WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Administration Dom, WhoisPrivacyLimited / Wanzhongmedia, Zhong Wan
Case No. D2014-1383
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 Administration Dom, WhoisPrivacyLimited of Hong Kong, China / Wanzhongmedia, of Shen Zhen City, China.
2. The Domain Name and Registrar
The disputed domain name <student-autodesk.com> (the "Domain Name") is registered with EuroDNS S.A. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2014. On August 14, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 19, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 19, 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 August 26, 2014.
The Center verified that the Complaint together with the 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 August 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 17, 2014.
The Center appointed Ian Lowe as the sole panelist in this matter on September 24, 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 has since at least February 1983 sold a range of computer software programs including Autodesk, AutoCAD and up to 52 other products. It is the proprietor of numerous registrations around the world in respect of the trademark Autodesk including United States trademark number 1316772 registered on January 29, 1985 and Community trademark registration number 004036687 registered on July 24, 2006. As a result of using the mark in commerce since at least February 1983, the Complainant has accrued substantial unregistered trademark rights in respect of AUTODESK. The Complainant sells licenses all over the world for its various software products that incorporate the mark into their name and/or include the mark in product packaging. The Complainant has spent millions of dollars to advertise and promote its products around the world under the mark. There are now over 9 million users of the Complainant's products.
The Complainant maintains a website at "students.autodesk.com" which resolves to a webpage where the Complainant offers student versions of Autodesk software products to qualifying students.
The Domain Name was registered on January 7, 2008. In response to the request by the Center for registrar verification in connection with the Domain Name, the Registrar disclosed the Respondent Wanzhongmedia, as the underlying registrant.
At the date of the Complaint, the Domain Name resolved to a website featuring sponsored links to various third-party website selling products and services unrelated to the Complainant and sponsored links including advertisements for products that directly compete with the Complainant's products. In addition, the website included a hyperlink comprising the text "BUY THIS DOMAIN. The domain student-Autodesk.com may be for sale by its owner!". Clicking on the hyperlink redirected users to a webpage maintained by third party Sedo.com where the Domain Name was available for purchase for a "Sales Price" of EUR 300 (USD 400).
5. Parties' Contentions
The Complainant contends that the Domain Name is confusingly similar to its AUTODESK trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has undoubted, uncontested rights in the trademark AUTODESK both by virtue of its various trademark registrations and as acquired through widespread use in many countries of the world for over 30 years. Ignoring the suffix ".com" for this purpose, the Domain Name comprises the trademark AUTODESK together with the prefix "student". The generic term "student" does not detract from the distinctiveness of the AUTODESK trademark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark or marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent can have no rights or legitimate interests in respect of the Domain Name. There is no question of the Respondent being known by a name which comprises AUTODESK or of the Respondent being authorised to use a domain name comprising the mark. The use to which the Respondent is putting the Domain Name, for a website comprising sponsored links to various software products, including products of competitors of the Complainant, does not indicate any rights or legitimate interests in respect of the Domain Name. The Respondent has chosen not to respond to the Complaint or to put forward any explanation as to what rights or legitimate interests it may have. It has therefore entirely failed to displace the prima facie case made out by the Complainant.
In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
In view of the notoriety and widespread global use of the mark by the Complainant, the Panel considers that it is inconceivable that the Respondent was not aware of the Complainant and its rights in respect of the AUTODESK mark at the time it registered the Domain Name. The Respondent has used the Domain Name for a website comprising sponsored links and the Panel considers that by using the Domain Name for such a website the Respondent has intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Name with the purpose of attracting Internet users to the website, for commercial gain, directing users to third party websites through pay-per-click advertising. In addition, the Respondent has caused the Domain Name to be offered for sale for a sum in excess of out of pocket expenses.
In the Panel's view, the Respondent's use of the Domain Name amounts to exploitation of the Complainant's trademark with a view to commercial gain and to paradigm bad faith use for the purposes of the Policy, particularly with regard to paragraph 4(b)(iv) of the Policy.
In the circumstances, the Panel finds that the 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 <student-autodesk.com> be transferred to the Complainant.
Date: October 3, 2014