WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Thung Nguyen / Dao Thi No, ABC / Who is Privacy Protection Service by tenten. vn
Case No. D2014-1676
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Fitzgerald, United States of America.
The Respondent is Thung Nguyen/Dao Thi No, ABC of “TPHCM”, Vietnam; Who is Privacy Protection Service by tenten. Vn of Ha Noi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <autodeskvietnam.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 2014, the Registrar 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 September 29, 2014 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 October 3, 2014.
On October 29, 2014, the Center transmitted an email to the parties in English and Japanese regarding the language of the proceeding. On October 3, 2014, the Complainant submitted its request that English be the language of the proceeding. On October 24, 2014, the Center received email communications from the Respondent in English, requesting that Vietnamese as the language of the proceeding.
The Center verified that the Complaint 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 October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. The Center received informal email communications from the Respondent on October 16, 2014, soliciting a fee of USD 2000 for transfer of the disputed domain name. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent the Center’s proceeding to the panel appointment on October 29, 2014. On November 15, 2014, the Respondent sent a further email to the Centre offering, again, to accept USD 2,000 for transfer of the disputed domain name.
The Center appointed Douglas Clark as the sole panelist in this matter on November 3, 2014. 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 software company. The Complainant is the registered proprietor of the trademark AUTODESK in various countries around the world, including Vietnam.
The Complainant owns and operates a number of websites including its primary site “www.autodesk.com”.
The disputed domain name <autodeskvietnam.com> was registered on March 28, 2014. It was originally registered in the name of Khanh Trung. On September 11, 2014 it was transferred to a privacy shield. On September 29, 2014 it was transferred to the Respondent.
The website to which the disputed domain name resolves to is a page promoting Autodesk products and bears the Complainant’s trademark with the words “Partner Distributor” under it. The website copies a number of features from the Complainant’s website “www.autodesk.com”.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <autodeskvietnam.com> is confusingly similar to its registered trademark AUTODESK. It is made up of the Complainant’s trademark AUTODESK to which the geographical indicator Vietnam has been added.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name as it has not made any bona fide use of the disputed domain name. The Complainant contends that the Respondent has no commercial relationship with the Complainant and the Respondent is not a licensee of the Complainant. The Respondent is by the use of links to the Complainant’s Facebook and Linkedin pages seeking to convey the impression there is a link between the Respondent and the Complainant.
The Complainant contends that the disputed domain name was registered and is being used in bad faith with the intention diverting Internet users to the Respondent’s website where unauthorized copies of the Complainant’s software are offered for sale.
The Respondent did not formally reply to the Complainant’s contentions. The Center only received Respondent’s language request and two emails offering to transfer the disputed domain name for USD 2000.
6. Discussion and Findings
6.1 Language of Proceedings
The language of the Registration Agreement is in Japanese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of proceedings to be English on the grounds that the Complainant is an American company that does business in English, the Respondent appears to be Vietnamese and Japanese will not be favourable to the Respondent either and that English appears on parts of the website under the disputed domain name.
The Respondent requested the language of proceedings be Vietnamese.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. This is a rare case where neither party wishes the language of the proceedings to be the language of the registration agreement but rather two other languages have been proposed.
The Respondent did respond to the Complainant in English. However, these responses were very short and did not necessarily show an ability to communicate at a high level in English. They did, however, show an ability to understand the nature of the complaint made by the Complainant. While the Respondent did request the language or proceedings be Vietnamese, no further substantive defence was filed.
The Respondent clearly understands the nature of these proceedings. As a company in the computer industry and as being a partner distributor of the Complainant, it should have staff who are competent in English. Further, as set out below, this Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
The Panel will render its decision in English.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has demonstrated it has trademark rights in AUTODESK.
The disputed domain name <autodeskvietnam.com> is composed of the Complainant’s registered trademark AUTODESK and the addition a geographic indicator Viet Nam The Panel finds the disputed domain name is confusingly similar to the Complainant’s registered trademark.
The first element of the UDRP is made out.
B. Rights or Legitimate Interests
The Respondent has not formally responded to the Complaint to assert any rights or legitimate interests. Paragraph 2.1 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) provides:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The fact the registrant was changed a number of times in a very short period of time suggests that none of the registrants have any rights or legitimate interests in the disputed domain name.
The second element of the UDRP is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name <autodeskvietnam.com> was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
The use of the page under the disputed domain name to promote a software distributor has clearly been done to attract visitors to the site for commercial gain.
The third element of the UDRP is made out.
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 <autodeskvietnam.com> be transferred to the Complainant.
Date: November 15, 2014