WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Whois Privacy Protection Services, Inc. / Kelly Chow, Home
Case No. D2015-1300
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“USA”), represented by Donahue Fitzgerald LLP, USA.
The Respondent is Whois Privacy Protection Services, Inc. of Kirkland, Washington, USA / Kelly Chow, Home of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <autocadweb.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2015. On July 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 August 4, 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 August 12, 2015.
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 14, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on September 17, 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.
The Respondent has used a privacy service which means that his identity was not discovered until after the original Complaint had been filed.
4. Factual Background
The Complainant for some 30 years has marketed and licensed to the public worldwide, computer software programmes, associated user manuals and related documentation using the mark AUTOCAD.
The Complainant, which has its principal place of business in California, first obtained a United States Trademark registration for AUTOCAD on January 29, 1985. Since then, it has obtained registrations for that mark in 76 different countries. There are over 9 million users of the Complainant’s products worldwide. The Complainant has spent millions of dollars in advertising and promoting its products and has distributed some 9.3 million standalone copies and some 8.5 million bundled copies of its products, all incorporating the Complainant’s trademarks. It has owned the domain name <autocad.com> since 1998, through which it conducts online sales of its products.
The disputed domain name resolves to a parked website which contains nothing but sponsored links. Through means of these links, Internet users are directed to other webpages called “sponsored listings” which lead Internet users to the websites of third parties selling products and services unrelated to those of the Complainant. Some of these third party products directly compete with the Complainant’s products.
The Complainant had some negotiations with the Respondent about the sale of the disputed domain name. In one communication, the Respondent admitted that he registered the disputed domain name with the intention of selling it. Negotiations ended when the Respondent offered to sell the disputed domain name for USD 20,000, an offer which the Complainant rejected.
The Complainant presented two declarations made under penalty to support its case. They were most comprehensive and helpful to the Panel.
5. Parties’ Contentions
The disputed domain name is confusingly similar to the Complainant’s trademark.
The Respondent was given no right to reflect the Complainant’s trademark in the disputed domain name. None of the situations in paragraph 4(c) of the Policy apply.
The Respondent registered and is using the disputed domain name in bad faith. It must have known of the Complainant’s worldwide reputation and the international fame of its mark. The long notoriety of the mark makes it unlikely that the Respondent would not have known of it at the date of registration of the disputed domain name.
The Respondent is causing confusion for Internet users by displaying products which compete with the Complainant’s through websites accessed by the disputed domain name. See paragraph 4(b)(iv) of the Policy. The Respondent has shown opportunistic bad faith by registering the disputed domain name, obviously connected with a well-known product.
The Respondent shows bad faith by his offer to sell the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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 disputed domain name is confusingly similar to the Complainant’s mark. It incorporates the trademark in full and has the generic addition of the term “web”. This addition does nothing to dilute the confusing similarity and rather enhances it.
Paragraph 4(a)(i) of the Policy is established.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no authority to reflect the registered trademark in the disputed domain name.
In the absence of any claim by the Respondent that one or other of the situations set out in Paragraph 4(c) of the Policy applies to it, the lack of authority from the Complainant is sufficient. The Respondent could have filed a Response but did not do so.
Accordingly, paragraph 4(a)(ii) of the Policy is established.
C. Registered and Used in Bad Faith
This is just another case where a Respondent has been guilty of “opportunistic bad faith”.
Registering domain names confusingly similar to a trademark, used worldwide to market a complainant’s goods and services plus providing links on the website accessed by the disputed domain name to purchase goods and services of a competitor is a technique employed by many respondents in proceedings under the Policy. Panels have had little difficulty over the years in detecting this blameworthy conduct and making appropriate transfer orders to reduce the consequences for trademark owners.
In the present case, the disputed domain name is registered by the Respondent which are obviously connected with a universally-known product and is used by someone with no connection with the Complainant or its products.
Bad faith registration and use can therefore easily be inferred from such conduct. See, e.g., Go Daddy Software Inc v. Internet Masters, WIPO Case No. D2002-0570. Bad faith can also be inferred from the obvious confusion caused to Internet users who may think that the Respondent’s website has some connection with or authorization from the Complainant.
The Respondent’s offer to sell the disputed domain name for USD 20,000 is another clear indication of bad faith.
Accordingly, paragraph 4(a)(iii) of the Policy is established.
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 <autocadweb.com> be transferred to the Complainant.
Sir Ian Barker
Date: September 30, 2015