WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Web Admin, Ebills Online Services
Case No. D2015-1358
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Fitzgerald LLP, United States.
The Respondent is Web Admin, Ebills Online Services of Mexico City, Mexico.
2. The Domain Name and Registrar
The disputed domain name <autocadzone.com> is registered with Rebel.com Corp. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2015. On August 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 20, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2015.
The Center appointed Andrea Dawson as the sole panelist in this matter on October 7, 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, since 1983, has continuously used the trademark AUTOCAD in connection with commercial offering to the public of licensed copies of computer software programs and associated user manuals.
The Complainant has continually used its trademark AUTOCAD in commerce for more than three decades.
The Complainant has obtained trademark registrations covering its AUTOCAD mark from at least seventy-six different countries dating back to 1985.
The Complainant has incorporated the AUTOCAD trademark into the names of its software products that include without limitation those products named AutoCAD software and at least fifty-two other products registered with the United States Copyright Office.
The Complainant has distributed at least 9.3 million standalone copies, and at least 8.5 million additional copies bundled into suites, of its products that have the AUTOCAD mark incorporated into their names and/or include the mark in the product packaging.
The Complainant has owned the <autocad.com> domain name since 1998.
The disputed domain name <autocadzone.com> was registered on July 20, 2015.
5. Parties’ Contentions
The Complainant states that it is the owner of the trademark AUTOCAD and that the disputed domain name <autocadzone.com> is a total reproduction of the Complainant’s trademark, plus the generic term “zone”. The addition of the generic word does nothing to dispel the connection in the public’s mind between the AUTOCAD mark and the Complainant.
The Complainant indicates that it has not licensed or otherwise authorized the Respondent to use the AUTOCAD mark as part of the Respondent’s domain name. Nevertheless the Respondent has registered the disputed domain name <autocadzone.com> that incorporates in its entirety the Complainant’s distinctive AUTOCAD mark.
The Complainant adds that the Respondent currently is not using the disputed domain name for a noncommercial purpose. An expectation of developing a legitimate noncommercial interest in a domain name is insufficient to defeat the prima facie case that the use is unauthorized.
The Complainant indicates that the Respondent knew or clearly should have known of the Complainant’s exclusive rights because the disputed domain name is a world famous trademark, used around the globe for more than three decades, and because the Respondent is using the disputed domain name to precisely advertise third-party products that directly compete with the Complainant’s products.
The Complainant additionally states that the website at the disputed domain name currently contains pay-per-click (PPC) hyperlinks that lead to advertisements for products that directly compete with the Complainant’s products.
The Complainant finally states that by using the disputed domain name, the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Consequently, in view of the above-mentioned circumstances, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and used the disputed domain name in bad faith. The Complainant requests that the Panel order transfer of the disputed domain name to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in its claim, a complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the domain name in dispute 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 with respect to the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Complainant has been able to demonstrate that it has rights to the trademark AUTOCAD. Though the Complainant did not provide any printouts or copies of its trademark registrations, it did provide the trademark registration numbers and the Panel was able to verify the veracity of such registration available on various trademark offices online database.
The disputed domain name consists of the term “autocad”, with the addition of the generic term “zone”. As indicated by the Complainant, previous UDRP panels have found that the mere addition of a generic term to a trademark is not sufficient to eliminate the confusing similarity with the mentioned trademark.
For the above-cited reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the domain name, in the absence of which the panel is entitled to rely on the complainant’s prima facie case that the respondent lacks such rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; see also Dow Jones & Company (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704).
The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard. The Panel will consider the arguments of the Complainant that the Respondent did not have any registered trademark or service mark corresponding to the disputed domain name. That the Respondent is not commonly known by the name “Autocad”, is not in any way affiliated with the Complainant, authorized or licensed to use the AUTOCAD trademark, nor authorized to seek registration of any domain name incorporating said trademark. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but intentionally misleading consumers to its website for commercial gain.
The Panel has reviewed the evidence provided by the Complainant and can conclude that the Respondent was not making a legitimate use of the disputed domain name since the website contained pay-per-click (PPC) hyperlinks that lead to advertisements for products that directly compete with the Complainant’s products.
Consequently, the Panel finds that the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of registration and use of the disputed domain name in bad faith.
The Panel considers that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with the knowledge of the Complainant’s rights in the AUTOCAD trademark and that the Respondent’s bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant’s trademarks at the time of the registration of the disputed domain name.
As mentioned by the Complainant, it is unlikely that the Respondent was unaware of the Complainant when it registered the disputed domain name, since the Complainant owns numerous trademarks that are well known throughout the world; therefore, in the Panel’s assessment, it is unlikely to conclude that the Respondent did not have this trademark in mind when registering the disputed domain name.
The Complainant demonstrated that it has registered and actively uses the domain name <autocad.com> and also that the Complainant has social media presence easily found through Internet searches under the terms “Autocad” or similar. Therefore, the Respondent was likely aware, or should have been aware, of the Complainant due to its extensive use in connection with the AUTOCAD mark.
As prior UDRP panels have established the registration of a domain name incorporating a well-known trademark for the trademark value is indication of bad faith registration, and in this particular the fact that the term “Autocad” has no particular meaning or significance in any language, being clearly a coined word plus the fact that the disputed domain name resolves to a website that contains links to third-party advertisements for products that directly compete with the Complainant’s products, it is impossible for this Panel to reach any other conclusion than that the Respondent registered and is using the disputed domain name in bad faith.
In addition to the above, the Panel accepts the arguments of the Complainant that the disputed domain name was registered and used in bad faith since the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent uses the disputed domain name to direct Internet users to a website which contains PPC hyperlinks to computer hardware and software, and furthermore, it displays links to direct competitors of the Complainant. These PPC links are likely to generate revenues. Therefore, the Panel is of the opinion that the Respondent is taking undue advantage of the Complainant’s trademark to generate profits.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; consequently, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
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 <autocadzone.com> be transferred to the Complainant.
Date: October 22, 2015