WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Domain Hostmaster, Customer ID: 33460564577161, Whois Privacy Services Pty Ltd / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT
Case No. D2016-1967
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Fitzgerald, United States of America (“U.S.”).
The Respondent is Domain Hostmaster, Customer ID: 33460564577161, Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT, Isle of Man, the United Kingdom of Great Britain and Northern Ireland (“UK”).
2. The Domain Name and Registrar
The disputed domain name <freeautocadsoftware.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2016. On September 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2016, 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 October 6, 2016 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 October 11, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 October 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2016.
The Center appointed Jon Lang as the sole panelist in this matter on November 11, 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 is a Delaware corporation with its principal place of business in California. It owns the registered trademark, AUTOCAD (the “Mark”) and has trademark registrations in several countries around the world, e.g. U.S. trademark registration number 1316773 granted on January 29, 1985, Australian trademark registration number 416437 granted on February 7, 1989, and European Union Trade Mark registration number 004036745 granted on July 17, 2006. The Complainant maintains that, by virtue of its use (as further described below), it also owns common law rights in the Mark.
In 1998, the Complainant registered <autocad.com> as a domain name, which it has owned and used to advertise its AutoCAD software products.
The domain name in dispute, <freeautocadsoftware.com> (the “Domain Name”) was registered on June 2, 2002.
5. Parties’ Contentions
For nearly three decades, the Complainant has used the Mark in connection with its commercial offering to the public of licensed copies of computer software programs, associated user manuals and related documentation. For decades, the Complainant has incorporated the Mark into the names applied to many of its software products, including its AutoCAD software. The Complainant sells licenses all over the world and on every continent for its various software products that incorporate the Mark and today there are over nine million users of its products. To accommodate its user base, the Complainant works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers. The Complainant has spent millions of dollars to advertise and promote its products which incorporate the Mark in their names.
The Complainant has never authorized the Respondent, nor anyone doing business as “freeautocadsoftware.com” to incorporate the Mark into the Domain Name, or use it in any website to which the Domain Name resolves, or in any other capacity. It is not affiliated with the Respondent or its offerings.
When the Complainant filed its original Complaint, the Domain Name resolved to a parking webpage containing links to other webpages within the Respondent’s website, which displayed nothing but commercially sponsored text such as “Free AutoCAD Software” and “Free Download AutoCAD Software.” When a user clicked on one of the links, they were redirected to a secondary page containing sponsored links under the heading “Ads”, which in turn led users directly to third party-websites selling various products and services, many of which directly competed with the Complainant’s products.
The Domain Name indicates to Internet users that free copies of the Complainant’s AutoCAD software are available, yet the retail price of a license for AutoCAD 2016 software when it was released was USD 4,195. In 2012, the Complainant tried repeatedly to contact the Respondent but received no response.
Following the filling of the Complaint, the Respondent changed the landing page of its website. Its text stated “Search whatever you’re looking for!,” and the page contained a dialog box asking the user to submit an email address in order to continue to other pages. In addition, an “About Us” link at the bottom of the new landing page led to a webpage that stated (in part): “We are an online marketing company . . . Sometimes we frame third party advertisers and marketer’s third-party website [sic], and sometimes we host their content as well. In any event however, our only role is to collect the Personal Information and facilitate its transmittal to the third party advertisers and/or marketers, and for this service, we receive remuneration which is usually in the form of a commission or referral fee usually contingent upon you entering into a transaction with the third party for goods or services”.
The Domain Name Is identical or confusingly similar to the Mark
The Complainant has rights in the Mark (as earlier described) and the Domain Name, ignoring the suffix, is identical or confusingly similar to the Mark. It consists of three words: “free,” autocad,” and “software.” The Complainant’s Mark is the dominant word and “free” and “software” do nothing to detract from or contradict the Mark’s function as an indication of origin relating to the Complainant.
The Respondent chose the Domain Name precisely because it entirely incorporates the Mark and by that incorporation the Respondent has tried to intentionally and improperly: (a) capitalize on and cause confusion in connection with Internet users seeking the Complainant’s official webpage where it advertises and markets its AutoCAD software and which has been accessible through its autocad.com domain name since 1998; and (b) use the Domain Name as a vehicle to lure Internet users to sponsored links leading to third-party advertisements for products that compete directly with the Complainant’s products.
The Respondent has no right or legitimate interest in the Domain
The Policy provides that rights or legitimate interests in a domain name can be established if a respondent demonstrates that before receiving notice of the dispute, it used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services, or has been commonly known by the domain name, or is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or tarnish the complainant’s mark. The Respondent cannot demonstrate any legal right to or legitimate interest in the Domain Name by reference to any of these criteria. There is no relationship between the Complainant and Respondent, the Respondent knew of should have known of the Complainant’s rights in the Mark and what the Respondent does (or has done) cannot be described as a bona fide offering. Moreover, there is no evidence to suggest that the Respondent has ever been called by any name incorporating the Mark or been commonly known by the Mark or the Domain Name. Furthermore, it cannot be said that the Respondent is making legitimate noncommercial or fair use of the Domain Name. The Respondent’s use has always been commercial with the intention of misleadingly diverting consumers, looking for the Complainant or its software products, to its own website and ultimately, through sponsored links, to third party websites advertising products that directly compete with those of the Complainant. Finally, it cannot be said that there is “fair” use, despite any links which may have existed on the Respondent’s website also promoting the Complainant’s products (as well as those of its competitors).
Respondent registered and is using the Domain in bad faith
Registration of a well-known trademark as a domain name can be a clear indication of bad faith in itself. Such is the case here with registration of the Domain Name almost twenty years after the Complainant began obtaining its registered and common law rights in the Mark. It would be quite implausible for the Respondent to assert that it innocently registered the Domain Name in good faith and without knowledge of the Complainant’s rights, particularly when the dominant component of the Domain Name is the Complainant’s Mark, another word in the Domain Name specifically describes the Complainant’s products (i.e. software), and the Respondent has been using the Domain Name to advertise products that compete directly with the Complainant’s products.
Until this proceeding began, and almost certainly now as well, the Respondent has used a sponsorship scheme in connection with its website to promote third party businesses whose products and services compete directly with those of the Complainant. The Respondent trades off of the Complainant’s Mark’s fame by using it, without authorization, to attract for commercial gain users to its website and to then send those users, via sponsored links, to third parties’ websites marketing products that directly compete with the Complainant’s products.
The Respondent has sought to trade on the Complainant’s goodwill in its well-known Mark for the purpose of attracting to the Respondent’s website Internet users expecting to find a website operated by or in some way affiliated with Complainant. The Respondent’s opportunistic bad faith is clear.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the AUTOCAD trademark.
Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant’s AUTOCAD trademark, preceded by the word “free,” and followed by the word “software.”
As the AUTOCAD trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the disputed domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognizable as such within the disputed domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the disputed domain name.
The well-known AUTOCAD trademark is clearly recognizable within the Domain Name. The words that precede and follow it (“free” and “software” respectively) are generic or descriptive in nature and do nothing to render the Domain Name anything other than confusingly similar to the Complainant’s AUTOCAD trademark.
The Panel finds that the Domain Name is confusingly similar to the AUTOCAD trademark for the purposes of the Policy and thus paragraph 4(a)(i) (of the Policy) has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to ask whether there would be anything inappropriate in such a finding. The answer to that question is a resounding “no”. It is difficult to conceive of any argument that could be advanced in the circumstances that would assist the Respondent. Using a confusingly similar domain name to attract Internet users to a website containing links that further the sale of competing products (to those of the owner of the trademark to which the domain name is confusingly similar), without any legitimate excuse or connection between the parties, is unlikely to provide a back-drop against which a case of rights or legitimate interests could be made out for the purposes of defeating a complaint under the Policy.
In the circumstances, the Panel concludes that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. (See paragraph 4(b)(iv) of the Policy).
Given the use to which the Domain Name has been put, it is beyond peradventure that the Respondent was aware of the Complainant’s AUTOCAD trademark. The purpose behind the registration appears to have been to attract Internet users to the Respondent’s website using a domain name confusingly similar to the Complainant’s AUTOCAD trademark. In other words, precisely the circumstances envisaged above. Even if the Respondent were to argue that the precise format of its webpage, including the links or content that appears, was determined by others, it has made the Domain Name available for use in the manner it has been (no doubt for reward) and must suffer the consequences (see paragraph 3.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <freeautocadsoftware.com> be transferred to the Complainant.
Date: November 22, 2016