WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. 杨智超 (Zhichao Yang)
Case No. D2021-1286
1. The Parties
The Complainant is Autodesk, Inc., United States of America (“U.S.”), represented by Donahue Fitzgerald, U.S.
The Respondent is 杨智超 (Zhichao Yang), China.
2. The Domain Name and Registrar
The disputed domain name <cautodesk.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2021. On April 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2021, 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 April 29, 2021, 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 May 5, 2021.
On April 29, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On April 30, 2021, the Complainant confirmed its request that English be the language of the proceeding. 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 May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2021.
The Center appointed Francine Tan as the sole panelist in this matter on June 4, 2021. 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 has been using its AUTODESK trade mark in connection with its commercial offering to the public of licensed copies of computer software programs, associated user manuals and related documentation since 1983. There are over 9,000,000 users of the Complainant’s Autodesk-branded products. 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 the AUTODESK mark into their names. The Complainant has distributed over 9,300,000 standalone copies, and over an additional 8,500,000 copies bundled into suites, of its products. The Complainant has also spent, globally, millions of dollars to advertise and promote its Autodesk-branded products.
The Complainant owns registrations for the AUTODESK trade mark in the U.S. and in at least 72 different countries. These include:
(i) U.S. Trade Mark Registration No. 1,316,772 for AUTODESK, registered on January 29, 1985;
(ii) U.S. Trade Mark Registration No. 4,080,297 for AUTODESK, registered on January 3, 2012;
(iii) China Trade Mark Registration No. 307891 for AUTODESK, registered on February 10, 1988;
(iv) European Union Trade Mark Registration No. 004036687 for AUTODESK, registered on July 24, 2006.
The Complainant owns the domain name registration for <autodesk.com> since August 2, 1989.
The disputed domain name was registered on May 25, 2020. It resolves to a landing page featuring sponsored links with no other content. The sponsored links lead to other pages of links, some of which include third-party advertisements for products that compete directly with one or more of the Complainant’s software products.
5. Parties’ Contentions
(1) The disputed domain name wholly incorporates the Complainant’s AUTODESK trade mark and is confusingly similar to the Complainant’s AUTODESK trade mark in which it has rights. The term “cautodesk” consists of a very minor misspelling of the Complainant’s AUTODESK trade mark, i.e., by the addition of the letter “c” before the trade mark itself. This is an insignificant modification which constitutes “typosquatting” or “typo-piracy”. The addition of the generic Top-Level Domain (“gTLD”) “.com” is irrelevant to the analysis of confusingly similarity under the Policy.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the exclusive owner of all rights in the AUTODESK trade mark and has never authorized the Respondent nor anyone doing business as “cautodesk.com” to incorporate the AUTODESK trade mark into the disputed domain name, to use the trade mark on any website or to use the trade mark in any other capacity. The Complainant is not affiliated with the Respondent and has never endorsed or sponsored the Respondent or anyone doing business as “cautodesk.com”, nor the Respondent’s website. The Respondent knew or should have known of the Complainant’s exclusive rights in the AUTODESK trade mark when he registered the disputed domain name as the disputed domain name was registered very long after the Complainant’s AUTODESK trade mark and <autodesk.com> domain name were registered and had been used. Third-party advertisements which are accessible through the sponsored links on the said landing page compete directly with the Complainant’s products, which shows that the Respondent was aware of the Complainant at the time of registration of the disputed domain name. Accordingly, the Respondent had actual or constructive knowledge of the Complainant’s AUTODESK trade mark rights. Further, the Respondent is not commonly known by the disputed domain name. The Respondent has never used the disputed domain name in connection with a bona fide offering of goods and services. The Respondent has been using it to generate traffic to the said landing page and to the third-party advertisements to profit from advertisements which compete directly with the Complainant’s products. The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
(3) The Respondent registered and is using the disputed domain name in bad faith through “typosquatting”. The Respondent only registered the disputed domain name long after the Complainant acquired registration and common law trade mark rights in AUTODESK. The AUTODESK mark is world famous. The Respondent has intentionally attempted to divert Internet traffic to its website by creating a likelihood of confusion with the AUTODESK trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Preliminary Issue: Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) 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 language of the Registration Agreement in relation to the disputed domain name is Chinese. The Complainant requested that the language of the proceeding be English. The reasons are that:
(i) the disputed domain name consists the English word “Autodesk”;
(ii) the landing page to which the disputed domain name resolves is in the English language; and
(iii) the Complainant will be put through significant additional costs and delay if required to translate the Complaint and annexes into Chinese.
The Panel determines that it would be appropriate for English to be the language of the proceeding. The Panel is persuaded that the Respondent has sufficient understanding of the English language. Moreover, all of the Center’s communications with the Parties have been sent in English and Chinese. The Respondent has not objected and stated why the application of English as the language of the proceeding would be prejudicial or unfair. Therefore, in the absence of any objection by the Respondent, the Panel does not find it procedurally efficient to have the Complainant translate the Complaint and evidence into Chinese.
6.2 Substantive Issues
A. Identical or Confusingly Similar
The Complainant has established it has rights in the AUTODESK trade mark. The AUTODESK trade mark has been reproduced in its entirety in the disputed domain name and is identifiable therein. The Panel agrees that the addition of the letter “c” or misspelling as “cautodesk” does not serve to avoid confusing similarity with the Complainant’s trade mark. The gTLD “.com” is a technical requirement for domain name registrations and is not relevant to the issue of the identity or confusing similarity between the disputed domain name and the Complainant’s trade mark.
The Panel accordingly finds that the first element of paragraph 4(a) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant’s registrations and use of the AUTODESK trade mark long predate the registration date of the disputed domain name. The Complainant did not license or authorize the Respondent to use the word “autodesk” as a trade mark or in a domain name. The Respondent is not an authorized dealer of the Complainant. Neither is there evidence that the Respondent is commonly known by the name “cautodesk”. Further, the disputed domain name resolves to a landing page featuring pay-per-click links, some of which compete directly with the Complainant.
The Complainant has therefore established a prima facie case. The burden of production thereafter shifts to the Respondent to show that he has rights or legitimate interests in the disputed domain name. The Respondent failed to respond to or rebut the Complainant’s assertions in this proceeding. In the absence of any response from the Respondent and rebuttal evidence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the second element of paragraph 4(a) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Complainant’s AUTODESK trade mark is well recognized, having been in use for a very long time and extensively across the world. The Panel is persuaded that the Respondent could not by pure coincidence have selected the disputed domain name without the Complainant and/or its AUTODESK trade mark in mind. The “mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith” (per section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). The Panel agrees that the disputed domain name is so obviously connected with the well-known AUTODESK trade mark that the Respondent, who has no apparent connection to AUTODESK-branded products, suggests opportunistic bad faith. The Panel finds that the Respondent’s absence of rights or legitimate interests in the disputed domain name, the well-known nature of the Complainant’s trade mark, the Respondent’s failure to respond in this proceeding, as well as the pay-per-click nature of the website to which the disputed domain name resolves which connect to the goods and services of competitors of the Complainant, all lead to the conclusion that the disputed domain name was registered and is being used in bad faith.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy has been satisfied.
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 <cautodesk.com> be transferred to the Complainant.
Date: June 18, 2021