WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. leyi lin
Case No. D2020-1112
1. The Parties
The Complainant is Autodesk, Inc., United States of America (“U.S.”), represented by Donahue Fitzgerald LLP, U.S.
The Respondent is leyi lin, China.
2. The Domain Names and Registrar
The disputed domain names <autodeskatc.com>, <autodeskclub.com>, <free3dsmax.com>, <revittofm.com>, <3dsmax-edu.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 May 5, 2020. On May 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 6, 2020, 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 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 3, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on June 11, 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 is Autodesk Inc., a U.S. based corporation with its principal place of business in California.
The Complaint is concerned with the Respondent’s alleged incorporation into the five disputed domain names of the Complainant’s trademarks: AUTODESK, ATC, 3DS MAX and REVIT. The Complainant has continuously used these marks since 1983, 1985, 2001 and 2002 respectively, in connection with the Complainant’s commercial offering to the public of licensed copies of computer software programs, associated user manuals and related documentation with associated educational services. For decades the Complainant has incorporated AUTODESK, 3DS MAX and REVIT into the names of many of its software products.
The mark AUTODESK is the Complainant’s corporate name. The mark ATC is an abbreviation for “Authorized Training Centers “. The Complainant maintains relationships with Autodesk-approved training centers and provides information on accessing them, i.e. ATC locations, through the Autodesk webpage at “www.autodesk.com”.
Evidence of the Complainant’s registered trade marks are set out in the Declaration of [xxx].
i. U.S. registration no. 1316772 for AUTODESK registered on January 29, 1985;
ii. U.S. registration no. 1656455 for ATC registered September 10, 1991;
iii. U.S. registration no. 2565790 for REVIT registered April 30, 2002;
iv. U.S. registration no. 2733869 for 3DS MAX registered July 8, 2003.
The Complainant also owns registered rights in other jurisdictions around the world. These include registrations covering AUTODESK, 3DS MAX and REVIT which were granted in 1988, 2001 and 2007 respectively. In total the Complainant owns registrations covering AUTODESK, 3DS MAX, and REVIT marks in at least 72, 14 and 16 jurisdictions respectively.
As a result of its long use of the marks AUTODESK, 3DS MAX and REVIT for its software products throughout the world (there are currently 9 million users), the Complainant has established ownership of common law or unregistered rights in those marks. Similarly, the Complainant uses the ATC mark to work with approximately 1,700 channel partners, 3,300 development partners and 2,000 authorized training centers to assist its customers which has enabled it to establish unregistered rights in ATC.
The disputed domain names; <autodeskatc.com> was registered on March 21,2020, <autodeskclub.com> on March 13, 2020, <3dsmax-edu.com> on February 21, 2020, <free3dsmax.com> on February 17, 2020 and <revittofm.com> on February 29, 2020. These dates are well after the dates of the Complainant’s trade mark registrations that it relies upon.
In the absence of evidence to the contrary from the Respondent, the Panel finds the Complainant’s evidence as set out above to be true and proceeds to decide the Complaint on the basis of that evidence.
At the time of the filing the Complaint, the disputed domain names resolved to pornography websites.
5. Parties’ Contentions
The Complainant submits:
i. it owns registered and common law trade mark rights in the four marks relied upon and that the disputed domain names are identical or confusingly similar to those marks respectively;
ii. the Respondent has no rights or legitimate interest in the disputed domain names. In particular the Complainant has not authorized their use to the Respondent, the Respondent has not used them in connection with a bona fide or legitimate offering of goods and has never been commonly known by them;
iii. the Respondent registered and is using the disputed domain names in bad faith, in particular the Respondent has used the disputed domain names to attract, for commercial gain users to pornography websites, and has engaged in a pattern of registering the disputed domain names to prevent the Complainant from reflecting its marks in corresponding domain names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Based upon the Complainant’s evidence set out in section 4 above, the Panel is satisfied that the Complainant owns registered and unregistered trade marks in the marks AUTODESK, 3DS MAX, REVIT and ATC in the United States where it is based and that it owns registered rights in AUTODESK, 3DS MAX and REVIT in China, which is where the Respondent apparently resides, as well as many other jurisdictions.
In considering confusing similarity the Panel finds, in accordance with established authority, that the addition of a generic Top-Level Domain (“gTLD”) such as “.com” is irrelevant. The Panel is therefore required to consider whether “autodeskatc”, “autodeskclub”, “3dsmax-edu”, “free3dsmax” and “revittofm “ are confusingly similar to the four trade marks relied upon.
In the case of <autodeskatc.com> the domain name consists entirely of a combination of the marks AUTODESK and ATC. In the Panel’s view this is sufficient to establish confusing similarity with those two marks.
In the case of <autodeskclub.com>“ the domain name consists of the mark AUTODESK with the addition of the descriptive word “club”. It is well-established that the use of a mark with a dictionary word is likely to show confusing similarity. The Complainant cites a previous UDRP panel’s decision; Autodesk,Inc v YingWangXinXiKeJiYouXianGong xuan, YingWangXinXiKeJi CO.LTD., WIPO Case No. D2016-2266, in which the Complainant was complainant, involving the addition of the letter “i” to the mark AUTODESK and in which that panel found confusing similarity. The Panel follows that reasoning and finds that <autodeskclub.com> is confusingly similar to the mark AUTODESK.
In the case of <3dsmax-edu.com> the addition of “-edu” to the mark 3DS MAX is meaningless apart from the possibility, as submitted by the Complainant, as an abbreviation signifying use by the educational community. Support for this reasoning is given by an earlier panel’s decision in Autodesk, Inc. v wu xi si jie ruan jian you xian gong si, WIPO Case No. D2019-0771, where the disputed domain name <xy3dsmax.com> consisted of 3DS MAX with the preface “xy” which that panel found this does not dispel the existence of confusing similarity. Following that reasoning this Panel finds that <3dsmax-edu.com> is confusingly similar to the mark 3DS MAX.
In the case of <free3dsmax.com> the Panel is of the view that the addition of the descriptive term “free” to the mark 3DS MAX does not detract from the confusing similarity of the disputed domain name with that mark. The Panel is supported in its view by an earlier panel’s decision in Autodesk, Inc. (“Autodesk”) v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2016-2063 in which that panel took a similar view with regard to the addition of the term “free”. Accordingly this Panel finds that the <free3dsmax.com> is confusingly similar to the Complainant’s mark 3DS MAX.
In the case of <revittofm.com, the disputed domain name consists of the mark REVIT with the addition of the letters “tofm” or word “to” plus the abbreviation “fm”. The Complainant submits that “tofm” is a reference “to Facilities Management” in the context of “taking advantage of understanding within Autodesk’s industry of the phrase “REVIT to FM” as meaning the application of Autodesk Revit software to enhance facilities management capabilities”. Whether that is so or not the Panel nevertheless finds that the combination of “revit” with “tofm” does not detract from the fact that the dominant part of the disputed domain name is REVIT and that accordingly <revittofm.com> is confusingly similar to the mark REVIT.
The Panel therefore finds that <autodeskatc.com> is confusingly similar to the marks AUTODESK and ATC in which the Complainant has rights, that <autodeskclub.com> is confusingly similar to the mark AUTODESK in which the Complainant has rights, that <3dsmax-edu.com> is confusingly similar to the mark 3DS MAX in which the Complainant has rights, that <free3dsmax.com> is confusingly similar to the mark 3DS MAX in which the Complainant has rights and that <revittofm.com> is confusingly similar to the mark REVIT in which the Complainant has rights, within Paragraph 4(a)(i) of the Policy..
B. Rights or Legitimate Interests
It is well-established that the Complainant need only show this element on a prima facie basis and that the burden of proof then passes to the Respondent to show that it did have a right or legitimate interest within Paragraph 4 (a)(ii) of the Policy.
The Complainant as owner of the relevant trade mark rights points out that it has never authorized the Respondent to incorporate the marks into the disputed domain names nor has it authorized or licensed the Respondent to use the marks for any commercial purpose including pornography websites accessible from the disputed domain names.
The Complainant submits that pursuant to Paragraph 4(c)(i) of the Policy the Respondent had notice of the current dispute at the date of registration of the disputed domain names. This is because the dispute relates to four trade marks which had been used by the Complainant throughout the world and that it would not be credible for the Respondent to maintain on the evidence of the Respondent’s trade mark rights that he was unaware of the trade mark rights. In the absence of a Response and contrary evidence the Panel is prepared to accept this submission.
The Complainant also submits that the Respondent has never used the disputed domain names
in connection with a bona fide or legitimate offering of goods. On the evidence the Respondent is using the disputed domain names to confuse customers looking for information about the Complainant, its products and services into visiting pornography websites from which the Respondent would benefit commercially.
This evidence of the pornographic websites is set out as screenshots from the websites at exhibits K-O to the Declaration of [xxx] produced on behalf of the Complainant. In his Declaration Mr. [xxx] explains how he accessed the websites using all five of the disputed domain names. Each exhibit corresponds with each of the disputed domain names. In the Panel’s view the websites are, without doubt, pornographic in content.
The use of a disputed domain names for an illegal purpose is not a bona fide offering of goods or services within Paragraph 4(c)(i) of the Policy. Authority for this proposition comes from another UDRP panel’s decision in which the Complainant was successful; Autodesk Inc. v zhang jie WIPO Case No. D2019-1583. In that case the disputed domain name was being used for the distribution of pornography content and the panel found that this did not constitute a bona fide offering of goods or services. This Panel, too, accepts that proposition.
It is open to a respondent to show that it has been commonly known by a disputed domain name to prove a right or legitimate interest. The Complainant points out that there is no evidence that the Respondent has ever been called by or commonly known by any name incorporating any of the Complainant’s marks. This is demonstrated by the fact that the Respondent’s registration information for the disputed domain names does not mention any of the Marks.
The Complainant also submits that the Respondent’s commercial use of the Marks does not create any right or legitimate interest in favour of the Respondent within Paragraph 4(c)(iii) of the Policy. This is because the Respondent’s use of the disputed domain names is for access to pornography websites. Again, following Autodesk Inc.v zhang jie, supra, the fact that the disputed domain names resolve to a pornographic website is sufficient to establish that the Respondent’s commercial use of the disputed domain names does not create any right or legitimate interest.
It follows from these submissions and with no Response from the Respondent that the Complainant has established that the Respondent has no right or legitimate interests in the disputed domain names within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits in accordance with longstanding authority that where the Respondent knew or should have known of the registration and use of the trade mark prior to registering the disputed domain names and then proceeds to register a confusing similar disputed domain name that is itself evidence of bad faith.
It relies on the fact of the Complainant’s longstanding registrations in China where the Respondent resides. It also relies on the fact that all the disputed domain names suggest “an obvious affiliation” with the Complainant and its products and services since the marks have no meanings other than as the Complainant’s trading name and as source indicators to its products, services and events. The dictionary terms used reinforce this.
The Complainant also submits that the fact that the Respondent is using the disputed domain names with the intention to attract, for commercial gain, users to its pornography websites constitutes evidence of use in bad faith. Each of the disputed domain names incorporates a trade mark or marks of the Complainant and by using the disputed domain names for accessing the pornographic websites referred to above there is in the Panel’s view and as put by the Complainant: “ a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of those pornographic websites and which inevitably ‘tarnishes’ the marks and the Complainant’s goodwill in the marks.”
This finding is similar to that of the panel in Autodesk, Inc v zhang jie , supra, also concerning a pornographic website where it from; “that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant ,contrary to the fact. Respondent offered the links to pornographic content via the website to which the disputed domain name resolves, presumably for commercial gain.”
The Complainant also relies upon the fact that the Respondent has engaged in a pattern of registering domain names to prevent the Complainant from reflecting its marks in corresponding domain names within Paragraph 4(b)(iii) of the Policy. In the Panel’s view this submission succeeds, taking also into account, the fact that the Respondent has chosen to register and use five disputed domain names incorporating four of the Complainant’s longstanding registered marks.
In the light of these findings the Panel finds that the Respondent has registered and is using the five disputed domain names in bad faith within 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 names, <autodeskatc.com>, <autodeskclub.com>, <free3dsmax.com>, <revittofm.com> and <3dsmax-edu.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: June 23, 2020