WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Domain Admin / Hulmiho Ukolen, Poste restante
Case No. D2015-2024
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 Domain Admin of Prague, Czech Republic / Hulmiho Ukolen, Poste restante of Helsinki, Finland.
2. The Domain Name and Registrar
The disputed domain name <autocadd.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2015. On November 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2015, 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 November 13, 2015 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 November 20, 2015.
The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Finnish. On November 13, 2015, the Center sent a language of proceeding communication in both Finnish and English to the parties. On November 20, 2015, the Complainant submitted a request for English to be language of proceeding. The Respondent did not submit any comments on this request.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 13, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 14, 2015.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on December 23, 2015. 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 company, offering licensed copies of computer software programs, associated user manuals and related documentation. Furthermore, the Complainant is the holder of trademark registrations for AUTOCAD in, inter alia, the United States of America. The Complainant’s oldest trademark registration for AUTOCAD was granted by the United States Patent and Trademark Office (registration number 1316773) on January 29, 1985.
The disputed domain name was registered on May 27, 2015.
5. Parties’ Contentions
The Complainant has continuously used the AUTOCAD trademark in connection with its goods since 1983. Apart from the relevant trademark registrations, the Complainant also owns common law rights in the AUTOCAD trademark. The Complainant sells licenses all over the world and on every continent for its various software products, which incorporate the AUTOCAD trademark into their names and/or include the trademark in product packaging. Today there are more than nine million users of the Complainant’s products. The Complainant works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers. Moreover, the Complainant has spent millions of US dollars to advertise and promote its products worldwide, and has distributed at least 9.3 million standalone copies, and at least 8.5 million additional copies bundled into suites, using the AUTOCAD trademark.
The Complainant has owned the domain name <autocad.com> since 1998.
The disputed domain name consists of a minor misspelling of the Complainant’s trademark, by the addition of a single letter, a second “d”. The registration of domain names with insignificant modifications of another’s trademark is commonly referred to as “typosquatting” or “typo-piracy”, as such conduct wrongfully seeks to take advantage of errors by Internet users in typing domain names into web browsers. Domain names which constitute typo-squatting are confusingly similar by definition.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has never authorized the Respondent to incorporate the Complainant’s trademark in connection with the distribution of any of the Complainant’s products, and the Respondent has never been commonly known by the disputed domain name or the Complainant’s trademark. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent or the website to which the disputed domain name resolves.
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 allows the Respondent to earn click-through revenues via sponsored links leading to advertisements for products that directly compete with the Complainant’s products. When users attempt to access the website associated with the disputed domain name, they are sometimes automatically routed to one of many third party websites containing nothing but advertisements and products and services for third parties that are generally unrelated to the Complainant. Occasionally when a user tries to access the website in question the user lands on a webpage of nonoperational, sponsored links, some of which appear to be related to the Complainant’s software products and others of which are clearly related to Computer Assisted Design (“CAD”) more generally. Listing sponsored links, operational or not, is not a bona fide offering of goods or services.
The Respondent registered and is using the disputed domain name in bad faith. The practice of “typosquatting” has often been recognized as evidence of bad faith registration per se. Moreover, the disputed domain name was registered decades after the Complainant began obtaining its registered and common law rights in its world famous AUTOCAD trademark. Furthermore, the Respondent uses the website in question to misdirect Internet users to third party websites that have nothing to do with the Complainant, and thus impermissibly trades off the AUTOCAD trademark to attract, for commercial gain, users to the Respondent’s website. The Respondent’s registration of the disputed domain name is obviously connected with the Complainant’s fame.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
Under paragraph 11(a) of the Rules, 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. In the present case, the language of the Registration Agreement is Finnish.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. Taking into account the Respondent’s default and all relevant circumstances of the case, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceeding be English.
Therefore, the Panel has decided to accept the Complainant’s filings in English and issue a decision in English.
6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the 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.
A. Identical or Confusingly Similar
The Complainant is the holder of several trademark registrations for AUTOCAD. The disputed domain name incorporates the AUTOCAD trademark in its entirety, with the addition of the letter “d” and the generic Top-Level Domain (gTLD) “.com”. According to the well-established consensus among UDRP panels, the gTLD is generally not distinguishing. The Panel finds that the differences between the disputed domain name and the AUTOCAD trademark are insufficient to avoid a finding of confusing similarity under the first element of the Policy.
In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s AUTOCAD trademark within the meaning of Policy paragraph 4(a)(i), and the first element of the Policy is thus fulfilled.
B. Rights or Legitimate Interests
In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
The Complainant has asserted that no permission to register the disputed domain name has been granted to the Respondent. Moreover, the Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates the Complainant’s trademark.
Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant or authorized to use the Complainant’s AUTOCAD trademark in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent is using the disputed domain name for a bona fide offering of goods or services.
In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.
C. Registered and Used in Bad Faith
The disputed domain name was registered on May 27, 2015, which is more than thirty years after the Complainant’s first trademark registration for AUTOCAD. Furthermore, the disputed domain name resolves to a website containing sponsored links and advertisements to other websites which, according to the Complainant’s uncontradicted information, have no connection to the Complainant. According to the evidence provided by the Complainant, the links on the website in question feature headings such as “Autodesk software”, “Autocad download” and “AutoCAD Mechanical”. In the light thereof, and taking into account the Complainant’s statements and evidence as a whole, showing that the AUTOCAD trademark is registered and is being used in numerous countries worldwide, it is highly improbable that the Respondent was unaware of the Complainant’s trademark at the time of registration of the disputed domain name.
The use of the website in question, including the lack of clear indications regarding the (lack of) relationship between the Complainant and the Respondent suggests that the disputed domain name was registered and is being used with the intention of attracting customers for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a products or service on the Respondent’s website or location.
The Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.
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 <autocadd.com> be transferred to the Complainant.
Date: January 5, 2016