WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. A Kiansu
Case No. D2013-0312
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 A Kiansu of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <usaautodesk.com> (the “Domain Name”) is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2013. On February 15, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center requested an amended Complaint or amendment to the Complaint by email on February 21, 2013 as the initial Complaint had listed the Registrar’s address incorrectly. The Complainant filed by email an amended Complaint on February 22, 2013.
The Center verified that the Complaint together with the amended Complaint (hereafter collectively known as “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 February 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2013.
The Center appointed Nicholas Smith as the sole panelist in this matter on March 25, 2013. 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 a corporation based in the United States of America. Established in 1982, the Complainant creates and distributes design software, including its flagship AutoCAD product, for use in the architecture, engineering, construction, manufacturing, media and entertainment industries.
The Complainant has held a trade mark registration for the word mark AUTODESK (the “AUTODESK Mark”) since at least 1985. It currently holds registrations for the AUTODESK Mark in at least 72 countries, including the European Union, China and Benelux.
The Domain Name <usaautodesk.com> was created on July 10, 2002. It currently revolves to an Internet site (“Respondent’s Website”) that appears to offer links to third party sites on a pay per click basis. The Respondent’s Website makes references to AutoCAD (the flagship product of the Complainant), and Solidworks (a computer-aided design product that competes with the Complainant’s AutoCAD product).
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s AUTODESK Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the AUTODESK Mark. It owns trade mark registrations in over 72 countries containing the AUTODESK Mark including in the United States of America and the European Union. Since the establishment of the Complainant in 1982, the Complainant has used the AUTODESK Mark extensively, including as part of the names of its products, through its distributors and for advertising and marking its products.
The Domain Name consists of the AUTODESK Mark in its entirety with the addition of the geographical term “usa”. “usa” can refer to the United States of America, the location of the Complainant. The Domain Name also amounts to typosquatting because the Complainant maintains a website at “www.usa.autodesk.com”. The Domain Name will confuse Internet users into believing that the Respondent is somehow connected with the Complainant.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. Due to likely user confusion the Domain Name generates traffic to the Respondent’s Website and, through sponsored links to third party websites enables the Respondent and its affiliates to advertise products that compete directly with the Complainant’s products. For that reason the Respondent has not used the Domain Name for a bona fide offering of goods and services nor has it made a legitimate noncommercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith. The AUTODESK Mark was well-known internationally when the Respondent registered the Domain Name. The Domain Name resolves to a website that purports to offer a range of software products, in direct competition with the Complainant, as well as links to other websites for which the Respondent may receive advertising revenue. This conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the AUTODESK Mark, having registrations for the word AUTODESK as a trade mark throughout the world.
The Domain Name consists of the AUTODESK Mark and the prefix “usa”. “usa” is a geographical term that is an acronym of the United States of America. The addition of a geographical term to a trade mark is not sufficient to provide any distinctiveness to a domain name – see Carlsberg A/S v. Personal / decohouse, decohouse, WIPO Case No. D2011-0972; BP p.l.c. v. Kang-Sungkun Portraits Production, WIPO Case No. D2001-1097; Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709 and The Nasdaq Stock Market, Inc. v. Vidudala Prasad, WIPO Case No. D2001-1493.
The addition of the prefix “usa” to the AUTODESK Mark merely suggests that the Domain Name refers to the Complainant’s activities in the United States of America. The prefix “usa” does not distinguish the Domain Name from the AUTODESK Mark in any significant way. The Panel finds that the Domain Name is confusingly similar to the Complainant’s AUTODESK Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making 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.” (Policy, paragraph 4(c))
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the AUTODESK Mark or a mark similar to the AUTODESK Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather it appears that the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant:
(a) marks reference to the Complainant’s flagship AutoCAD product, potentially indicating that it is in some way connected with the Complainant or offers its products; and
(b) contains a series of links to third party sites that offer products, some of which may compete with the Complainant’s products, from which the Respondent is likely to receive some revenue.
Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has 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 as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. (Policy, paragraph 4(b))
The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the AUTODESK Mark at the time the Domain Name was registered. The AUTODESK Mark has been extensively used and promoted by the Complainant internationally since 1985. Furthermore, the Respondent’s Website makes reference to the Complainant’s flagship product, AutoCAD and at least one competing computer-aided design product, Solidworks, indicating an awareness of the computer-aided design market. The registration of the Domain Name in awareness of the Complainant’s Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent is using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website contains a series of links to third party sites offering computer-aided design software, as well as sites unrelated to the Complainant, offering employment and computer game products. Such third party sites generally advertise by paying on a a pay per click basis for Internet users redirected to their sites. This means that the Respondent likely receives a financial reward for every Internet user redirected from the Respondent’s Website to those third-party sites. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <usaautodesk.com> be transferred to the Complainant.
Date: March 27, 2013