WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Domain Administrator / Top Business Names
Case No. D2015-1950
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 Domain Administrator / Top Business Names, of Grand Cayman, the Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and the Northern Ireland.
2. The Domain Name and Registrar
The Disputed Domain Names <autocadcom.com>, <autocaddrafter.com> and <autocaddrafting.com> are registered with Rebel.com Corp. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 30, 2015. On October 30, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 6, 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 November 10, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on December 9, 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, a corporation set up under the laws of the State of Delaware in the United States of America ("U.S."), has since 1983 continuously marketed and licensed to the public worldwide, computer software programs, associated manuals and related documentation.
The Complainant owns, in particular, the following trademarks (the "Trademarks") for many goods and services in connection with its services:
- The U.S. trademark AUTOCAD No. 1316773 registered on January 29, 1985.
- The Benelux trademark AUTOCAD No. 465001 registered on May 30, 1989.
- The Canadian trademark AUTOCAD No. TMA324983 registered on March 20, 1987.
- The Chinese trademark AUTOCAD No. 307895 registered on May 6, 1987.
- The Community trademark AUTOCAD No. 4036745 registered on July 17, 2006.
The Disputed Domain Names <autocadcom.com>, <autocaddrafter.com> and <autocaddrafting.com> were registered respectively on July 10, 2006, July 15, 2006, and June 8, 2007. At the time the Complaint was filed, the websites at the Disputed Domain Names redirected to parking pages displaying sponsored links.
5. Parties' Contentions
The Complainant asserts that it has registered several trademarks for AUTOCAD in a number of countries.
Since 1983, the Complainant has continuously used the Trademarks in connection with its commercial offering of licensed copies of computer software programs, associated user manuals, and related documentation.
The Complainant sells software all over the world. It has spent millions of dollars to advertise and promote products bearing the Trademarks, has distributed more than 9 million standalone copies of software bearing the Trademarks, and at least 8.5 million additional copies of software bundled into suites including software bearing the Trademarks.
According to the Complainant, the Disputed Domain Names are confusingly similar to the Trademarks seeing as they incorporate the Trademarks in their entirety and that the addition of common terms and a generic Top-Level Domain ("gTLD") such as ".com" does not sufficiently distinguish the Disputed Domain Names from the Trademarks.
The Complainant has exclusive and prior rights in the Trademarks and the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. Indeed, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Trademarks.
The Disputed Domain Names redirect to parking pages displaying sponsored links.
The Complainant contends that the Respondent registered the Disputed Domain Names in bad faith. At the time of registration of the Disputed Domain Names, and because they consist of the reproduction of the Trademarks, the Respondent had constructive knowledge of the Trademarks. The Respondent has intentionally chosen the Disputed Domain Names based on the Trademarks in order to disrupt the Complainant's business.
The Complainant tried to contact the Respondent. The Respondent did not reply.
The Respondent is deliberately using the Disputed Domain Names in connection with the Trademarks in order to mislead consumers by creating a likelihood of confusion as to the source, affiliation or endorsement of the Respondent's website.
The Complainant contends that the Respondent has specified false contact information in the WhoIs registration records for the Disputed Domain Names.
The Complainant's belief that the Respondent registered the Disputed Domain Names in bad faith is reinforced by the fact that the Respondent has a well-documented history of abusive domain name registrations containing third parties' trademarks.
For the foregoing reasons, the Complainant requests that the Disputed Domain Names be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant's contentions and is therefore in default.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The Respondent did not reply to the Complainant's contentions. However, as set out in paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ("WIPO Overview 2.0"), the consensus view of UDRP panelists is that a respondent's default does not automatically result in a decision in favor of the complainant. Although, the Panel may draw appropriate inferences from a respondent's default, paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding.
In order to obtain the transfer of the Disputed Domain Names and according to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) The Disputed Domain Names are 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 Disputed Domain Names;
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
At the same time, in accordance with paragraph 14(b) of the Rules:
"(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate".
The Panel finds that in this case there are no such exceptional circumstances. Consequently, failure on the part of the Respondent to file a response to the Complaint permits an inference that the Complainant's reasonable allegations are true. It may also permit the Panel to infer that the Respondent does not deny the facts that the Complainant asserts (see Harrods Limited v. Harrod's Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in a trademark and secondly that the Disputed Domain Names are identical or confusingly similar to such trademark.
The Panel is satisfied that the Complainant is the owner of a variety of registered trademarks for AUTOCAD, including the examples cited in the Factual Background. The Panel therefore turns to the second part of the inquiry.
It is well-established that "a domain name that wholly incorporates a Complainant's registered trademark may be sufficient to establish confusing similarity for purposes of the UDRP" (see Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888).
Here, the Disputed Domain Names incorporate the Trademarks in their entirety with the mere addition of the generic terms "com", "drafter", and "drafting".
However, the mere addition of these non-distinctive terms does not sufficiently distinguish the Disputed Domain Names from the Trademarks.
Indeed, "the weight of authority of past panel decisions have established that a domain name incorporating a trademark in its entirety with the addition of non-distinctive prefixes or suffixes is generally not distinguishable from the trademark" (see Wikimedia Foundation Inc. v. commens, Nan Jiang, WIPO Case No. D2009-1699).
Regarding the addition of the gTLD ".com" to the Disputed Domain Names, it is well-established that gTLDs may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
Indeed, "a principle which applies to all the domain names is that the addition of generic Top-Level Domains (gTLDs) or country code Top-Level Domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trade mark(s) in issue. This has been clearly established from the beginning of the UDRP process, and now is no longer an issue. Thus, the addition of various types of gTLDs to the domain names ('.com', '.net') does not change the assessment of confusing similarity" (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
In these circumstances, the Panel finds that the Disputed Domain Names are confusingly similar to the Trademarks and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by a respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has made out such a prima facie case.
The Respondent is not an authorized dealer, distributor or licensee of the Complainant and has been given no other permission from the Complainant to use the Trademarks.
The Respondent's name does not bear any resemblance to the Disputed Domain Names nor is there any basis to conclude that the Respondent is commonly known by the Trademarks or the Disputed Domain Names. Furthermore, there is no evidence that the Respondent has made demonstrable preparations to use or is using such terms in connection with a bona fide offering of goods and services.
The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names in light of the Complainant's evidence that the Respondent's intention was to benefit from the Trademarks' reputation to disrupt the Complainant's business.
The Respondent has not rebutted this by way of a Response or otherwise and the way that the Respondent has been "using" the Disputed Domain Names, see below under section C, does not support a finding of rights or legitimate interests.
In all of these circumstances, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the Disputed Domain Names and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location".
The Complainant has shown long and extensive use of the Trademarks; the Disputed Domain Names resolve to a parking page displaying sponsored links.
In the Panel's view, the Respondent had, necessarily, constructive knowledge of the Trademarks when registering the Disputed Domain Names since the Trademarks have been used for over 10 years at the time of registration of the Disputed Domain Names.
Indeed, "had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration" (see Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384).
In the absence of any explanation from the Respondent, the Panel finds it more likely than not that the Respondent intentionally registered domain names identical to the Trademarks to benefit from the good will associated with the Trademarks and is using the Disputed Domain Names to intentionally attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Trademarks.
"It is well-established in UDRP decisions that 'initial interest confusion' and the resultant misdirection of Internet traffic to respondent is independently sufficient to establish bad faith" (see Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784).
Additionally, the Panel finds further evidence of bad faith on the part of the Respondent in the fact that the Respondent has engaged in a pattern of registering and using domain names incorporating trademarks or variants thereof of third parties to redirect Internet users in particular to parking pages displaying sponsored links.
A review of reported domain name cases reveals that the Respondent is a company that actively registers domain names. Further, the Panel accepts, absent any response from the Respondent, that the latter has a history of abusive registration and use of domain names that incorporate third parties' trademark rights, as contended by the Complainant. In this respect, the Respondent has been ordered to transfer disputed domain names in numerous UDRP cases (see, e.g., Hunkemöller B.V. v. Top Business Names, WIPO Case No. D2011-0362).
Noting that the Disputed Domain Names incorporate the Trademark, with the addition of the non-distinctive terms "com", "drafter", and "drafting", together with the gTLD ".com"; that no Response has been filed; that there appears to be no plausible good faith use that could be made by the Respondent of the Disputed Domain Names, and considering all the facts and evidence submitted by the Complainant, the Panel finds that 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 Names, <autocadcom.com>, <autocaddrafter.com> and <autocaddrafting.com>, be transferred to the Complainant.
Date: December 22, 2015