is well-known around the world, and the references to the Complainant’s name and trademark on the Respondent’s website itself leave no room for doubt that the Respondent was well aware of the Complainant and its products at the time it registered the Domain Name.
In the absence of a Response, the Panel concludes that this is a case of opportunistic bad faith, where the Respondent has sought to trade on the Complainant’s goodwill in its well-known mark, for the purpose of attracting to the Respondent’s website (and to other third-party websites to which the Domain Name has resolved from time to time) Internet users expecting to find a website operated or in some way affiliated with the Complainant. In the Panel’s view, the circumstances fall squarely within paragraph 4(b)(iv) of the Policy quoted above: by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s AUTODESK trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. (The Panel infers that the Respondent has been using the Domain Name for commercial gain – the numerous links on the Respondent’s website are to third-party commercial websites, and there would be little point in the Respondent providing those links if he were not receiving the usual form of remuneration (pay-per-click or similar revenue) for so doing.)
The Panel’s overall impression of bad faith is strengthened by a number of additional matters. First, a number of links provided by the Respondent on the Respondent’s website are to websites marketing either products which compete with the Complainant’s products, or unauthorized products enabling purchasers to acquire the Complainant’s software unlawfully, and at a fraction of its normal price. Secondly, the Panel notes that the contact information provided by the Respondent, according to the publicly available WhoIs database, for the Domain Name have been inadequate (to describe them charitably). The Respondent appears to have been using a privacy shield service offered by the Registrar, and the only physical address provided was a Post Office Box in Grand Cayman accompanied by the advice “Note – all registered mail and couriers not accepted”. Not surprisingly, none of the Center’s attempts to communicate with the Respondent appear to have been successful, and the obvious inference is that the Respondent has deliberately sought to avoid contact of that kind. Thirdly, the Panel notes that, in the DomainTools WhoIs record for the Domain Name which Mr. Handler attached to his declaration, a note appeared advising that the Domain Name was for sale. That may not be a significant matter on its own, but put together with the other factors just described, it reinforces the Panel’s clear view that the Domain Name has been registered and used by the Respondent for the bad faith purpose described at paragraph 4(b)(iv) of the Policy.
A final matter relates to the failure of the responsible Registrar to respond to any of the Center’s verification requests. The operation of the UDRP is dependent upon Registrars co-operating with dispute resolution service providers, and acting on panel decisions in accordance with the Policy and the Rules, and it is concerning in this case that the Registrar has apparently seen fit to ignore the Center’s requests. It is also concerning that this is not the first case in which such conduct by this particular Registrar has been the subject of panel comment. See, e.g., Onduline v. Private Registration Do, WIPO Case No. D2011-1129 and Petroleo Brasileiro S.A - PETROBRAS v. Private Registration, WIPO Case No. D2011-1250, and panel comments therein. In that light, the Center may wish to consider whether the present decision is one which might also be appropriate to draw to ICANN’s attention, as the relevant accrediting agency, for it’s information and such action vis-à-vis the responsible Registrar’s conduct as may be considered appropriate.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <autodeskusa.com> be transferred to the Complainant.
Dated: December 22, 2011