WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Brennan Phillips
Case No. D2017-0897
1. The Parties
The Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“USA” or “United States”), represented by Donahue Fitzgerald, USA.
The Respondent is Brennan Phillips of Canberra, Australia.
2. The Domain Names and Registrar
The disputed domain names <autocaddrawingviewer.com>, <autocadfileconverter.com>, <autocadfileviewer.com>, <autocadpdf.com>, <autocad-reader.com>, <autocadreader.net> and <autocad-viewer.net> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2017. On May 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 4, 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.
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 May 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2017.
The Center appointed Adam Samuel as the sole panelist in this matter on June 8, 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 software manufacturer and distributor. It owns a United States trademark for AUTOCAD (referred to hereafter as the “Complainant’s trademark”), registration No. 1316773, registered on January 29, 1985.
The disputed domain names were registered on May 20, 2011 except for <autocad-viewer.net> which was registered on May 19, 2011. The Complainant promotes its business through its domain name, <autocad.com>, registered on April 24, 1998. The websites to which the disputed domain names resolve have always been parking pages, some only of which contained click-through links to other websites.
5. Parties’ Contentions
All the disputed domain names are confusingly similar to the Complainant’s trademark, AUTOCAD, in that they contain that trademark along with various generic words that do not diminish the similarity between the Complainant’s mark and the disputed domain name. The addition of a generic Top-Level Domain (“gTLD”) is irrelevant to an analysis of confusing similarity under the Policy. When a sub-domain consists of a prefix or suffix appended to a well-known trademark and the prefix or suffix at issue is an ordinary word that does not dispel and only reinforces the connection in the public’s mind between the trademark and the Complainant, there is confusing similarity between the mark and the disputed domain name. This view is reflected in another case involving the AUTOCAD trademark. The disputed domain names each consist of the Complainant’s trademark and words such as “reader”, “viewer”, “drawing viewer”, “file converter” and “pdf”. These are all common software industry terms.
The Complainant never authorized the Respondent to incorporate their trademark into the domains or otherwise use their trademark. The Complainant is not connected in any way with the Respondent. Except for <autocadpdf.com>, each disputed domain name resolves to a parked webpage containing commercially sponsored links which contain links to third party advertisements and including those for various products that compete with the Complainant’s products.
The Respondent chose the disputed domain names precisely because they incorporate the Complainant’s trademark to capitalize and cause confusion to customers seeking the Complainant’s official webpage where the Complainant markets its AUTOCAD software. The Respondent aims to use the disputed domain names to lure the Complainant’s customers to the sponsored links to the Complainant’s competitors’ products.
The Respondent has registered nine domain names all containing the Complainant’s trademark which is an invented word with no meaning other than as a name of many of the Complainant’s software products. Passive holding of domain names can be considered as bad faith use of them.
The Respondent did not reply to a number of efforts made in 2011 by the Complainant to contact him about the disputed domain names. The Respondent previously registered two other domain names using the Complainant’s trademark. The Complainant owns the exclusive right to use the trademark AUTOCAD in a number of countries including Australia.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove, as regards each disputed domain name, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(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.
A. Identical or Confusingly Similar
Each of the disputed domain names consists of the Complainant’s trademark AUTOCAD, a made-up word with no ordinary meaning except as the Complainant’s trademark, one or more generic words associated with the software industry to which the Complainant belongs and a gTLD, either “.com” or “.net”. The gTLD is necessary for the operation of the disputed domain names. The addition of the generic words relating to the Complainant’s activity fails to remove the confusing similarity between the Complainant’s trademark and the disputed domain names. For these reasons, the Panel concludes that each disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent is not called “Autocad” or anything similar and has never used the disputed domain names except as parking pages. There is no evidence that the Complainant has ever authorized the Respondent to use the trademark AUTOCAD. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant’s trademark is a made-up name with no meaning beyond its function as the Complainant’s trademark. The Respondent registered the seven disputed domain names all including the Complainant’s trademark within two days. This suggests that the Respondent knew about the Complainant’s trademark and wished to reflect it in the disputed domain names.
Without a substantive response to the Complaint, it is impossible to know exactly why the Respondent registered the disputed domain names. In this Panel’s view, one is left with three possible motives: to disrupt the Complainant’s relationship with their customers or potential customers, attempt to attract Internet users for potential gain to its websites, or persuade the Complainant to buy the disputed domain names from him for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith. The Respondent’s motivation may have been more than one of these and perhaps all three. For these reasons, the Panel concludes the disputed domain names were each registered and 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, <autocaddrawingviewer.com>, <autocadfileconverter.com>, <autocadfileviewer.com>, <autocadpdf.com>, <autocad-reader.com>, <autocadreader.net> and <autocad-viewer.net>, be transferred to the Complainant.
Date: June 22, 2017