WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Xiaodong Wang1
Case No. D2014-1690
1. The Parties
Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald, United States.
Respondent is Xiaodong Wang of Dalian, Liaoning, China.2
2. The Domain Names and Registrar
The disputed domain names <autodeskbuying.com>, <autodeskbuys.com>, <autodeskmarket.com>, <autodeskonlinebuy.com>, <autodeskonlines.com>, <autodeskonlineshop.com>, <autodeskshopping.com>, <autodeskus.com>, <autodeskusers.com>, <autodeskusershop.com>, <autodeskusing.com> and <shopsautodesk.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2014. On September 29, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on October 14, 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 Respondent of the Complaint, and the proceedings commenced on October 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 5, 2014.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on November 7, 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
Complainant states, and provides declarations in support thereof, that it “sells licenses all over the world and on every continent for its various software products” using the trademark AUTODESK; that it “has distributed at least 9.3 million standalone copies, and at least 8.5 million additional copies bundled into suites, of its products”; that it operates a website using the domain name <autodesk.com> and offers its software for sale at a website using the same domain name; and that the United States retail price for its Autodesk AutoCAD 2014 software is USD 4,195.
Complainant states, and provides declarations in support thereof, that some of the Disputed Domain Names are offering for sale “illegal copies of Autodesk software sold in a manner unauthorized by Autodesk”; that other of the Disputed Domain Names are not associated with active websites; and that Complainant attempted to contact Respondent about many of the Disputed Domain Names, but Complainant’s communications were either undeliverable or resulted in no response.
Complainant states, and provides declarations in support thereof, that it is the owner of registrations for the trademark AUTODESK (the “AUTODESK Mark”) in “at least seventy-two (72) different countries,” including U.S. Reg. No. 1,316,772 (registered January 29, 1985).
The Disputed Domain Names were registered on and between March 21, 2012, and August 12, 2013.
5. Parties’ Contentions
Complainant contends, in relevant part, as follows:
- Each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which Complainant has rights because “[w]hen a domain [name] consists of a prefix or suffix appended to a well-known trademark, the inquiry into confusing similarity depends on the relative distinctiveness of the trademark and the non-trademark elements of the subdomains, and whether the nontrademark elements detract from or contradict the function of the trademark as an indication of origin.”
- Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because Complainant “is the exclusive owner of all rights in the [AUTODESK Mark]”; Complainant “has never granted Respondent (nor anyone known as any of Respondent’s [a]liases) any license, franchise, or other authorization to incorporate the [AUTODESK Mark] into the [Disputed] Domain [Names]”; “[a]ssociating a [d]omain incorporating another’s mark with a website that advertises the illegal purchase and distribution of illegal software products is not a bona fide offering of goods or services under Policy 4(c)(i)”; “[n]o evidence suggests Respondent, whether through Respondent’s name or any of Respondent’s [a]liases, has ever been called by any name incorporating the [AUTODESK Mark] or been ‘commonly known’ by the [AUTODESK Mark] or any of the [Disputed] Domain [Names]”; and “Respondent’s only purpose in registering the [Disputed] Domain [Names]and publishing Respondent’s… [w]ebsites has been to earn revenues and usurp the goodwill derived from the [AUTODESK Mark].”
- Each of the Disputed Domain Name has been registered and is being used in bad faith because, with respect to those of the Disputed Domain Names associated with websites selling illegal copies of Complainant’s software, “Panels have routinely found that a registrant's use of a domain name for per se illegal activities constitutes bad faith registration and use.” With respect to those of the Disputed Domain Names that are associated with inactive websites, “Panels have consistently found that the passive holding of a domain name can constitute bad faith and use.”
The Respondent did not reply to the Complainant’s contentions.3
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. Policy, paragraph 4(a).
A. Procedural Issue: Respondent’s Identity
Complainant states, and provides a declaration in support thereof, that its “original Complaint in this proceeding” was filed on July 31, 2014, at which time the registrant of all of the Disputed Domain Names was identified in the Whois database as “Xiaodong Wang.” Complainant further states: “Immediately after [Complainant] served Respondent on July 31, 2014 with the original Complaint and the annexes in support thereof, Respondent opportunistically took advantage of the Registrar’s delay in imposing locks on the Domains by changing the registrant contact information in the WHOIS database for each of the Domains. More specifically, Respondent… changed the registrant name and physical address for all the Domains to be different from each other.”4 The newly identified registrant names are as set forth in footnote 1 of this decision.5
Despite this change in the registrants’ names, Complainant states that “all the websites to which the Domains now resolve are identical or nearly the same as the websites to which the Domains resolved before Respondent made changes to the Domains’ WHOIS database records following Respondent’s receipt of [Complainant’s] original Complaint” and that “it is obvious that there is still but one registrant for all of the Domains – Respondent – who controls and administers each and every one of the Domains.”
As a result of the above, and based on the available record, Complainant “requests that the Center and the Panel recognize that Respondent is still the registrant of all the Domains despite Respondent’s transparent attempt, after receiving service of the original Complaint, to make it seem as though the Domains are now owned by different persons or entities. To do otherwise would unjustly reward Respondent for Respondent’s opportunism in changing the registrant information immediately after being served with [Complainant’s] original Complaint, and would substantially prejudice [Complainant] by causing it to incur significant delay and expense in needing to prosecute twelve different UDRP proceedings for the Domains.”
In light of the above, the Panel finds that it is appropriate to consider each of the named registrants as aliases for a single person or entity. See Barnes & Noble College Bookstores, Inc. v. Oleg Techino, WIPO Case No. D2006-1537 (finding 25 named entities for 25 domain names to be “fictitious and… in reality aliases for the [single] Respondent”); General Electric Company v. Marketing Total S.A, WIPO Case No. D2007-1834 (“the mere fact of registrants being differently named has, in various previous cases, not prevented a finding that there is one proper Respondent, in circumstances which indicate that the registrants may be regarded as the same entity in effect.”); and Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283 (“situations may arise in which multiple domain name holders should be equated with one domain name holder for the purpose of this provision, so that a complaint against more than one domain name holder should be allowed.”)
B. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, as well as supporting documentation, it is apparent that Complainant has rights in and to the AUTODESK Mark.
As to whether the Disputed Domain Names are identical or confusingly similar to the AUTODESK Mark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “autodeskbuying”, “autodeskbuys”, “autodeskmarket”, “autodeskonlinebuy”, “autodeskonlines”, “autodeskonlineshop”, “autodeskshopping”, “autodeskus”, “autodeskusers”, “autodeskusershop”, “autodeskusing” and “shopsautodesk”), as it is well-established that the generic Top-Level Domain (“gTLD”) suffix “.com” may be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
This Panel agrees here with the longstanding decision in Oki Data Americas, Inc. v. Asdinc.com, WIPO Case No. D2001-0903, which found that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.” Although each of the Disputed Domain Names contains one or more additional words, those words do nothing to distinguish the Disputed Domain Names from the AUTODESK Mark. As a previous panel wrote in Wikimedia Foundation Inc. v. commens, Nan Jiang, WIPO Case No. D2009-1699: “[A] wide variety of panelists have considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant.” Indeed, previous panels have found that domain names containing the same words as in the Disputed Domain Names are confusingly similar to relevant trademarks. See, e.g., Facebook, Inc. v. Andre Schneider / DomCollect AG, WIPO Case No. D2013-1183 (transfer of, inter alia, <facebookbuyingclub.com>); F. Hoffmann-La Roche AG v. Whois Agent, Whois Privacy Protection Service, WIPO Case No. D2014-0496 (transfer of <purchasevaliumonline.com>); and Swarovski Aktiengesellschaft v. Eva Brown, WIPO Case No. D2014-1146 (transfer of <swarovskioutlet-shop.com>).
Accordingly, the Panel finds that Complainant has proven the first element of the Policy.
C. Rights or Legitimate Interests
Complainant has argued that, inter alia, Respondent has no rights or legitimate interests in respect of any of the Disputed Domain Names because Complainant “is the exclusive owner of all rights in the [AUTODESK Mark]”; Complainant “has never granted Respondent (nor anyone known as any of Respondent’s [a]liases) any license, franchise, or other authorization to incorporate the [AUTODESK Mark] into the [Disputed] Domain [Names]”; “[a]ssociating a [d]omain incorporating another’s mark with a website that advertises the illegal purchase and distribution of illegal software products is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)”; “[n]o evidence suggests Respondent, whether through Respondent’s name or any of Respondent’s [a]liases, has ever been called by any name incorporating the [AUTODESK Mark] or been ‘commonly known’ by the [AUTODESK Mark] or any of the [Disputed] Domain [Names]”; and “Respondent’s only purpose in registering the [Disputed] Domain [Names]and publishing Respondent’s… [w]ebsites has been to earn revenues and usurp the goodwill derived from the [AUTODESK Mark].”
Under the Policy, “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.” WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant’s allegations and without any evidence from Respondent to the contrary, and in light of the discussion that follows, the Panel is satisfied that Complainant has proven the second element of the Policy.
D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
With respect to those of the Disputed Domain Names that are being used in connection with websites offering for sale purportedly illegal copies of Complainant’s software, Complainant argues that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because “[p]anels have routinely found that a registrant’s use of a domain name for per se illegal activities constitutes bad faith registration and use.” This panel agrees. As a previous panel wrote, “Respondent’s sale of counterfeit goods on a website accessible through the Domain Name is paradigmatic bad faith.” Wellquest International, Inc. v. Nicholas Clark, WIPO Case No. D2005-0552. See also Fabergé Ltd. v. Management Services, WIPO Case No. D2009-0425. This is certainly true with respect to software. See, e.g., Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434 (“Respondent obtains commercial benefit… through sales of pirated, illegal and unauthorized products”).
With respect to those of the Disputed Domain Names that are not being used in connection with active websites, Complainant cites the landmark decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, which established the test for bad faith in the event of a respondent’s “passive holding” of a domain name. In that case, the panel found bad faith as the result of the following circumstances:
(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use […];
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name;
(iv) the respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement; and
(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trademark law.
Here, this Panel similarly finds the presence of all five of these circumstances.
Accordingly, the Panel finds that Complainant has proven the third element 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 disputed domain names <autodeskbuying.com>, <autodeskbuys.com>, <autodeskmarket.com>, <autodeskonlinebuy.com>, <autodeskonlines.com>, <autodeskonlineshop.com>, <autodeskshopping.com>, <autodeskus.com>, <autodeskusers.com>, <autodeskusershop.com>, <autodeskusing.com> and <shopsautodesk.com> be transferred to Complainant.
Douglas M. Isenberg
Date: November 20, 2014
1 As stated herein, Respondent has also identified itself as Juanita Smith, Stacey Krupski, Heather Stephens, William Gainey, Harry Witte, Sara Rynski, Ken King, Bill Mohr, Joel Minamide, Brad Schaale, Chris Welbron and Will Cralle.
2 See footnote 1, supra, and the discussion regarding Respondent’s identity herein.
3 See discussion regarding Respondent’s identity, infra.
4 The Panel notes that a recent amendment to the Rules, announced by ICANN on November 17, 2014, and effective as of July 31, 2015, is intended to address exactly this type of cyberflight by, among other things, eliminating the requirement that a Complainant state in its Complaint that a copy of the Complaint has been sent to the respondent and requiring the registrar to lock the disputed domain name(s) prior to notifying the respondent of the complaint. See “Policy Implementation Update,” <https://www.icann.org/news/announcement-2014-11-17-en> (visited November 20, 2014).
5 One of the newly named registrants, Sara Rynski, submitted an e-mail to the Center on October 19, 2014, stating that she had been “a victim of identity theft,” which she suspected was related to her “accidental purchase” of a counterfeit product online. Ms. Rynski informed the Center that she had filed a complaint with the Internet Crime Complaint Center, apparently soon after learning of the Disputed Domain Name in this proceeding, in which she was named as a Respondent.