WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Tu Xiao Yu
Case No. D2017-0840
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America ("United States"), represented by Donahue Fitzgerald LLP, United States.
The Respondent is Tu Xiao Yu of Wenzhou, Zhejiang, China.
2. The Domain Names and Registrar
The disputed domain names <autocad.store> and <3dmax.store> are registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2017. On April 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 27, 2017, 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.
On April 30, 2017, the Center received an email communication in English from the Respondent.
On May 3, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On May 4, 2017, the Complainant filed an amended Complaint including its request that English be the language of the proceeding, to which the Respondent did not reply before the given due date. On May 11, 2017, the Center received an email in Chinese from the Respondent in which the Respondent requested, among others, to designate Chinese as the language of the proceeding.
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 of the Complaint in both Chinese and English, and the proceedings commenced on May 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2017. The Respondent did not submit any response save for its email communications dated April 30 and May 11, 2017. Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on June 1, 2017.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on June 9, 2017. 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 company incorporated in the United States and a developer and marketer of computer software and related products.
The Complainant has used the trade marks AUTOCAD and 3DS MAX (the "Trade Mark(s)") continuously since 1983 and 2001, respectively, in connection with its computer software and related products.
The Complainant is the owner of registrations for the Trade Marks in numerous jurisdictions worldwide, including United States registration number 1316773 for the Trade Mark AUTOCAD dating from January 29, 1985; and United States registration number 2733869 for the Trade Mark 3DS MAX dating from July 8, 2003.
The Respondent is an individual resident in China.
C. The Disputed Domain Name
The disputed domain names were both registered on the same date, June 14, 2016.
D. Use of the Disputed Domain Name
The disputed domain names have, at various times, been resolved to English language phishing websites; to English language third party commercial websites marketing products and services unrelated to those of the Complainant; and to English language websites providing sponsored links to third party commercial websites, including websites sponsored by <www.sedo.com> offering the disputed domain names for sale for USD 499 and USD 349, respectively.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Respondent did not file a formal Response, but stated in the Respondent's April 20, 2017 (English language) email to the Center as follows:
I am a great enthusiast of 3DMAX and AutoCAD. In order to build a software community for those developers who have the same enthusiasm as me, I registered 3dmax.store and autocad.store on June 14, 2016. My sponsering (sic) registrar is West Dimension Digital Technology Co. Ltd.
Our team has made a lot efforts to build two websites and also spent a lot of moeny (sic) on it since the first day we registered. Now we received a complain (sic), then my domain name was just locked. May we know what this "complainan" complain for and which agreement your behavior is according to? How can we unlock the two domain names?
We are willing to cooperate with you, please let us know any kind of information we need to submit when you verify domain name information…"
In the Respondent's Chinese language email to the Center dated May 11, 2017, the Respondent asserted that the Respondent registered the disputed domain names during the normal registration period and after the Sunrise Period had expired, in order to create software related community websites that are still under construction; asserted that the Respondent has spent USD 10,000 on developing its websites; and expressed the hope that the Complainant would be able to bear some of the Respondent's costs expended in such manner.
6. Discussion and Findings
6.1 Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel considers that the English language Websites together with the Respondent's English language email sent to the Center provide sufficient evidence for the conclusion that the Respondent is proficient in English.
The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner and, in this regard, is further persuaded to proceed in the English language by the inherent incredibility of the submissions in the Response.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should the language of the proceeding be English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2 Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.
The disputed domain name <autocad.store> comprises the Trade Mark AUTOCAD in its entirety and is therefore, excluding the generic Top-Level Domain ("gTLD") ".store" (in accordance with established UDRP practice), identical to the Trade Mark AUTOCAD.
The disputed domain name <3dmax.store> is confusingly similar to the Trade Mark 3DS MAX – the only differences being the omission of the letter "s", and the use of the gTLD ".store".
Accordingly, the first element under paragraph 4(a) of the Policy has been made out.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that the Respondent has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in relation to the Websites – including unlawful phishing websites, and websites with sponsored links to third party commercial websites.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and therefore finds that the requirements of paragraph 4(a)(ii) are met.
C. Registered and Used in Bad Faith
In light of the manner of use by the Respondent of the Websites described above, the Panel finds the requisite element of bad faith has been satisfied, in accordance with paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel has no hesitation in concluding that the disputed domain names have been registered and are being used 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 disputed domain names <autocad.store> and <3dmax.store> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: June 23, 2017