WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Domain Privacy Service FBO Registrant / A Kiansu
Case No. D2017-1822
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 Domain Privacy Service FBO Registrant of Burlington, Massachusetts, United States /
A Kiansu of Hanoi, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <auotdesk.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 21, 2017, 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 September 26, 2017, 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 September 28, 2017.
The Center verified that the Complaint together with the amended Complaint (hereafter referred to 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 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2017.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on November 1, 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 the owner of the trademark AUTODESK since 1983. The Complainant offers computer software programs using the trademark AUTODESK which is also part of its name. The Complainant owns United States Trademark Registration No. 1316772, registered on January 29, 1985. It further owns various trademark registrations around the world such as Chinese Trademark Registration No. 307891 and European Union Trade Mark Registration No. 004036687.
There are over 9 million users of Autodesk products.
The Complainant registered the domain name <autodesk.com> since 1989.
The disputed domain name was registered on July 12, 2002. The disputed domain name does not resolve to any active website. The disputed domain name appears to have been used in connection with a fraudulent email scheme.
5. Parties’ Contentions
The Complainant contends that it owns the trademark AUTODESK in many parts of the world and has the exclusive right to use it. It further owns common law rights in the trademark. The Mark has become a distinctive identifier of the Complainant and its goods and services. The addition of the generic Top-Level Domain (“gTLD”) “.com” has no bearing over the assessment for the purposes of the first element of the Policy. The subdomain “auotdesk” is confusingly similar to the trademark AUTODESK and has a minor misspelling. This is typosquatting, which by its nature and definition involves similarity between a disputed domain name and the relevant trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant never authorized the Respondent to use the trademark AUTODESK, nor is the Complainant affiliated with the Respondent nor has the Complainant ever endorsed it. Further, the Respondent had notice of the dispute when it registered the disputed domain name as the Respondent knew or should have known of the Complainant’s trademark the latter being a well-known trademark all over the globe and which has been in use for three decades. This is further confirmed by the fact that the Respondent has attempted to impersonate the Complainant through emails to customers. The Respondent has not used the disputed domain name in connection with a bona fide or legitimate offering of goods but on the contrary, it has been using it in order to obtain money from customers of the Complainant by impersonating the latter. The Respondent has never been commonly known by the disputed domain name as there is no evidence to that effect. The Respondent’s commercial use of the trademark does not create any right or legitimate interest in the disputed domain name in the Respondent’s favor.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent knew or should have known of the trademark of the Complainant as it is a famous trademark. The use of the trademark is done in bad faith as it is in furtherance of an illegal activity. The Respondent in this case is sending invoices to customers of the Complainant and spoofing emails.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns a number of trademark registrations for the trademark AUTODESK. The Panel is satisfied that the Complainant has established its ownership of the trademark AUTODESK.
The disputed domain name comprises the word “auotdesk”, which is a misspelling of the trademark of the Complainant. This type of conduct is typosquatting.
The gTLD “.com” may typically be ignored when assessing confusing similarity as established by prior UDRP decisions.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. On the contrary, the disputed domain name appears to have been used in connection with a fraudulent email scheme.
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The trademark AUTODESK is a well-known trademark worldwide. Hence, the Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name. The bad faith use of the disputed domain name is clear from the fact that the trademark AUTODESK is well-known and it is being used by the Respondent for emails with the aim of illicitly extracting amounts of money from the customers of the Complainant by creating a misleading impression of association with the Complainant.
Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied 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 <auotdesk.com> be transferred to the Complainant.
Date: November 16, 2017