WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Elaine Oneal and Oleg Esiletskiy
Case No. D2020-2364
1. The Parties
The Complainant is Autodesk, Inc., United States of America (“United States” or “USA”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is Elaine Oneal, United Kingdom and Oleg Esiletskiy, Russian Federation.
2. The Domain Names and Registrars
The disputed domain name <autocadalternatives.com> is registered with Key-Systems GmbH.
The disputed domain name <autocad-kurs.com> is registered with Registrar of Domain Names REG.RU LLC.
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2020. On September 11, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 11, 2020, the Registrars transmitted by email to the Center its verification responses 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 September 29, 2020 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 9, 2020.
On September 29, 2020, the Center sent an email communication to the Parties, in English and Russian, regarding the language of the proceeding. The Complainant requested English to be the language of the proceeding on October 9, 2020. 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 of the Complaint, and the proceedings commenced on October 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2020.
The Center appointed Taras Kyslyy as the sole panelist in this matter on November 9, 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 a company incorporated in California, USA. Founded in 1982, the Complainant is an American multinational software corporation that makes software services for the architecture, engineering, construction, manufacturing, media, education, and entertainment industries. The Complainant has offices worldwide.
The Complainant owns AUTOCAD trademarks registered in many countries around the world, including for instance in the USA (e.g., trademark registration number 1316772, registered January 29, 1985). There are over nine million users of the Complainant’s products, and to accommodate this enormous user base, the Complainant 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 its trademark into their names.
Since 1998, the Complainant has owned <autocad.com> domain name and used it as an online portal for Internet users to find information about AUTOCAD software products.
The disputed domain name <autocadalternatives.com> was registered on March 17, 2020. The disputed domain name <autocad-kurs.com> was registered on April 12, 2020. According to evidence provided by the Complainant, both disputed domain names redirected to the same website at “www.cadsoftclub.com” offering for sale software products competing with the Complainant and allegedly illegal copies of the Complainant’s software products. Currently, the disputed domain names still redirect to the website at “www.cadsoftclub.com”, however containing links to and/or information about online casinos.
The Complainant addressed the Respondents with a cease and desist letter, however no response followed.
5. Parties’ Contentions
The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The Complainant holds registration and common law trademark rights in its trademark. The addition of a generic Top-Level-Domain (“gTLD”) such as “.com” in the disputed domain names is irrelevant for the confusing similarity test. Incorporating the Complainant’s trademark into a disputed domain names is sufficient without anything more to establish that said domain names are confusingly similar to the Complainant’s trademark. Combining the Complainant’s trademark with generic terms in the disputed domain names is insufficient to defeat an allegation of confusing similarity.
The Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has never authorized the Respondents to use its trademark. The Respondents knew or should have known of the Complainant’s trademark rights at the time of registration of the disputed domain names, and are precluded from demonstrating they put the mark to a legitimate (i.e., bona fide) use. The Respondents have not used the disputed domain names in connection with a bona fide or legitimate offering of goods. The Respondents have never been commonly known by the disputed domain names. The Respondents’ commercial use of the Complainant’s trademark does not create any right or legitimate interest in the disputed domain names in the Respondents’ favor.
The disputed domain names were registered and are being used in bad faith. The Respondents’ bad faith is established by the fame of the Complainant’s trademark. The Respondents have used the disputed domain names in bad faith with the intention to attract, for commercial gain, users to the Respondents’ website to sell competitors’ products and illegal copies of some of the Complainant’s products. The Respondents’ registration of the disputed domain names so obviously connected with the Complainant proves opportunistic bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant requested the Panel to hear the present dispute brought against two respondents as a consolidated Complaint.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”.
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, since the Respondents have configured each of the disputed domain names to redirect to the same webpage within the website at “www.cadsoftclub.com”.
The Panel accepts these arguments in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as “the Respondent”.
B. Language of Proceedings
The languages of the Registration Agreement for the disputed domain names are Russian and English, respectively. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Complainant in an appropriate case to translate the Complaint into the language of that agreement, the Panel must have regard to all “the relevant circumstances” of the case. The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been made and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the Parties.
According to section 4.5.1 of the WIPO Overview 3.0 previous UDRP 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.
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since the webpage to which Internet users are automatically redirected when they attempt to access either of the disputed domain names is entirely, without exception, in English. The Complainant also believes that the language of the proceedings shall be English, otherwise due to additional costs and undue delay the Complainant would be unfairly disadvantaged by being forced to translate the Complaint to Russian.
The Panel further notes that no objection was made by the Respondent to the proceeding being in English nor any request made that the proceedings be conducted in Russian, the language of the Registration Agreement for the disputed domain name <autocad-kurs.com>. This was despite the Center notifying the Respondent in Russian and English that the Respondent is invited to present its objection to the proceedings being held in English and if the Center did not hear from the Respondent by a certain date, the Center would proceed on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Respondent had the opportunity to raise objections or make known its preference, but did not do so.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
C. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its registered trademark.
According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD 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. Thus, the Panel disregards the gTLD “.com” for the purposes of the confusing similarity test.
According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain names incorporate the entirety of the Complainant’s trademark and are therefore confusingly similar to it.
According to section 1.8 of the WIPO Overview 3.0 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. The Panel finds that the addition of the dictionary terms “alternatives” and “kurs” as well as of a hyphen in the disputed domain names does not prevent a finding of confusing similarity.
Considering the above, the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.
D. Rights or Legitimate Interests
Noting the facts and arguments set out above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.
Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain names.
The Respondent is not commonly known by the disputed domain names, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).
The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).
According to section 2.13.1 of the WIPO Overview 3.0 , previous UDRP panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. According to section 2.13.2 of the WIPO Overview 3.0 , UDRP panels are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default. On the other hand, UDRP panels have found that circumstantial evidence can support a complainant’s otherwise credible claim of illegal respondent activity. In the present case, the Panel finds that the offering for sale of allegedly illegal copies of the Complainant’s software products at the website to which the disputed domain names used to redirect, supports a finding that the disputed domain names were used for illegal activity and thus cannot confer rights or legitimate interests on the Respondent.
The Respondent’s use of the confusingly similar disputed domain names redirecting to a website offering for sale overlapping products is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use pursuant to the Policy (see, e.g., Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052). The Panel finds that the further switch of the website content to online casino links and information does not fix the lack of the bona fide offering and the lack of the legitimate noncommercial or fair use.
Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
E. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain names to purport to sell allegedly illegal copies of the Complainant’s products shows that at the time of registration of the disputed domain names, the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).
According to section 3.1.4 of the WIPO Overview 3. 0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in the United States and internationally. Thus, the Panel finds that the disputed domain names confusingly similar to the Complainant’s trademark were registered in bad faith.
According to section 3.1 of the WIPO Overview 3. 0, bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. To facilitate assessment of whether this has occurred, and bearing in mind that the burden of proof rests with the complainant, paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
In this regard, the Panel finds that at least the fourth of the above scenarios applies to the present case confirming the Respondent’s bad faith.
Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022.
The Respondent ignored its possibility to comment on the contrary and provide any good explanations to prove its good faith while registering and using the disputed domain names.
Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under 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 <autocadalternatives.com> and <autocad-kurs.com> be transferred to the Complainant.
Date: November 23, 2020