WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. Yuechang Feng

Case No. D2019-2495

1. The Parties

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

The Respondent is Yuechang Feng, China.

2. The Domain Name and Registrar

The disputed domain name <autodeskoutyk.com> is registered with HazelDomains, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 2019, 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 23, 2019 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 in English on October 26, 2019.

On October 23, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding in its amended Complaint filed on October 26, 2019. The 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 the Respondent in English and Chinese of the Complaint, and the proceedings commenced on October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2019.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on November 27, 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

The Complainant is a global software company, headquartered in the USA. The Complainant claims to have continuously used the trademark AUTODESK since 1983 to commercialize licensed copies of computer software programs, associated user manuals, and related documentation.

The Complainant owns a large portfolio of trademark registrations for AUTODESK, with trademarks registered in no less than 72 different countries and regions, including, but not limited to, USA trademark registration number 1316772, registered on January 29, 1985; and Chinese trademark registration number 307891, registered on February 10, 1988. The disputed domain name was registered on April 4, 2019. The Complainant submits evidence that the disputed domain name directs to an active website, which leads to a landing page linking to a page containing adult content and sexually explicit images, as well as third party advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name is confusingly similar to its trademarks for AUTODESK, that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered, and is being used in bad faith.

The Complainant claims that its trademarks are distinctive and famous in the software and information technology industry, and provides a number of media and Wikipedia articles about its business, as well as printouts from its official website, containing further company information. Moreover, the Complainant provides evidence that the disputed domain name is linked to an active website, used to host pornographic materials. The Complainant essentially contends that such use does not confer any rights or legitimate interests in respect of the disputed domain name and constitutes use in bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

On October 23, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding, clarifying that the language of the Registration Agreement is Chinese. Nevertheless, the Complainant filed its Complaint in English, and confirmed its request that English be the language of the proceeding in its amended Complaint. The Panel has therefore made a comprehensive assessment of the circumstances of the administrative proceeding to determine the language of the proceeding.

In this assessment the Panel gives particular weight to the following circumstances: the Complainant’s request that the language of the proceeding be English, the lack of response by the Respondent on both the language of the proceeding and on the merits (the Panel notes that the Respondent had the opportunity to respond in either English or Chinese); the fact that parts of the website hosted at the disputed domain are partially in English (e.g. the legal disclaimer); and the fact that Chinese as the language of the proceeding could lead to unwarranted delays and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

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

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has provided sufficient evidence that it has valid rights in the sign AUTODESK based on its use and registration of the same as a trademark, incidentally commencing several years prior to the registration of the disputed domain name.

Moreover, as to confusing similarity of the disputed domain name with the Complainant’s trademarks, the disputed domain name consists of two elements, being the Complainant’s AUTODESK trademark combined with the suffix “outyk”. The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.8, “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element” (see also Wal-Mart Stores, Inc. v Richard McLeod d/b/a For Sale, WIPO Case No. D2000-0662). The Panel concludes that the disputed domain name contains the entirety of the Complainant’s trademarks, as its only distinctive, and clearly identifiable feature. The addition of the element “outyk” does not avert the confusing similarity between the disputed domain name and the Complainant’s trademark. Accordingly, the Panel rules that the disputed domain name is confusingly similar to the Complainant’s registered trademark, and that the Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

The Complainant has demonstrated that the Respondent is not an authorized reseller, service provider, licensee or distributor, and is not making legitimate noncommercial use or fair use of the Complainant’s trademarks. To the contrary, the website linked to the disputed domain name is currently a landing page leading to a connected website offering hardcore pornographic content and a number of third party advertisements for commercial gain, which does not grant the Respondent any right or legitimate interest in such disputed domain name (see in this regard also MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205). The Panel therefore considers that none of the circumstances of right or legitimate interests envisaged by paragraph 4(c) of the Policy apply. Furthermore, the Respondent is not commonly known by the disputed domain name. The Panel also notes that no evidence or arguments have been submitted by the Respondent in reply. The Panel therefore rules that the Complainant has satisfied the requirements for the second element under the Policy.

C. Registered and Used in Bad Faith

The Complainant has provided the Panel with ample materials evidencing the fame and popularity of its services and its trademarks protecting AUTODESK. Given the strong reputation and fame of such trademarks, including in the Respondent’s home jurisdiction China, the registration of the disputed domain name, which incorporates these trademarks in their entirety, was clearly intended to mislead and divert consumers to the disputed domain name. Even a cursory Internet search at the time of registration of the disputed domain name would have made it clear to the Respondent that the Complainant already owned trademarks in AUTODESK, and used these trademarks extensively. In the Panel’s view, these elements clearly indicate the bad faith of the Respondent in registering the disputed domain name, and the Panel therefore rules that it has been demonstrated that the Respondent registered the disputed domain name in bad faith.

As to use of the disputed domain name in bad faith, the website linked to the disputed domain name is currently used as a landing page leading to a connected website offering pornographic materials and adult content. Publishing and promoting pornographic content at the website linked to the disputed domain name (and therefore by reference to the Complainant’s trademarks) is obvious bad faith use, and a blatant attempt to unlawfully profit from the registration of the disputed domain name. See in this regard also prior UDPR decisions such as Maggie Sottero Designs, L.L.C. v. Fengkun, WIPO Case No. D2019-0626 and Coolmath.com LLC v. Weiwei, WIPO Case No. D2019-1517. Moreover, given the fact that the disputed domain name provides pornographic content to the public by reference to the Complainant’s trademarks, such actions also tarnish the Complainant’s trademarks and damage the Complainant’s goodwill therein. On the basis of the preceding elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain name in bad faith.

Finally, the Respondent has failed to provide any response or evidence to establish its good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under the Policy.

7. Decision

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 <autodeskoutyk.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: December 11, 2019