WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Milo Kram
Case No. D2016-1779
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America ("United States") represented by Donahue Fitzgerald, United States.
The Respondent is Milo Kram of Montpellier, France.
2. The Domain Name and Registrar
The disputed domain name <autocad-2016-crack.com> is registered with OVH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2016. On September 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2016, following several exchanges of emails with the Center, 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, and confirming that the language of the Registration Agreement for the disputed domain name is French. On September 21, 2016 the Center sent an email communication regarding the language of the proceeding to the Parties in English and French and invited them to comment on the language of the proceeding. On September 23, 2016, the Complainant requested that English be the language of the proceeding. The Respondent made no submission in this regard. On October 4, 2016, the Complainant filed an amended Complaint to correct an administrative formality.
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 and 4, the Center formally notified the Respondent in both English and French of the Complaint, and the proceedings commenced on October 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 28, 2016.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 3, 2016. 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 United States corporation with its business operations located in the State of California, is in the business of offering software products. It owns the AUTOCAD trademark that was registered on January 29, 1985 under class 9 of the Nice Classification with a filing date on April 9, 1984 under the United States Patent and Trademark Office ("USPTO") registration number 73474423.
On July 24, 2015, the Respondent registered the disputed domain name <autocad-2016-crack.com>.
At the date that the Complaint was submitted, the disputed domain name did not resolve to any website, but previously resolved to a website displaying advertised tools and instructions to download and install free and unauthorized copies of various of the Complainant's products, including its "AutoCAD 2016" software.
The Complainant tried to get in contact with the Respondent on numerous occasions. The Respondent has never responded; the Respondent removing from public access the piracy-related website presumably after having received those communications.
5. Parties' Contentions
The Complainant first argues that the disputed domain name is confusingly similar to its AUTOCAD trademark as it entirely incorporates the Complainant's trademark and that the addition of the generic terms "2016" and "crack" do not exclude the likelihood of confusion resulting from such incorporation.
The Complainant then asserts that it is not affiliated in any way with the Respondent, that it has never authorized the latter to use its AUTOCAD trademark, that the Respondent has never been commonly known by that name and that the Respondent did not make any bona fide offering of goods under the disputed domain name. The Complainant further argues that to enable users to obtain and install unauthorized copies of the Complainant's products cannot be considered a bona fide offering of goods.
The Complainant finally affirms that the Respondent was obviously aware of its AUTOCAD trademark at the time it registered the disputed domain name considering its fame and that the use made to distribute unauthorized copies of its software products amounts to a usage in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Prior to turning to the merits of the case, the Panel however has to address a formal issue:
6.1. Language of the Proceeding
On September 21, 2016, the Center sent an email to the Complainant informing it that the language of the Registration Agreement in this case is French and that the Complaint was filed in English. As a result, the Center invited the Complainant to provide at least one of the following: (1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in French; or (2) submit the Complaint translated into French; or (3) submit a request for English to be the language of the administrative proceedings. The Respondent was further invited to comment on the language of the proceeding.
On September 23, 2016, the Complainant submitted a request for English to be the language of the administrative proceeding which the Respondent did not oppose.
Absent any Response or reaction from the Respondent, the Panel is not in a position to assess whether the Respondent understands the English language. Considering that the website originally affiliated to the disputed domain name was entirely in English and that the Respondent had ample opportunity to oppose the proceeding being held in English if it wanted to do so, the Panel sees no reason to oppose the use of English as the language of the proceeding.
Considering the above, the Panel accepts the Complaint in English and shall render its decision in English.
6.2. Substantive Issues
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of a trademark consisting of AUTOCAD, which has been in use since 1984.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purposes of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000‑0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002‑0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007‑1629).
This is all the more true when the inserted trademark consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive. UDRP panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP's first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name (paragraph 1.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, that may apply by analogy to this case ("WIPO Overview 2.0")).
Such happens to be the case here, where the terms "2016" and "crack" are generic or largely descriptive of the unauthorized products that used to be offered by the Respondent.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent UDRP panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1, WIPO Overview 2.0).
In the present case, the Complainant is the owner of the AUTOCAD trademark. The Complainant has no business or other relationships with the Respondent, who has not been duly authorized by the Complainant to use its trademarks.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On his side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent, based on the available record, is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, but rather used the disputed domain name to distribute unauthorized copies of the Complainant's software, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith registration may be found where the respondent registered the disputed domain name with awareness of the complainant's trademarks. In the present case, the Complainant is the owner of the AUTOCAD trademark that has been in use since 1984 and whose strong reputation has to be admitted.
Considering such reputation and the use made of the disputed domain name, there is no doubt that the Respondent was fully aware of the AUTOCAD trademark when it registered the disputed domain name. Accordingly, the Panel finds that the disputed domain name was registered in bad faith.
The use originally made of the disputed domain name to offer the unauthorized download and installation of the Complainant's "AutoCAD" software products obviously amounts to a use of the disputed domain name in bad faith.
Consequently, the Panel is of the opinion that the disputed domain name <autocad-2016-crack.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) 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 name <autocad-2016-crack.com> be transferred to the Complainant.
Date: November 9, 2016