WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. Darryl Tanner

Case No. D2012-2041

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 Darryl Tanner of Columbus, Ohio, United States of America.

2. The Domain Name and Registrar

The disputed domain name <newautocad.com> (the “Disputed Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2012. On October 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 19 and October 22, 2012, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 27, 2012.

The Center appointed Lynda M. Braun as the sole panelist in this matter on December 4, 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 software company that has developed and commercially sold Autocad, a software application for computer-aided design, or CAD, and drafting, for the past three decades under its AUTOCAD trademark (the “Mark”).

Complainant registered the AUTOCAD Mark, United States Reg. No. 1,316,773, in International Class 009 for computer programs and associated instructional user manuals. The Mark was used in commerce on February 1, 1983. Complainant has also registered the Mark in at least 76 countries and jurisdictions around the world.

For decades, Complainant has incorporated the AUTOCAD Mark into the names applied to many of its software products. Complainant sells licenses all over the world for its various software products that incorporate the Mark into their names and/or include the Mark in product packaging. Today there are over 9 million users of Complainant’s products. To accommodate this user base, Complainant works 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 that incorporate the Mark and/or that include the Mark in product packaging. Complainant has spent millions of dollars to advertise and promote around the world its products that have the Mark incorporated into their names and/or include the Mark on product packaging. 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 Mark incorporated into their names and/or include the Mark in product packaging.

Complainant registered the domain name <autocad.com> in 1998. An Internet user seeking to access a website via the domain name <autocad.com> is automatically routed to Complainant’s official webpage at “www.usa.autodesk.com”.

Respondent registered the Disputed Domain Name on September 12, 2010.

Complainant sent Respondent a cease and desist letter regarding the Disputed Domain Name on September 28, 2010, but received no response. On February 17, 2011, Complainant unsuccessfully attempted for a second time to contact Respondent. On February 24, 2011, Complainant tried for a third time to contact Respondent. Once again, Complainant received no response.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the Disputed Domain Name is confusingly similar to the Mark in which Complainant has rights;

- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

- the Disputed Domain Name was registered and is being used in bad faith.

The Complainant seeks the transfer of the Disputed Domain Name from Respondent to Complainant in accordance with paragraph 4(i) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Disputed Domain Name:

(i) That the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) That Respondent has registered and is using the Disputed Domain Name in bad faith.

These elements are discussed as set forth below.

A. Identical or Confusingly Similar

The Panel finds that the Disputed Domain Name, <newautocad.com>, which incorporates Complainant’s trademark in its entirety, is confusingly similar to that trademark.

Complainant has valid and established rights in its AUTOCAD trademarks. The Panel finds that the word “new” in the Disputed Domain Name is descriptive and indicates that the website at the Disputed Domain Name offers products that are recently created. The addition of the word “new” does not remove the similarity but increases the risk of confusion for consumers. Consumers would likely believe that any website to which the Disputed Domain Name would resolve sells Complainant’s well known software application.¹

Indeed, it is well established that the addition of descriptive or generic words to a trademark typically does nothing to change an otherwise identical or confusingly similar domain name. Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 (the panel found confusing similarity where “shop” and a hyphen were added to the trademark of the complainant in the disputed domain name). See also PRL USA Holdings, Inc. v. Unasi Management Inc., WIPO Case No. D2005-1027 (descriptive or generic additions do not avoid confusing similarity of domain names and trademarks); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (the addition of generic words to a mark to form a domain name is insufficient to dispel confusing similarity).

Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions (“WIPO Overview 2.0”), paragraph 2.1.

In this case, Complainant has made out a prima facie case. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case. Respondent’s lack of reply notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known by the Disputed Domain Name, or that Respondent has any authority, license or permission to use Complainant’s trademark.

Furthermore, Complainant has not authorized, licensed or otherwise permitted Respondent to use its trademark. The name of Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which Respondent has rights. Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that Respondent was improperly using the Disputed Domain Name for commercial gain.

Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Policy identifies the following circumstances that, if found, are evidence of registration and use of the Disputed Domain Name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) Respondent has registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, Respondent has 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 on Respondent’s website or location.

First, a finding of bad faith may be made where Respondent knew or should have known of the registration and use of the trademark prior to registering the Disputed Domain Name. Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365.

Such is the present case with Respondent’s registration of the Disputed Domain Name decades after Complainant began obtaining its trademarks in the United States and in countries throughout the world.

Second, based on the circumstances here, it seems that Respondent registered the Disputed Domain Name to disrupt Complainant’s business and also attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark.

Third, Respondent’s registration of the Disputed Domain Name after Complainant began to use and widely promote its distinctive trademark is evidence that the Disputed Domain Name was registered in bad faith. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks).

Fourth, Respondent's bad faith can also be inferred from its lack of reply to the cease and desist letter and email sent by Complainant prior to commencing this proceeding. See Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications, WIPO Case No. D2001-0210.

Finally, from the evidence presented by Complainant, Respondent has made it a practice to register domain names containing well-known trademarks of other companies. After conducting a reverse WhoIs search, Complainant found that Respondent has registered many other domain names that incorporate well-known trademarks. Thus, Respondent has engaged in a pattern of behavior which consists of registering domain names containing well-known trademarks and using them to prevent the owner of the trademark from reflecting the trademark in a corresponding domain name. The Panel finds that this is evidence of bad faith. Siemens Aktiengesellschaft v. Telmex Management Services, Inc., WIPO Case No. D2003-0995; Policy, paragraph 4(b)(ii).

Accordingly, the Panel finds that third element of paragraph 4(a) of the Policy has been met by the Complainant.

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, <newautocad.com>, be transferred to Complainant.

Lynda M. Braun
Sole Panelist
Dated: December 10, 2012

¹ The Disputed Domain Name does not currently resolve to an active website. However, Complainant previously researched the Disputed Domain Name and found that in 2010, the Disputed Domain Name resolved to a parking page on which Respondent had placed advertising links leading to third party websites and the text “newautocad.com may be for sale!”. In 2011, after Complainant tried three times to contact Respondent in an effort to informally resolve this matter, Respondent had modified the website to which the Disputed Domain Name resolved so that its text stated “This site is under construction” and “Search the Web.”