WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. zhang jie

Case No. D2019-1583

1. The Parties

Complainant is Autodesk, Inc., United States of America (“USA”), represented by Donahue Fitzgerald LLP, USA.

Respondent is zhang jie, China.

2. The Domain Name and Registrar

The disputed domain name <autodeskmakedonija.com> is registered with Xin Net Technology Corp. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2019. On July 8, 2019, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2019, 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 Complainant on July 12, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint in English on July 13, 2019.

On July 12, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant confirmed the request that English be the language of the proceeding on July 13, 2019. Respondent did not comment on 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 Respondent in English and Chinese of the Complaint, and the proceedings commenced on July 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 8, 2019. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2019.

The Center appointed Yijun Tian as the sole panelist in this matter on August 19, 2019. 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

A. Complainant

Complainant is a company incorporated in California, USA. Founded in 1982, Autodesk is an American multinational software corporation that makes software services for the architecture, engineering, construction, manufacturing, media, education, and entertainment industries. Complainant has offices worldwide.

The AUTODESK and AUTODESK related marks have been registered worldwide, including in the USA (e.g., trademark registration number 1316772, registered January 29, 1985), and in China (e.g., trademark registration number 307891), registered February 10, 1988). There are over nine million users of Autodesk's products, and to accommodate this enormous user base, Autodesk works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers with their worldwide use of its products that incorporate the Mark into their names.

B. Respondent

Respondent is zhang jie, China. The disputed domain name <autodeskmakedonija.com> was registered by Respondent on March 7, 2019. The disputed domain name resolves to a website with pornographic content.

5. Parties’ Contentions

A. Complainant

Complainant contends that Complainant has rights in the AUTODESK trademark, and the disputed domain name <autodeskmakedonija.com> is identical or confusingly similar to the AUTODESK trademark.

Complainant contends that Respondent has no rights or legitimate interests in the AUTODESK trademarks.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith.

Complainant requests that the disputed domain name be transferred to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name <autodeskmakedonija.com> is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) Other than its “.com” generic Top-Level Domain (“gTLD”) in English, the disputed domain name consists only of the English word “Autodesk” (the “Mark”) – i.e., an arbitrary word that: (a) means nothing other than being Autodesk’s name and the name and a source indicator of some of Autodesk’s products; and (b) is a trademark owned exclusively by Autodesk and for which Autodesk has owned registrations granted by governments around the world, including from China where Respondent may reside, for decades prior to Respondent’s recent registration of the disputed domain name – plus the word “makedonija”, which means “Macedonia” in Slovenian and is a geographic location where Autodesk has conducted business relevant to this dispute;

(b) The disputed domain name consists of an English word relating directly to Autodesk, its name, and its products and nothing else (i.e., the Mark), a Slovenian word identifying a geographic location where Autodesk has conducted and continues to conduct business, and no Chinese characters or words;

(c) Respondent has used English words in the website to which the disputed domain name resolves (the “Pornography Website”), including the words and phrases “LATEST MOVIE”, “@outlook.com”, and “Copyright” on the landing page thereof;

(d) Autodesk is a USA-based corporation with its business operations located mainly in the State of California, and Autodesk conducts most of its business in English. Autodesk will incur significant additional expense and delay if forced to translate this Complaint and its Annexes into a language other than English;

(e) Given Respondent’s proficiency with the English language as evidenced by the factual record described above, on top of the hardship and delay to Autodesk if this matter were to proceed in any language but English, the circumstances herein all strongly favour English as the most appropriate language for this proceeding.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

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 other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (see Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the UDRP panels for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (see Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1 further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.” (see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the USA, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name <autodeskmakedonija.com> includes Latin characters “makedonija” and is registered in the gTLD space comprising of the Latin characters “.com” (see Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese resident and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant: (a) the disputed domain name includes Latin characters “makedonija” rather than Chinese script; (b) the disputed domain name <autodeskmakedonija.com> resolves to website which contains both Chinese and English words, such as English words and phrases “LATEST MOVIE”, “@outlook.com”, and “Copyright” on the landing page; (c) the Center has notified Respondent of the proceeding in both Chinese and English; and (d) the Center informed the Parties, in English and Chinese, that it would accept a Response in either English or Chinese. The Panel would have accepted a response in Chinese but none was filed.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantial Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be transferred:

(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a)-(c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the AUTODESK marks. The disputed domain name <autodeskmakedonija.com> comprises the AUTODESK mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the suffix “makedonija”, and the gTLD suffix “.com” to the AUTODESK marks. This does not compromise the recognizability of Complainant’s marks within the disputed domain name, nor eliminate the confusing similarity between Complainant’s registered trademarks and the disputed domain name (see Decathlon v. Zheng Jianmeng, WIPO Case No. D2019-0234).

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name”. (see Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Further, in relation to the gTLD suffix, section 1.11 of WIPO Overview 3.0 further states: “The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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) Respondent has been commonly known by the disputed domain name, even if Respondent has acquired no trademark or service mark rights; or

(iii) 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 Complainant’s trademarks.

The overall burden of proof rests with Complainant. However, it is well established by previous UDRP panels decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (see Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, section 2.1 and cases cited therein).

The AUTODESK marks have been registered in the USA since 1985 and in China since 1988, which long precede Respondent’s registration of the disputed domain name (in 2019). According to the Complaint, Autodesk is a famous American multinational software. It has over nine million users of Autodesk's products, approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centres worldwide.

Moreover, Respondent is not an authorized dealer of AUTODESK branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (see The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “autodesk” in the disputed domain name and in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the AUTODESK marks or to apply for or use any domain name incorporating the AUTODESK marks;

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name in 2019, after the AUTODESK marks became internationally known. The disputed domain name is confusingly similar to the AUTODESK marks;

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, the website, currently resolved by the disputed domain name, is a website with porn pictures. It seems that Respondent is making profits through the Internet traffic attracted to the website under the disputed domain name. (See BKS Bank AG v. Jianwei Guo, WIPO Case No. D2017-1041; BASF SE v. Hong Fu Chen, Chen Hong Fu, WIPO Case No. D2017-2203.)

The Panel finds that Complainant has established a prima facie case and Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(a) Registration in Bad Faith

The Panel finds that the AUTODESK marks have widespread reputation as a leading American multinational software corporation providing software services for various industries. As mentioned above, AUTODESK marks are registered internationally, including in the USA (since 1985) and in China (since 1988). It is not conceivable that Respondent would not have had actual notice of the AUTODESK marks at the time of the registration of the disputed domain name (in 2019). The Panel therefore finds that the AUTODESK mark is not one that Respondent could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (see The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

The Panel notes the nature of the disputed domain name consisting of the AUTODESK mark and the word “makedonija”. The nature of the disputed domain name affirms the confusion because the word “makedonija” means “Macedonia” in Slovenian, and is a geographic location where Autodesk has conducted business at all times.

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the UDRP panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the respondent to respond to the Complaint further supports an inference of bad faith”. (See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.)

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(b) Use in Bad Faith

Respondent is using the website resolved by the disputed domain name to provide porn photos, and links to porn video websites. Thus, the Panel concludes that Respondent is currently using the confusingly similar disputed domain name with the intention to attract, for commercial gain, Internet users to Respondent’s website.

Given the reputation of the AUTODESK marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the AUTODESK marks. Moreover, as mentioned above, Respondent offered the links to pornographic content via the website to which the disputed domain name resolves, presumably for commercial gain. The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith. Such use of the disputed domain name is also disruptive in relation to the interests of Complainant (see Sbarro Franchise Co., LLC v. Kouwenbin, WIPO Case No. D2019-0884).

In summary, Respondent, by choosing to register and use the disputed domain name which is confusingly similar to the AUTODESK marks, intended to ride on the goodwill of this trademark in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <autodeskmakedonija.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: September 2, 2019