WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk Inc. v. Equinox Domains
Case No. D2012-1444
1. The Parties
Complainant is Autodesk Inc. of San Rafael, California, United States of America, represented by Donahue Gallagher Woods LLP, United States of America.
Respondent is Equinox Domains of Cayman Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <autodeskk.com> is registered with Rebel.com Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2012. On July 17, 2012, the Center transmitted by email to Rebel.com Corp. a request for registrar verification in connection with the disputed domain name. On July 17, 2012, Rebel.com Corp. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 8, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 10, 2012.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on August 16, 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
Complainant is a United States corporation specialized in computer software programs, with its principal place of business in the State of California. Complainant is a leading company in 3D design, engineering and entertainment software, and its products are used by customers across the manufacturing, architecture, building, construction and media and entertainment industries.
Complainant has registered the trademark AUTODESK in the United States under No.73474422. The trademark application was filed on April 9, 1984, and registration granted on January 29, 1985. Furthermore, Complainant has several trademark registrations for AUTODESK throughout the world (in seventy-two different countries), including Canadian registration No. TMA367469, BENELUX Countries registration No. 0449012, and Europe Community registration No.004036687.
Complainant also claims to own common law rights in the trademark and has over 9 million users of its products, working with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers with their worldwide use of its products known by names containing AUTODESK. Complainant has spent millions of dollars to advertise and promote its products around the world.
The disputed domain name <autodeskk.com> was registered on April 18, 2002.
The disputed domain name resolves to a website with sponsored links which include advertisements for products that directly compete with Complainant’s products (Annex E of the Complaint).
5. Parties’ Contentions
Complainant is the owner of trademark AUTODESK in over 72 (seventy-two) countries, including the United States, and domain name <autodesk.com>. For nearly three decades, Complainant has used such trademark in connection with its licensed copies of computer software programs, associated user manuals, and related documentation.
Complainant alleges that Respondent’s disputed domain name <autodeskk.com> is deliberately confusingly similar to Complainant’s trademark AUTODESK (over which Complainant claims exclusive rights), and domain name <autodesk.com>.
Complainant claims that Respondent’s website “www.autodeskk.com” includes advertisements for products that directly compete with its products. Complainant also stresses that it has never authorized Respondent to incorporate AUTODESK into the disputed domain name <autodeskk.com>, or even use the trademark in anyway, and that the registration of a domain name with insignificant modifications of another’s trademark can be referred to as “typosquatting” or “typo-piracy”.
In support of this argument, Complainant refers to a number of decisions made by previous panels in similar cases, including Autodesk, Inc. v. PrivacyProtect.org / Tech Domain Services Private Limited, WIPO Case No. D2011-1958 and Autodesk, Inc. v. PrivacyProtect.org / Trade Out Investments Ltd, WIPO Case No. D2012-0238, where the panels found the domain names <autoddesk.com> (which included Complainant’s trademark with only a single letter misspelling - double “d”) and <autodesck.com> (which included Complainant’s trademark with only a single letter misspelling - “c”) to be clearly confusingly similar, phonetically and virtually identical to Complainants’ trademark AUTODESK.
Complainant claims that Respondent does not have rights or legitimate interest in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed in a UDRP proceeding, Complainant must prove each of the following requirements specified under paragraph 4(a) of the Policy:
(i) that the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in respect of which Complainant has rights; and
(ii) that 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.
These three elements are considered hereinafter.
In view of Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
Complainant has duly proved the first element under paragraph 4(a) of the Policy by attesting that it is the owner of several trademark registrations for AUTODESK worldwide and that such trademark is entirely incorporated in the disputed domain name <autodeskk.com>.
This is a typical case of “typosquatting”, as claimed by Complainant. The domain name is almost fully composed of Complainant’s registered trademark AUTODESK, with only a single letter additioned – a double consonant “k” in the end - which does not affect the Panel’s understanding that the disputed domain name can easily mislead consumers to make an erroneous connection with Complainant’s trademark.
Furthermore, the disputed domain name is phonetically identical to Complainant’s trademark and virtually identical to its domain name <autodesk.com> which resolves to Complainant’s official website.
The Panel therefore finds that the disputed domain name is confusingly similar to Complainant’s trademark AUTODESK.
B. Rights or Legitimate Interests
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized at paragraph 2.1 of the WIPO Overview of WIPO Panel Views on UDRP Questions, Second Edition (“WIPO Overview, 2.0”) as follows: “[A] complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If 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 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 Complainant.”
In this case Complainant has provided sufficient prima facie proof of “no rights or legitimate interests”, so the burden of production shifts to Respondent. As Respondent has not filed any response, that burden has not been discharged, and the Panel has considered Complainant’s prima facie proof to be sufficient evidence to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <autodeskk.com>.
Complainant has never authorized Respondent to incorporate its trademark AUTODESK into the disputed domain name <autodeskk.com>, and since Respondent has not chosen to present any argument in this matter or attempted to prove any right, it is apparent that the its only intention when registering the disputed domain name was to attract for commercial gain Internet users to its website by creating a false association with Complainant’s mark.
In view of the above, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. 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, Respondent having intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.”
Taking into account the broad worldwide fame and reputation of Complainant’s AUTODESK trademark, and in accordance with prior WIPO UDRP cases cited by Complainant, the Panel finds that the disputed domain name <autodeskk.com> has been both registered and used in bad faith. It is highly likely that Respondent was well aware of Complainant and its products at the time of registration. In this Panel’s view, Complainant has undertaken to promote its mark AUTODESK as a unique source identifier of its products and Respondent is clearly disrupting Complainant’s business.
In conclusion, the Panel finds that the only reason which Respondent could have for registering the disputed domain name and using it for a website with sponsored links which sell and promote competing software products is to trade on Complainant’s extensive international reputation in the technological industry and to encourage potential customers to believe that there is a connection between Complainant and Respondent when no such connection exists.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <autodeskk.com> be transferred to Complainant.
Gabriel F. Leonardos
Dated: August 30, 2012