World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. Moniker Privacy Services / Registrant [3850852]: Standard Bearer

Case No. D2012-1067

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 Respondent is Moniker Privacy Services / Registrant [3850852]: Standard Bearer of Pompano Beach, Florida, United States of America and St Johns, Antigua and Barbuda, respectively.

2. The Domain Name and Registrar

The disputed domain name <seekautodesk.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2012. On May 22, 2012, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the disputed domain name. On May 25, 2012, Moniker Online Services, LLC 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 May 30, 2012, 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 June 5, 2012.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 7, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 3, 2012.

The Center appointed Hariram Jayaram as the sole panelist in this matter on July 6, 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, Autodesk, Inc., is a corporation duly organized and existing under the laws of the State of Delaware, in the United States, with its principal place of business in the State of California in the United States. The Complainant is the owner of the AUTODESK trade mark.

The disputed domain name was registered on November 5, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant has for nearly three decades used the AUTODESK trade mark in connection with the Complainant’s commercial offering to the public of licensed copies of computer software programs, associated user manuals and related documents. The Complainant has incorporated the AUTODESK trade mark, which is based on its name, 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 2010 alone. The Complainant has continually used its AUTODESK trade mark in commerce since at least February 1983.

The Complainant sells licenses all over the world and on every continent for its various software products that incorporate the AUTODESK trade mark into their names and/or include the trade mark in product packaging. Today there are over nine million users of the Complainant’s products. To accommodate this enormous user base, the Complainant works with approximately 1,700 channel partners, 3,300 developments partners and 2,000 authorized training centers to assist customers with their worldwide use of its products known by names that incorporate the AUTODESK trade mark and/or that include the AUTODESK trade mark in product packaging.

The Complainant has spent millions of dollars to advertise and promote, around the world, its products that have the AUTODESK trade mark incorporated into their names and/or include the AUTODESK trade mark on product packaging. The Complainant has distributed at least 9.3 million standalone copies, and at least 8.3 million additional copies bundled into suites, of its products that have the AUTODESK trade mark incorporated into their names and/or include the AUTODESK trade mark in product packaging. Unsolicited media coverage tying the AUTODESK trade mark to Autodesk is widespread. The Complainant operates a web-based service entitled “Autodesk® Seek” at “http://seek.autodesk.com”. The point of the Autodesk® Seek webpage is to enable designers to discover, preview, and download building-information models (“BIM”) and BIM-related drawings and specifications; and provide manufacturers a way to connect with designers and consumers who specify or recommend building products.

The Complainant owns the exclusive right to use the AUTODESK trade mark in the United States, the countries that comprise the European Union, the Benelux, Canada, China, and in the dozens of other countries around the world from which the Complainant has obtained registrations for the AUTODESK trade mark. The Complainant also has common law rights in its AUTODESK trade mark substantially preceding the Respondent’s registration of the disputed domain name. The Complainant has cultivated sufficient secondary meaning in the AUTODESK trade mark as a unique source identifier of its products such that the Complainant has proven its common law rights therein.

The <seekautodesk.com> domain name is, without question, confusingly similar to the Complainant’s AUTODESK trade mark. The generic prefix “seek” does nothing to dispel the connection drawn by the public between the AUTODESK trade mark and the disputed domain name. The Respondent unquestionably chose the domain to capitalize on, and cause confusion in connection with, the Internet users who are seeking: (a) the Complainant itself; or (b) the official Autodesk® Seek Webpage maintained by the Complainant at “http://seek.autodesk.com”, which is devoted to connecting different segments of the Complainant’s products user community. It is obvious the Respondent chose the word “seek” for the disputed domain name prefix simply to improperly trade off the AUTODESK trade mark’s fame and to cause confusion with the Complainant’s <seek.autodesk.com> domain name in order to knowingly divert consumers looking for the Complainant or its products or services to the sponsored links and the third party websites for the purpose of either advertising products which compete with those published by the Complainant or for distributing illegal copies of the Complainant’s products; additionally, the Respondent earns click-through revenues from users who click on the sponsored links and/or purchase products through the third party websites.

The Complainant is the exclusive owner of all rights in and to the AUTODESK trade mark in jurisdictions around the world. The Complainant has never granted the Respondent any license, franchise, or other authorization to incorporate the AUTODESK trade mark into the disputed domain name. The Respondent is not authorized to use the AUTODESK trade mark in connection with distributing any products. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent’s website at the disputed domain name. The Respondent has no basis to argue it has any right or legitimate interest in the disputed domain name.

The Respondent knew or should have known of the Complainant’s exclusive trade mark rights when the Respondent registered the disputed domain name. This dispute concerns a world-famous mark used by the Complainant around the globe for more than a quarter century and dozens of worldwide registrations owned by the Complainant encompassing the AUTODESK trade mark. The Respondent conspicuously registered the disputed domain name decades after the Complainant began obtaining its trade mark registrations. The Respondent knowingly chose to register a domain name consisting of nothing more than the AUTODESK trade mark and the generic term “seek” thus obviously attempting to co-opt the traffic of Internet users seeking the Complainant and and/or its Autodesk® Seek Webpage. This fact circumstantially evidences the Respondent’s knowledge at all relevant times of the Complainant’s exclusive trade mark rights.

Some sponsored links on the Respondent’s website and the third-party websites accessible through the same advertise third-party products directly compete with the Complainant’s products, including competing SolidWorks® software and competing Alibre Design 3D CAD software. The Respondent’s use of the disputed domain name to advertise third-party’s software products that directly compete with those published, evidences the Respondent’s knowledge at all relevant times of the Complainant’s exclusive trade mark rights. This conclusion is reaffirmed by the fact that several of the Respondent’s sponsored links and the associated third-party websites actually advertise to Internet users the ability to download illegal copies of different Autodesk software products. Clearly, the Respondent has at all times been aware of the Complainant’s trade mark rights given the Respondent has been attempting to use the disputed domain name incorporating the Complainant’s AUTODESK trade mark in a blatant scheme to violate the Complainant’s intellectual property rights. The Respondent thus had either actual or constructive knowledge of the Complainant’s exclusive trade mark rights when the Respondent registered the disputed domain name.

The Respondent “had notice of this dispute” at the time of domain name registration. The Respondent 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 AUTODESK trade mark and, due to user confusion, generates traffic to the Respondent’s website at the disputed domain name and, through the sponsored links, to the third-party websites; and thereby enables the Respondent and its affiliates to both advertise products that compete directly with the Complainant’s products and offer free access to illegal copies of the Complainant’s products. The disputed domain name incorporates the AUTODESK trade mark and resolves to the Respondent’s website with sponsored links advertising competing or strongly related products to those published and marketed by the Complainant. Internet users who understandably and reasonably believe they may through the disputed domain name find the Complainant or its Autodesk® Seek Webpage are automatically and unwittingly redirected to advertisements (i.e., third-party websites) selling products and services unrelated to the Complainant.

The Respondent’s use of the disputed domain name does not qualify as a bona fide offering of goods or services. That Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and thus cannot claim any legitimate right or interest in the disputed domain name is also proven by the fact that the Respondent’s website and some of the third-party websites are used by the Respondent and its affiliates to advertise the distribution of illegal copies of the Complainant’s products. The inevitable consequence of this illegal scheme is that the Respondent’s use of the disputed domain name cannot be considered bona fide. This conclusion is unaffected by any assertion the Respondent may raise that it has purportedly made “demonstrable preparations to use” the disputed domain name. First, any such preparations would need to be in connection with a bona fide offering of goods or services, which the Respondent cannot prove as set forth above. Second, upon information and belief, the Respondent’s website, at the disputed domain name, has at all times consisted of nothing more than a sponsored link farm since the Respondent registered the disputed domain name nearly two years ago. Neither such extended “use” standing alone nor even an affidavit from the Respondent averring to supposed planned use of the disputed domain name in the future for something other than a sponsored links farm would be sufficient evidence of any “demonstrable preparations to use” the disputed domain name in connection with a bona fide offering of goods or services; instead, the Respondent would need to provide documentary evidence actually substantiating concrete steps the Respondent has purportedly already taken to prepare for anticipated proper use of the disputed domain name. The Complainant submits that no such documentary evidence exists.

No evidence suggests that the Respondent has ever been called by any name incorporating the AUTODESK trade mark or been “commonly known” by either this trade 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 term “autodesk”. The Respondent’s use of the disputed domain name has always been commercial; and the Respondent’s intent has always been to misleadingly divert consumers looking for the Complainant, or its Autodesk® Seek website associated with the Complainant’s <seek.autodesk.com> domain name, to the Respondent’s website and ultimately, by the sponsored links therein, to the third-party websites where products that directly compete with the Complainant’s products are advertised and where illegal copies of the Complainant’s products can be downloaded. Further, The Respondent’s use of the disputed domain name at all times has been commercial given the sponsored links that comprise the Respondent’s website and the singular commercial purpose of the third-party websites to which the sponsored links resolve.

The content of the Respondent’s Website and the third-party websites demonstrate the Respondent has not made any truthful statement regarding the Complainant in registering and using the disputed domain name. The disputed domain name suggests a direct but nonexistent affiliation between the Respondent and the Complainant since the disputed domain name consists entirely of the Complainant’s name and the term “seek” for the disingenuous purpose of creating a phrase practically identical to the name of the Autodesk® Seek program and the Complainant’s <seek.autodesk.com> domain name. This, in tandem with the sponsored links on the website at the disputed domain name, connecting Internet users to products of the Complainant’s competitors and web pages where illegal copies of the Complainant’s products can be downloaded, shows there is no truthful statement whatsoever being made by the Respondent in using the disputed domain name. Instead, the Respondent’s only purpose in registering the disputed domain name and publishing the associated website has been to earn sponsored ad revenues and thus usurp the goodwill derived from the trade mark. This deceptive practice cannot be deemed a fair use under any jurisdiction’s laws. The Respondent cannot avail itself of the fair use doctrine not withstanding any occasional display on the website at the disputed domain name of advertisements with links to websites promoting legitimate copies of the Complainant’s products. The Respondent’s actions and omissions in connection with the disputed domain name are likewise deceptive advertising tactics meriting a transfer decision, particularly given that users of the website at the disputed domain name may be confused between links therein pointing to places where legitimate copies of the Complainant’s products may be found and others that link to websites advertising illegal copies of the Complainant’s products.

The disputed domain name was registered decades after the Complainant began obtaining its registered and common law rights in its now world-famous trade mark. On the record presented, it would be 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. The Respondent similarly uses a sponsorship scheme on the Respondent’s Website to promote certain third parties whose products and services directly compete with those of the Complainant and others whose purpose is to advertise and distribute illegal copies of the Complainant’s products. The Respondent profits when users searching for the Complainant or the Autodesk® Seek program understandably 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 impermissibly trades off the AUTODESK trade mark’s fame by using it, without the Complainant’s authorization, to attract for commercial gain users to the website at the disputed domain name and the third-party websites. This is quintessential bad faith registration and use. 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, for instance by alleging either the Registrar is solely responsible for selecting and publishing the content or that the Respondent may supposedly not be financially benefiting therefrom.

The Respondent’s use of the disputed domain name, the Respondent’s website, the sponsored links, and the third party websites to advertise and distribute illegal copies of the Complainant’s software products is a per se illegal activity in every jurisdiction around the world. The Respondent’s registration of the disputed domain name is so obviously connected with the global fame of the Complainant and its Autodesk® Seek program. Through the disputed domain name, the Respondent has blatantly attempted to capitalize on that fame by intentionally taking advantage of consumers who are confused between the disputed domain name and the Autodesk® Seek program which is available through a sub domain owned by the Complainant and accessible at its website, “http://seek.autodesk.com”. In other words, the near identicalness between the disputed domain name and the Internet portal to the Autodesk® Seek website, in tandem with the Respondent’s use of the disputed domain name to advertise third parties’ products that compete with those of the Complainant and to facilitate the distribution of illegal copies of the Complainant’s products, can only mean that the Respondent registered and has been using the disputed domain name in bad faith. No other conclusion is even plausible, and the Respondent’s opportunistic bad faith is proven.

The Complainant first tried to contact the Respondent regarding the disputed domain name on April 12, 2011, and received no response. On April 25, 2011, the Complainant unsuccessfully attempted for a second time to contact the Respondent. On May 2, 2011, the Complainant tried for a third time to contact the Respondent. Once again, the Complainant received no response.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements to obtain an order for the domain name to be transferred to it:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

The Panel finds that the Complainant has submitted succinctly and comprehensively all relevant arguments and evidence to support its claim and to show its rights. As the Respondent did not submit any response, the Panel will, in accordance with paragraph 5(e) of the Rules, decide this dispute based on the Complaint.

A. Identical or Confusingly Similar

The Complainant is the owner of the AUTODESK trade mark. The Panel concludes that this trade mark is well-known by its extensive use for software and associated user manuals and documentation. The Complainant has secured several trade mark registrations for the AUTODESK trade mark around the world. Apart from the gTLD “.com”, the disputed domain name comprises the word”autodesk” combined with the word “seek”. The word “autodesk” is visually and phonetically identical to the Complainant’s registered trade mark AUTODESK. The addition of the generic term “seek” is not sufficient to distinguish the disputed domain name from the Complainant’s trade mark. The similarity of the disputed domain name <seekautodesk.com> to the domain name of the Complainant’s web-based service <seek.autodesk.com> is particularly striking and the Panel finds that it could easily result in confusion.

While a finding of confusion depends on the evaluation of all the surrounding circumstances, several UDRP decisions have confirmed that the addition of ordinary descriptive words as prefixes or suffixes does not ordinarily dispel connections between the domain name and the Complainant. Rather, the use of such prefixes can serve to reinforce false connections. Some of these cases are as follows:

In Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, the Panel found that:

“[T]he disputed domain name is confusingly similar to the Registered Trademarks for the following reasons: (i) MARLBORO is an invented work (although phonetically almost identical to the geographical name ‘Marlborough’) with a high degree of inherent distinctiveness reinforced by longstanding international recognition so as now to amount to a famous mark; (ii) ‘cheap’ is an ordinary descriptive word; (iii) the word ‘cheap’ exploits the trademark signification of MARLBORO as an indication of origin as consumers will understand the disputed domain name to refer to the sale of the Complainant’s products at special prices. The prefix ‘cheap’ does nothing to dispel and serves only to reinforce the connection in the public mind between the word MARLBORO.”

In Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, the Panel found that:

“[T]he incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark…The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant’s registered trademark.”

The Panel agrees with the observations made in the above decisions and finds that in this case the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel takes note of the various allegations in the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to register the disputed domain name incorporating the Complainant’s AUTODESK trade mark; there is no affiliation between the Complainant and the Respondent; there is no bona fide offering of goods and services by the Respondent at the disputed domain name; the Respondent has not been commonly known by the disputed domain name; the Respondent has no prior rights or legitimate interests in the disputed domain name; and by choosing a domain name which is similar to the Complainant’s trade mark and which resolves into a website offering sponsored links, the Respondent is seeking to divert consumers to the said website for its own commercial gain.

On the basis of the Complainant’s submissions and evidence at hand, the choice of words in the disputed domain name, and the apparent purposeful use of the disputed domain name to generate traffic to a website containing sponsored links which diverts Internet users to the competitors’ products or third-party websites offering illegal copies of the Complainant’s products, the Panel finds that the Respondent is not making use of the disputed domain name for a bona fide offering of goods and services, and is not making a legitimate noncommercial or fair use of the disputed domain name.

In S.N.C. Jesta Fontainebleu v. Po Ser, WIPO Case No. D2009-1394, the Panel found:

“The evidence before the Panel is that the Domain Name is connected to a parking page featuring advertising links through which the Respondent is earning Pay-Per-Click (“PPC”) revenue … the Panel concludes that the Respondent's service offering is not a bona fide service offering. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.”

The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has any rights or legitimate interests in the disputed domain name.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The disputed domain name resolves to a website which features sponsored links, notably to websites selling competitors’ products. Such use of the disputed domain name and the registration of the disputed domain name show that the Respondent is well aware of the business of the Complainant and that the disputed domain name has been created with the intention to reap commercial benefit generated through confusion and customer diversion. Given the reputation of the Complainant’s mark, as well as the existence of sponsored links to websites selling competitors’ products, it is implausible, in this Panel’s view, that the Respondent independently registered and used the disputed domain name without knowledge of the Complainant’s trade mark. Further, the Panel finds that this is an obvious attempt to capitalize on the Complainant’s trade mark and, as alleged by the Complainant, to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In Rolex Watch U.S.A., Inc. v. Vadim Krivitsky, WIPO Case No. D2008-0396, the Panel found:

“The Domain Name is used for commercial advertising, much of it for watches and jewelry. Given the fame of Rolex watches in the United States (where the Respondent is located) and elsewhere, and the distinctiveness of the ROLEX mark, the most probable explanation for the registration and subsequent advertising use of the Domain Name is precisely an intention to mislead Internet users seeking a Rolex dealer and present them with (presumably paid) advertising for other products, consonant with the illustration of bad faith in paragraph 4(b)(iv).”

In Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474, the Panel found:

“Respondent's bad faith is further illustrated by the domain name's resolution to a PPC parking page with links to websites selling products competing with Complainant's … Not only does Respondent's registration divert internet users to his site based on the goodwill of the SERTA mark, but it also threatens to divert actual mattress sales away from Complainant.”

In the absence of any explanation or rebuttal by the Respondent, it is apparent from the Complainant’s submissions that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

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, <seekautodesk.com> be transferred to the Complainant.

Hariram Jayaram
Sole Panelist
Dated: July 20, 2012

 

Explore WIPO