WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Private Registration (EXP), Private Registration DO
Case No. D2011-2001
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Gallagher Woods LLP, United States of America (“the United States” or the “US”).
The Respondent is Private Registration (EXP), Private Registration DO 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 <labsautodesk.com> is registered with Bargin Register Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 15, 21, 23 and 28, 2011, the Center transmitted by email to Bargin Register Inc. requests for registrar verification in connection with the disputed domain name. The Registrar did not respond to any of these Center requests for registrar verification. Thus, the Center proceeded on the basis of the publicly-available WhoIs data.1
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 December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2011.
The Center appointed Linda Chang as the sole panelist in this matter on January 9, 2012. 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 the owner of the registered trademark AUTODESK. For nearly three decades, the Complainant has used the mark in connection with the Complainant’s licensed copies of computer software programs, associated user manuals, and related documentation. The Complainant also incorporates its trademark into the names applied to many of its software products, including without limitation at least fifty-two products registered with the United States Copyright Office in the year 2010 alone. The Complainant has used its mark in commerce continually since at least February 1983. On January 29, 1985, the United States Patent and Trademark Office (“USPTO”) granted the Complainant trademark registration number 1316772 covering the AUTODESK trademark as maintained on the USPTO’s Principal Register. This registration has since achieved incontestable status under federal law in the United States.
The Complainant has also registered its exclusive right to use the mark in other countries throughout the world. These include: (a) on July 24, 2006, the Trade Marks and Designs Registration Office of the European Union granted the Complainant Community Trade Mark registration number 004036687; (b) on October 5, 1988, the Benelux Office for Intellectual Property granted the Complainant Benelux trademark registration number 0449012; (c) on April 6, 1990, the Canadian Intellectual Property Office granted the Complainant trademark registration number TMA367469; and (d) on February 10, 1988, the State Administration for Industry and Commerce of the People’s Republic of China granted the Complainant trademark registration number 307891. In total, and not including the Community Trade Mark registration collectively granted by the countries of the European Union, the Complainant has obtained registrations covering its mark from at least eighty different countries.
The Complainant also owns common law rights in the mark. The Complainant has over 9 million users of its products. To accommodate its user base, the Complainant works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorised training centers to assist its customers with their worldwide use of its products known by names that incorporate the mark and/or that include the mark in product packaging. The Complainant has spent millions of dollars to advertise and promote its products around the world. Media coverage tying the mark to the Complainant is widespread.
The Complainant operates a webpage entitled “Autodesk // Labs_” at “www.labs.autodesk.com” (the “Autodesk // Labs_ Webpage”). The Autodesk // Labs_ Webpage provides customers with early product ideas in the early conceptual stage and to obtain feedback from customers. As stated on the “About” page of the Autodesk // Labs_ Webpage (accessible at “www.labs.autodesk.com/about”): “Autodesk Labs is home to innovative new technologies and collaborative development. Its mission is to involve […] the customer in the progress of design technology solutions. The user feedback provided to Labs is on product ideas, while […] still in an early conceptual stage.”
According to the information maintained in the WhoIs database, the Respondent in this administrative proceeding is “Private Registration (EXP), Private Registration DO.” The Respondent’s contact information as identified in the WhoIs database is: “Address: P.O. Box [ ] APO, Grand Cayman, Not Applicable, KY1-1010, KY”. The disputed domain name was registered on May 7, 2010.
5. Parties’ Contentions
The Complainant has never authorised the Respondent to incorporate the mark into the disputed domain name. The Respondent is not authorised to use the mark in connection with distributing any AUTODESK product. The Complainant is not affiliated with and has never endorsed or sponsored the Respondent’s website.
The Respondent’s website consists entirely of links under the labels “Related Searches”. These links bear various names, such as “Cad software,” “Autocad,” and “Solidworks”. When clicked, these links redirect users to pages with lists of (a) third party sponsored links under the label “Ads” each, a “Sponsored Link” (collectively, the “Sponsored Links”); and (b) other links under the label “Related Searches,” which route users to additional pages of sponsored links. When the Sponsored Links are clicked, users are automatically redirected to various third party-websites selling products and services unrelated to the Complainant and its products and services (collectively, the “Third Party Websites”).
The Sponsored Links on the Respondent’s website include advertisements for products that directly compete with the Complainant’s products. For example, one consistently displayed sponsored link states “SolidWorks 3DCAD Software” with a link to the website at “www.hawkridgesys.com”. That particular webpage advertises Hawk Ridge Systems, “#1 SolidWorks Reseller.” Solidworks’ software directly competes with the Complainant’s products whose names incorporate the mark, and Hawk Ridge Systems is a reseller of Solidworks’ licenses.
Numerous other Sponsored Links on the Respondent’s website also advertise Solidworks’ competing software. For example, another sponsored link with the label “Free SolidWorks Demos” redirects users to a webpage accessible at “www.solidworks.com/pages/tour_register/Online_Tour.html”. That website is maintained by or on behalf of Dassault Systèmes SolidWorks Corp. (hereinafter, “SolidWorks”), the manufacturer of Solidworks’ software which competes directly with the Complainant’ software products.
Another sponsored link entitled “SolidWorks 3D CAD Software” redirects users to the webpage accessible at “www.goengineer.com/?gclid=CKX9yomy5KsCFYoDQAodoT5vKw”. That website is maintained by or on behalf of GoEngineers and is used to advertise numerous training classes in Solidworks’ software. Yet another sponsored link entitled “SolidWorks” redirects users to the webpage accessible at “shopping.yahoo.com/search; _ylc=X3oDMTMybTgyZjZoBF9T” (see Exhibit L). That webpage displays Yahoo! Shopping Results itemising various purchasing opportunities for competing Solidworks’ software. And another sponsored link entitled “SolidWorks 2011-12 $99.95” redirects the user to a webpage accessible at “www.creationengine.com/html/p.lasso?p=18107”. This sponsored link redirects the user to a website for CreationEngine, which displays an advertisement for competing Solidworks’ student edition software.
Additional Sponsored Links advertise other software products that compete directly with the Complainant’s software programs. A sponsored link with the label “Download Free 3D CAD” redirects users to the webpage at “mkt.alibre.com/alibre-versus-autocad?_kk=autocad&_kt=a465fdf8-3ca1-4f29-9186-ee562 1485fbb&gclid=CPjC0b6f5KsCFWsEQAodyhS7PA”. This page advertises Alibre Design 3D CAD software as “A 3D and 2D Alternative to Autodesk AutoCAD Software.” Like Solidworks’ software, Alibre Design 3D CAD software (published by Alibre Inc.) directly competes with the Complainant’s software products.
The Complainant first tried to contact the Respondent regarding the disputed domain name on March 22, 2011. The Complainant received no response from the Respondent. On April 7, 2011, the Complainant attempted for a second time to contact the Respondent. Again, the Complainant received no response. On April 14, 2011, the Complainant tried for a third time to contact the Respondent, both directly and through the Registrar. Once again, the Complainant received no response from the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Under the Policy, paragraph 4(a)(i), the Complainant must demonstrate: (a) that it has rights in the trademark; and (b) the disputed domain name is identical or confusingly similar to the trademark. The Complainant has satisfied both elements. The Complainant owns registration and common law trademark rights in the mark and owns the exclusive right to use the mark in the United States, the European Union, the Benelux, Canada, China, and dozens of other countries around the world from which the Complainant has obtained registrations for the mark. Ownership of a registered mark to which a disputed domain is confusingly similar satisfies paragraph 4(a)(i) of the Policy. See Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.
The Complainant has also demonstrated common law rights in the mark, substantially preceding the Respondent’s registration of the disputed domain name. Such rights arise when a complainant’s use of its mark results in secondary meaning, i.e. the mark has become a distinctive identifier associated with the complainant or its goods or services. See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
Secondary meaning can be established by a variety of factors, including without limitation advertising expenditures, consumer linking of the mark to the source, unsolicited media coverage of the product, sales success, and length and exclusivity of the mark usage. See Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784. The facts demonstrate that the Complainant has cultivated sufficient secondary meaning in the mark as a unique source identifier of its products such that the Complainant has proven its common law rights therein.
The addition of a gTLD, whether “.com” or any other extension, may be irrelevant to an analysis of identicalness or confusing similarity under paragraph 4(a)(i) of the Policy. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127. Thus the inquiry here under the Policy, paragraph 4(a)(i), concerns only whether “labsautodesk” is identical or confusingly similar to the mark.
When a domain name consists of a prefix or suffix appended to a well-known trademark, the inquiry into confusing similarity depends on the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin. See Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462.
Where the trademark enjoys a high degree of inherent distinctiveness reinforced by longstanding international recognition so as to amount to a well-known mark, and where the prefix or suffix is an ordinary descriptive word that does nothing to dispel and serves only to reinforce the connection in the public’s mind between the trademark and the complainant, UDRP panels have found paragraph 4(a)(i) of the Policy to be satisfied. See Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Microsoft Corporation v. 3D Roulette, WIPO Case No. D2004-0232 (finding confusing similarity between the MICROSOFT mark and the domain name <microsoft888.com> because 888 “is a non-descriptive suffix and does not add anything to the MICROSOFT trademark”); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696 (“the mere addition of common terms [...] to the [at-issue] mark, does not change the overall impression of the designations as being a domain name connected to the Complainant”).
In light of the above, the disputed domain name <labsautodesk.com> is without question confusingly similar to the mark. The generic prefix “labs” does nothing to dispel the connection drawn by the public between the mark and the disputed domain name. Instead, the Respondent unquestionably chose the domain name to capitalise on and cause confusion in connection with the official Autodesk // Labs_ Webpage maintained by the Complainant at “www.labs.autodesk.com”, an official Autodesk site devoted to providing the Complainant’s customers with early product ideas in order to obtain their feedback.
On this basis, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant must make a prima facie showing of this element to shift the burden to the Respondent to produce conclusive evidence to the contrary. Upon the evidence presented: (a) the Complainant has made its required prima facie showing, thereby shifting the burden to the Respondent; and (b) the Respondent has not met its burden to prove it has any rights or legitimate interests in the disputed domain name.
Paragraphs 4(c)(i) through (iii) of the Policy provide that rights or legitimate interests in a domain name can be established if a respondent demonstrates it either: (a) before receiving notice of the dispute, used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; (b) has been commonly known by the domain name; or (c) is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the complainant’s mark.
In this case, the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name under the Policy.
The Complainant has never authorised the Respondent to use the trademark in the disputed domain name or otherwise. The Complainant is the exclusive owner of all rights in and to the mark in jurisdictions around the world, as mentioned above. The Complainant has never granted the Respondent any license, franchise, or other authorisation to incorporate the mark into the disputed domain name. The Respondent is not authorised to use the mark in connection with distributing any products. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent’s website to which the disputed domain name resolves. Accordingly, the Respondent has no basis to argue it has any rights or legitimate interests in the disputed domain name.
The Respondent had notice of this dispute. Paragraph 4(c)(i) of the Policy, concerning whether the Respondent has used the disputed domain name in connection with a bona fide offering of goods, applies only if the Respondent made a bona fide use of the disputed domain name “before any notice to the Respondent of the dispute.” In similar circumstances, a respondent who “knew or should have known” of a complainant’s trademark rights at the time of registration would typically be precluded from demonstrating it put the mark to a legitimate use.
The Respondent knew or should have known of the Complainant’s exclusive trademark rights when the disputed domain name was registered. This administrative proceeding concerns a well-known mark used by the Complainant around the globe for more than a quarter century and dozens of worldwide registrations of the mark. The Respondent registered the disputed domain name decades after the Complainant began obtaining its trademark registrations. The Respondent knowingly chose to register a domain name consisting of nothing other than the AUTODESK trademark and the generic term “labs,” thus obviously attempting to co-opt and mimic the Complainant’s <labs.autodesk.com> sub domain name through which the Complainant actively seeks feedback to early product ideas from its customers. This fact evidences the Respondent’s knowledge of the Complainant’s exclusive trademark rights.
In addition, the Sponsored Links on the Respondent’s website and the Third Party Websites accessible through the website advertise third party products that directly compete with the Complainant’s products, including Solidworks’ software. Both the Sponsored Links pointing customers to the Complainant’s competitors and the Third Party Websites on which products that compete with those of the Complainant are advertised are evidence of the Respondent’s knowledge at all relevant times of the Complainant’s exclusive trademark rights.
The Respondent thus either knew or should have known of the Complainant’s exclusive trademark rights when the disputed domain name was registered. Consequently, the Respondent “had notice of this dispute” at the time of the registration of the disputed domain name and, in the circumstances of this case, cannot use paragraph 4(c)(i) of the Policy to establish any rights or legitimate interests in the disputed domain name.
The Respondent cannot establish any rights or legitimate interests in the disputed domain name under the Policy, paragraph 4(c)(i), because it has never used the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent registered and has been using the disputed domain name simply because it incorporates the mark and, due to user confusion, generates traffic to: (a) the Respondent’s website containing lists of Sponsored Links with titles such as “Cad software,” “Autocad,” and “Solidworks”; and (b) the Third Party Websites to which Internet users are automatically redirected when they click on the Sponsored Links. The Sponsored Links and the Third Party Websites thus advertise products, such as Solidworks’ software and Alibre Design 3D CAD software, that directly compete with the Complainant’s products or services related to such competing products.
Associating a domain name incorporating another’s mark with a website of sponsored third party links pointing to other websites offering competing or closely related products to those of the trademark owner is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. UDRP panels have repeatedly held that “registering a domain name incorporating a well-known trademark and using it to misdirect Internet users to websites offering competing products and services, with the apparent intention of earning click-through revenue, does not by itself give rise to a legitimate interest.” See Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./Reinhard Herrmann, WIPO Case No. D2009-0904; see also Lockheed Martin Corporation v. NBPro Hosting, WIPO Case No. D2003-0859. “[I]t is well-settled that the use of another’s trademark to sell competitive goods and services [...] cannot [...] be considered to be a bona fide offering of goods and services”); Lego Juris A/S v. Privacy Protect.org / SMVS Consultancy Private Limited, WIPO Case No. D2009-1094.
The disputed domain name incorporates the mark and resolves to the Respondent’s Website with Sponsored Links advertising competing or closely related products to those published and marketed by the Complainant. Internet users who understandably believe they may through the disputed domain name find the Complainant or its Autodesk // Labs_ Webpage are redirected to advertisements (i.e., the Third Party Websites) selling products and services unrelated to the Complainant. UDRP panels have ruled automatic redirection as a bad faith practice in connection with the Policy, paragraph 4(c)(i), even if done to a site selling goods or services that do not compete with those of the complainant. See The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493. Under these circumstances, the Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods or services.
This conclusion is unaffected by any assertion the Respondent may raise that it has made “demonstrable preparations to use” the disputed domain name as allowed by the Policy at paragraph 4(c)(i). Firstly, any such preparations would need to be in connection with a bona fide offering of goods or services, which the Respondent has not proven. Secondly, the Respondent’s website consists of nothing more than sponsored links since the Respondent registered the disputed domain name a year and a half ago. Neither such extended “use” nor even an affidavit from the Respondent testifying to supposed planned use of the disputed domain name in the future for something other than a sponsored links farm would have been sufficient evidence of any “demonstrable preparations to use” the disputed domain name. Instead, the Respondent would have needed to provide documentary evidence substantiating steps taken to prepare for anticipated proper use of the disputed domain name. See AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485. The Complainant submits that no such documentary evidence exists. The Respondent cannot avail itself of paragraph 4(c)(i) of the Policy to prove any right or legitimate interest in the disputed domain name.
Any “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847; see also F. Hoffmann-La Roche AG v. Transure Enterprise Ltd., WIPO Case No. D2008-0422. This conclusion is unaffected by any occasional display on the Respondent’s website of advertisements with links to websites promoting legitimate copies of the Complainant’s products. As noted in Asian World of Martial Arts Inc. v. International Property Associates, WIPO Case No. D2007-1415, even though respondent’s websites offered links to the complainant’s products, they also “offer[ed] links to and advertisements for Complainant’s competitors. This does not constitute fair use but rather it appears to constitute deceptive bait and switch advertising practices.”
Under the Policy, paragraph 4(c)(ii), the Respondent may attempt to prove a right or legitimate interest in the disputed domain name by establishing it has been commonly known by the disputed domain name. “What paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known [...] prior to registration of the disputed domain name.” See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. Further, “the registration and use of the disputed domain name, in connection with the Respondent’s website, does not by itself support a conclusion that the Respondent was commonly known by the domain name.” See Yakka Pty Ltd. v. Mr. Paul Steinberg, WIPO Case No. D2004-0502. No evidence suggests the Respondent has ever been called by any name incorporating the mark or been “commonly known” by the mark or the disputed domain name. This is demonstrated by the contact information the Respondent specified in the disputed domain name’s WhoIs record, which does not mention the mark.
Paragraph 4(c)(iii) of the Policy allows the respondent to claim a right or legitimate interest in a domain if it can demonstrate it has been “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Respondent in this case cannot satisfy this test since its: (a) use of the disputed domain name has always been commercial; and (b) intent has always been to misleadingly divert consumers looking for the Complainant, its software, or its Autodesk // Labs_ Webpage associated with the Complainant’s <labs.autodesk.com> subdomain name to the Respondent’s website and ultimately, via the Sponsored Links, to the Third Party Websites advertising products that directly compete with those of the Complainant.
The “use of [a] Domain Name [...] simply to provide links to web sites (a practice that is typically engaged in to collect click-through referral fees) cannot be considered [...] a noncommercial [...] use.” See Lego Juris A/S, supra. The Respondent’s use of the disputed domain name at all times has been commercial given the sponsored ads that comprise the Respondent’s website (i.e., the Sponsored Links) and the singular commercial purpose of the Third Party Websites to which the Sponsored Links resolve.
Because the Respondent commercially uses the disputed domain name, paragraph 4(c)(iii) of the Policy does not apply. The use of the disputed domain name is clearly commercial.
The Respondent’s actions and omissions in connection with the disputed domain name are deceptive advertising tactics subjecting the disputed domain name to a transfer decision via this proceeding.
C. Registered and Used in Bad Faith
To obtain the relief it seeks the Complainant must satisfy the Policy, paragraph 4(a)(iii), by showing that the Respondent registered and is using the disputed domain name in bad faith. Paragraph 4(b) of the Policy lists situations in which the Panel must make a bad faith finding against the Respondent for its registration and use of the disputed domain name. The record establishes at least three distinct grounds on which the Respondent’s bad faith in registering and using the disputed domain name has been conclusively proven.
1) “A finding of bad faith may be made where the Respondent ‘knew or should have known’ of the registration and use of the trademark prior to registering the domain name.” See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Otherwise stated, “registration of a well-known trademark as a domain name is a clear indication of bad faith [...]”. The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. This is the case with the Respondent’s registration of the disputed domain name decades after the Complainant began obtaining its registered and common law rights in its well-known trademark. It is implausible for the Respondent to assert that it innocently registered the disputed domain name in good faith and without knowledge of the Complainant’s rights.
2) The Respondent’s bad faith under paragraph 4(b)(iv) of the Policy is established because the Respondent “intentionally attempted to attract, for commercial gain, Internet users to . . . [its] . . . web site or other on-line location, by creating a likelihood of confusion with . . . [the Complainant’s] . . . mark[s] as to the source, sponsorship, affiliation, or endorsement of the [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.” Bad faith under paragraph 4(b)(iv) of the Policy “is concerned with illegitimately ‘attracting’ Internet users to a respondent’s website for commercial gain, by creating confusion as to the website’s affiliation with a trademark owner.” See Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886.
A respondent’s use of a domain name which is confusingly similar to a complainant’s mark for the purpose of attracting traffic to a website without content of its own and that provides links to commercial websites of others satisfies the bad faith criteria of the Policy, paragraph 4(b)(iv). See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550. For instance, in Emirates v. WhoisGuard Protected, WIPO Case No. D2006-0433, the panel based its transfer decision in part on the following: “It is also apparent that the Respondent has sought to attract Internet users for commercial gain, since it appears that the diversion of Internet users via the disputed domain name takes place in connection with a sponsorship scheme, under which the Respondent may receive fees for referrals.”
The Respondent similarly uses a sponsorship scheme on the Respondent’s website to promote third party businesses whose products and services directly compete with those of the Complainant. In addition, the Respondent profits when users searching for the Complainant or the Autodesk // Labs_ program attempt to go through the disputed domain name but are instead automatically redirected to third parties’ advertisements that have nothing to do with the Complainant. The Respondent thus trades off the trademark’s fame by using it, without the Complainant’s authorisation, to attract for commercial gain users to the Respondent’s and Third Party Websites.
The Respondent cannot rebut this conclusion by attempting to disclaim a direct connection to the Sponsored Links or the advertisements on the Third Party Websites by alleging that either the Registrar is solely responsible for selecting and publishing the content or that the Respondent may supposedly not be financially benefiting from these. UDRP panels regularly reject such arguments by holding respondents ultimately responsible for content published given their ownership of the disputed domains. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
3) UDRP panels have recognised the existence of bad faith registration and use where a domain “is so obviously connected with such a well-known product that its use by someone with no connection to the product suggests opportunistic bad faith.” See Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; see also RapidShare AG, Christian Schmid v. PrivacyProtect.org, Domain Admin n/a Sergey
Malgov, WIPO Case No. D2010-0608.
Such is the case with the Respondent’s registration of the disputed domain name, which is so obviously connected with the Complainant’s fame and that of its software products whose names incorporate the trademark given the millions of copies the Complainant has distributed to the public and the enormous efforts and expense the Complainant has undertaken and incurred to promote its mark as a unique source identifier of its products. Through the disputed domain name the Respondent has blatantly attempted to capitalise on the fame of the Autodesk // Labs_ program and the Complainant’s website located at “www.labs.autodesk.com”. The Respondent has no connection to the Complainant, its products that incorporate the mark into their names, or the Autodesk // Labs_ Webpage, and the Respondent’s opportunistic bad faith is therefore proven.
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 name, <labsautodesk.com>, be transferred to the Complainant.
Dated: January 29, 2012
1 The Panel finds that the lack of response of this Registrar has been the subject of previous UDRP decisions. See for example Automobiles Peugot v. Privacy Protect.org / Domain Administrator, Domain Tech Enterprises, WIPO Case No. D2011-1002 and Onduline v. Private Registration Do, WIPO Case No. D2011-1129.