The Complainant is Autodesk, Inc., United States of America (“United States” or “U.S.”), represented by Donahue Fitzgerald LLP, United States.
The Respondent is xingxiang qian, China.
The disputed domain name <3d-autocad.com> (the “Disputed Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2021. On August 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 9, 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 August 9, 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 amendment to the Complaint on August 12, 2021.
The Center verified that the Complaint together with the amendment to 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 August 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 6, 2021.
The Center appointed Kar Liang Soh as the sole panelist in this matter on September 13, 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.
The Complainant is a U.S.-based corporation. Since 1983, the Complainant has been using the word mark AUTOCAD on its software products, which allow a user to render and view three-dimensional drawings, as well as associated user manuals and related documentation. The Complainant sells licences all over the world for these products, and has distributed over 9.3 million standalone copies, and over 8.5 million copies bundled into suites of these products. There are over 9 million users of these products supported by 1,700 channel partners, 3,300 development partners, and 2,000 authorised training centers.
The Complainant owns many trademark registrations for the AUTOCAD mark around the world, including the following:
|
Jurisdiction |
Trademark No |
Registration Date |
|
United States |
1316773 |
January 29, 1985 |
|
China |
307895 |
May 6, 1987 |
|
Russian Federation |
083966 |
October 17, 1988 |
|
European Union |
004036745 |
July 17, 2006 |
Past panels have recognized the reputation of the AUTOCAD mark (e.g., Autodesk, Inc v. Milo Kram, WIPO Case No. D2016-1779; Autodesk, Inc v. Shao Juan Huang, WIPO Case No. D2020-2156).
The Complainant is also the registrant of the domain name <autocad.com> which redirects to the Complainant’s official website at “www.autodesk.com”.
The Disputed Domain Name was registered on March 30, 2021. As of July 29, 2021, the Disputed Domain Name resolved to a website, which featured prominent promotional banners for online gambling links and copious pornographic content.
The Respondent appears to be an individual. Very limited information about the Respondent is available in this proceeding beyond the WhoIs information of the Disputed Domain Name. The address of the Respondent is also incomplete in the WhoIs information, which identifies a province name and country name without providing any other details.
On May 17, 2021, the Complainant’s representative sent a cease and desist letter to the Respondent via the Registrar (as the Respondent’s identity was not disclosed until after registrar verification in this proceeding). The Complainant’s representative did not receive a response to the letter.
The Complainant contends that:
a) The Disputed Domain Name is confusingly similar to the AUTOCAD mark. The Complainant owns trademark registrations for the AUTOCAD mark around the world, the registration of the AUTOCAD mark substantially preceding the registration of the Disputed Domain Name. The addition of the “.com” generic Top- Level Domain (“gTLD”) is irrelevant to the analysis of the confusing similarity. The Disputed Domain Name consists only of the generic prefix “3d-“ appended to the AUTOCAD mark. The “3d-” element is a generic word that does not remove the confusing similarity between the Disputed Domain Name and the AUTOCAD mark;
b) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant is the exclusive owner of the AUTOCAD mark around the world. The Complainant has never authorized the Respondent to incorporate the AUTOCAD mark in the Disputed Domain Name or use the AUTOCAD mark in any other activity. The Complainant has never authorized anyone to use the AUTOCAD mark in connection with any pornographic content. The Complainant is not affiliated with and has never endorsed or sponsored the Respondent, the Respondent’s business or anyone doing business as “3d-autocad”. The Respondent should have known of the world famous AUTOCAD mark when the Respondent registered the Disputed Domain Name. The Respondent is not using the Disputed Domain Name for a bona fide or legitimate offering of goods or services. The use of the Disputed Domain Name for nefarious purposes is not a bona fide offering of goods or services. No evidence suggests the Respondent is called by any name incorporating the AUTOCAD mark or is commonly known by the AUTOCAD mark or Disputed Domain Name; and
c) The Respondent registered and is using the Disputed Domain Name in bad faith. It is implausible for the Respondent to assert that it registered the Disputed Domain Name in good faith and without knowledge of the Complainant’s rights in the AUTOCAD mark. The Respondent has used the Disputed Domain Name in bad faith with the intention to attract, for commercial gain, users to the Respondent’s pornographic website. The Respondent’s registration of the Disputed Domain Name so obviously connected with the Complainant shows opportunistic bad faith.
The Respondent did not reply to the Complainant’s contentions.
In order to succeed in this proceeding, the Complainant must establish that the following limbs of paragraph 4(a) of the Policy were satisfied:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in the Disputed Domain Name; and
(iii) The Respondent registered and is using the Disputed Domain Name in bad faith.
The Complainant has shown that it is the owner of many trademark registrations for the AUTOCAD mark around the world. The Complainant clearly has rights in the AUTOCAD mark. The only difference between the AUTOCAD mark and the Disputed Domain Name is the presence of prefix characters “3d-” in the Disputed Domain Name. It is patently obvious that the prefix “3d-” is a generic acronym for “three dimensions”. The Panel does not see how the prefix could detract from the overall impression of the AUTOCAD mark in the Disputed Domain Name. The prefix does not prevent a finding a confusing similarity between the Disputed Domain Name and the AUTOCAD mark. Accordingly, the Complainant has successfully established the first limb of paragraph 4(a) on the facts.
The Complainant has altogether denied any business relationship by way of authorization, affiliation, endorsement, sponsorship or otherwise with the Respondent. There is nothing in the evidence to suggest that it is otherwise. The Panel agrees that the Respondent’s name bears no iota or resemblance with the AUTOCAD mark and cannot imagine on the evidence available that the Respondent is commonly known by the Disputed Domain Name. The website resolved from the Disputed Domain Name is evidently pornographic in nature and incorporates many promotional banners for online gambling links. The Panel agrees with the Complainant that such use of the Disputed Domain Name does not qualify as bona fide or legitimate noncommercial use. In the circumstances, the Complainant has clearly established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In the absence of any Response having been filed by the Respondent, the prima facie finding stands. The requirements of the second limb of paragraph 4(a) has also been met.
Paragraph 4(b) of the Policy sets out non-exhaustive circumstances of bad faith registration and use of a domain name. Paragraph 4(b)(iv) of the Policy is particularly relevant, and states:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Based on the evidence submitted, the Panel joins the past panels in recognising the reputation of the AUTOCAD mark. It is highly unlikely that the Respondent could have been unaware of the AUTOCAD mark when the Disputed Domain Name was registered. The obvious inference is that the Respondent must have registered the Disputed Domain Name for the purpose of directing traffic to the Respondent’s website with an intention to secure commercial gain by creating a likelihood of confusion with the AUTOCAD mark as to source, sponsorship, affiliation, or endorsement within the meaning of paragraph 4(b)(iv). The Panel has no doubt that the online gambling services promoted by numerous banners on the website must have been intended for commercial gain whether on the part of the Respondent or on the part of the online gambling websites being promoted.
In addition, an abundance of pornographic content is splattered across the Respondent’s website. Past panels have formed a consensus that pornographic content on a respondent’s website is in itself sufficient to support a finding of bad faith due to the high risk of tarnishment of a complainant’s well-known trademark, irrespective of the respondent’s motivation (e.g., VIVENDI v. Guseva Svetlana, WIPO Case No. D2018-2631; Prada SA v. Michael Faronston, WIPO Case No. D2006-0586; Autodesk, Inc v. zhang jie, WIPO Case No. D2019-1583).
By reason of the above, the Panel holds that the Disputed Domain Name was registered and is being used in bad faith, thereby establishing the third limb of paragraph 4(a) 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 Name, <3d-autocad.com>, be transferred to the Complainant.
Kar Liang Soh
Sole Panelist
Date: September 27, 2021