WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. hongyu lin

Case No. D2020-0995

1. The Parties

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

The Respondent is hongyu lin, China.

2. The Domain Names and Registrar

The disputed domain names <autocad3000.com> and <3dsmaxsozluk.com> 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 April 23, 2020. On April 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 24, 2020 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 April 29, 2020.

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, and the proceedings commenced on May 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2020.

The Center appointed Jonathan Agmon as the sole panelist in this matter on June 2, 2020. 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, Autodeck, Inc., is an American multinational software corporation founded in 1982 that makes software services for the architecture, engineering, construction, manufacturing, media, education, and entertainment industries, which is headquartered in California. Some of its notable software products includes AutoCAD and 3ds Max.

The Complainant owns numerous trademark registrations for the AutoCAD and 3ds Max marks (collectively, the “Marks”) worldwide, including but not limited to the following:

- AUTOCAD (U,S. Trademark Registration No. 1316773), registered on January 29, 1985;

- 3DS MAX (U.S. Trademark Registration No. 2733869), registered on July 3, 2003;

- AUTODESK (U.S. Trademark Registration No. 1316772), registered on January 29, 1985;

- AUTOCAD (China Trademark Registration No. 307895), registered on February 10, 1988; and

- 3DS MAX (China Trademark Registration No. 1678314), registered on December 7, 2001.

The disputed domain names <autocad3000.com> and <3dsmaxsozluk.com> were both registered on February 11, 2020. The disputed domain names resolved to a pornography website with gambling advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions include the following:

The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered Marks as the disputed domain names wholly incorporate the AUTOCAD and 3DS MAX marks with suffixes “3000” to the AUTOCAD mark and “sozluk” to the 3DS MAX mark and generic Top-Level Domain (“gTLD”) “.com” that are insufficient to avoid confusing similarity.

The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names.

The Complainant further argues that the disputed domain names were registered and are being used in bad faith as they redirect Internet users to pornographic website with gambling advertisements.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names <autocad3000.com> and <3dsmaxsozluk.com> contain the Complainant’s AUTOCAD and 3DS MAX Marks in their entireties (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).

It is also well-established that the addition of a term would not prevent a finding of confusing similarity between a disputed domain name and a complainant’s mark. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.) Here, the addition of “3000” to the AUTOCAD mark and “sozluk” to the 3DS MAX mark does not avoid confusing similarity.

Further, it is well established that the addition of a gTLD “.com” does not avoid confusing similarity between the Complainant’s trademark and the disputed domain names. (See WIPO Overview 3.0, section 1.11.1.)

Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.

The Complainant has provided evidence that it owns trademark registrations long before the disputed domain names were registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s Marks (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).

The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3).

Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names which is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds 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 must also show that the respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence showing that the disputed domain names redirect to a pornographic page promoting adult services and gambling. It is well-established that the use of a domain name for posting of pornographic content and/or related services constitute evidence of bad faith registration and use of a domain name (see Coral Trademarks, Ltd. v. Eastern Net, Inc., WIPO Case No. D2000-1295 (“The posting of pornographic contents on a web site under a domain name that corresponds to a third party’s mark is a bad faith use of a domain name”); America Online, Inc. v. Viper, WIPO Case No. D2000-1198 (“The use of AOL as part of a domain name offering pornographic products and services certainly ‘tarnishes’ Complainant’s existing marks, which is also evidence of bad faith”); Valor Econômico S.A. v. Daniel Allende, WIPO Case No. D2001-0523 (“Complainant has proved that Respondent linked the <valoreconomico.net> web page to adult content or pornographic sites. This is a typical bad faith use of the domain name.”); ABB Asea Brown Boveri Ltd. v. Quicknet, WIPO Case No. D2003-0215 (“The use of ABB as part of a domain name offering pornographic material certainly tarnishes the Complainant’s existing marks, which is also evidence of bad faith.”); Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022 (“Preliminary, it is commonly understood, under WIPO case law, that whatever the motivation of Respondent, the diversion of the domain names to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”) Similarly, the Panel finds that the use of the disputed domain names in the present case constitutes evidence of bad faith registration and use of the disputed domain names.

Further, the disputed domain names are confusingly similar to the Complainant’s Marks which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. In addition, the Respondent did not submit a Response in this proceeding. Under the circumstances of this case, this is an additional indication of the Respondent’s bad faith, which was considered by the Panel.

Accordingly, given the particular circumstances of this case and the distinctive nature of the Marks, based on the balance and the evidence presented to the Panel, including the registration of the disputed domain names after the registration of the Complainant’s trademark, the confusing similarity between the disputed domain names and the Complainant’s trademark, the Respondent’s use of the disputed domain names and the failure of the Respondent to submit a response, and the fact that is no plausible good faith use the Respondent can put the disputed domain names to, the Panel draws the inference that the disputed domain names were registered and are being used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of 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 names <autocad3000.com> and <3dsmaxsozluk.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: June 7, 2020