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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. Bayram Fatih Aksoy

Case No. D2016-2000

1. The Parties

The Complainant is Autodesk, Inc. of San Rafael, California, United States of America ("United States"), represented by Donahue Fitzgerald, United States.

The Respondent is Bayram Fatih Aksoy of Istanbul, Turkey, represented by Cenk H. Uzunboy, Turkey.

2. The Domain Name and Registrar

The disputed domain name <autocadmep.com> is registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 3, 2016. On October 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 3, 2016, 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 October 13, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2016. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on November 3, 2016.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 11, 2016. 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 offers all over the world licensed copies of computer software programs, the associated user manuals, and related documentation. It works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorized training centers to assist its customers with their use of the Complainant's products. Since 1983, the Complainant has distributed over 9.3 million standalone copies, and over an additional 8.5 million copies bundled into suites, of its products. "AutoCAD MEP" is the name of one of the Complainant's software products, distributed to the public since 2007.

The Complainant is the owner of the trademark AUTOCAD with Registration number 1316773, registered in the United States on January 29, 1985 for goods in International Class 09 (the "AUTOCAD trademark").

On April 24, 1998, the Complainant registered the <autocad.com> domain name, and since then it has used it as an online portal for the Complainant's AutoCAD software products.

The disputed domain name was registered on November 5, 2009. It is not affiliated with any website.

5. Parties' Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical or confusingly similar to the AUTOCAD trademark. The "autocadmep" element of the disputed domain name incorporates the AUTOCAD trademark with the addition of the "mep" element, which is identical to the acronym "MEP" – an industry term that refers to "mechanical, engineering, and plumbing" and which describes the type of design work that can be accomplished using the Complainant's AutoCAD MEP software. The use of this acronym in tandem with the AUTOCAD trademark reinforces the connection that the public may make between the disputed domain name and the Complainant's products.

According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the exclusive owner of all rights in the AUTOCAD trademark, and has never authorized the Respondent or anyone doing business as "autocadmep.com" to incorporate the AUTOCAD trademark into the disputed domain name or to use the AUTOCAD trademark in the Respondent's website at the disputed domain name. The Complainant is not affiliated with, and has never endorsed or sponsored the Respondent, its business, or the Respondent's website. The Respondent registered the disputed domain name more than a quarter century after the Complainant first registered the AUTOCAD trademark. The Respondent knowingly registered the disputed domain name consisting of the AUTOCAD trademark and the "MEP" acronym to capture the attention of Internet users searching either for the Complainant or for information concerning its AutoCAD MEP software product. The Respondent also registered two other domain names incorporating the AUTOCAD trademark and four other domain names incorporating Autodesk's REVIT trademark. The Respondent has made no use of the disputed domain name for years, and the passive holding of a domain name does not constitute a legitimate noncommercial or fair use or a bona fide offering of goods or services under the Policy. The Respondent has never been commonly known by the disputed domain name. On September 30, 2011, the Respondent filed an application with the Turkish Patent Institute to register in Turkey a trademark for "a.u.to cadmep", which was rejected in 2013.

The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith. The Respondent conducts business via the website associated with the domain name <mepsolutions.net>, where the Respondent advertises training courses covering various software products manufactured by the Complainant, including the AutoCAD MEP software. This shows that the Respondent registered the disputed domain name with knowledge of the Complainant in attempt to benefit from the Complainant's goodwill and the AUTOCAD trademark.

The Complainant submits that the Respondent has engaged in a pattern of registering domain names to prevent the Complainant from reflecting its trademarks in corresponding domain names. Aside from the disputed domain name, the Respondent has registered at least six other domain names incorporating trademarks of the Complainant, including <autocadmep.net> and <autocadmep.org>.

According to the Complainant, the Respondent has registered the disputed domain name for the primary purpose of selling it to the Complainant for an amount significantly higher than the Respondent's out-of-pocket costs directly related to the disputed domain name. The Respondent is presently offering to sell the disputed domain name registration for 9,900 US Dollars.

B. Respondent

The Respondent did not submit any formal response. It submitted only the copy of a cease-and-desist letter dated 2011 regarding the disputed domain name sent by the Complainant's authorized representative at that time and its Response whereby the Respondent rejected to transfer the disputed domain name to the Complainant, as well as the copies of the Registrar emails regarding the renewal of the disputed domain name since its registration date.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…" In the event of a default, under Rules, paragraph 14(b): "…the Panel shall draw such inferences therefrom as it considers appropriate."

As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the UDRP panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."

In this administrative proceeding, the Respondent's failure to submit a formal response entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the reasonable assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the AUTOCAD trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain ("gTLD") section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the ".com" gTLD part of the disputed domain name.

In view of the above, the relevant section of the disputed domain name is "autocadmep". This section contains two distinguishable elements – "autocad" and "mep". The "autocad" element is identical to the Complainant's distinctive AUTOCAD trademark, while the "mep" element, as contended by the Complainant, represents an industry acronym that refers to "mechanical, engineering, and plumbing". The combination of these two elements is likely to appear to Internet users as representing an online location related to the Complainant's AutoCAD MEP software product.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the AUTOCAD trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the AUTOCAD trademark and has not been authorized by the Complainant to use it. The Respondent has knowingly registered the disputed domain name consisting of the AUTOCAD trademark and the "MEP" acronym to capture the attention of Internet users searching either for the Complainant or for information concerning its AutoCAD MEP software product, and has not carried out a bona fide activity through the disputed domain name. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

There is no evidence in the available record that the Respondent is commonly known by the disputed domain name, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.

The disputed domain name incorporates the well-known AUTOCAD trademark of the Complainant as its distinctive element, with the addition of an industry acronym that describes the field of application of a software product of the Complainant whose name is identical to the disputed domain name. The Respondent uses a website that offers training and other services for the software products of the Complainant. This satisfies the Panel that the Respondent must have been aware of the AUTOCAD trademark when it registered the disputed domain name, and that it chose to target the AUTOCAD trademark because of the likelihood that it will attract traffic to the Respondent's website. In the Panel's view, in the absence of any evidence to the contrary, such conduct of the Respondent cannot give rise to a right or legitimate interest of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Complainant's prima facie case has not been rebutted, and that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line 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."

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed in section 6.B above, the Respondent maintains a website which advertises training courses for the Complainant's software products, including the AutoCAD MEP software, and the disputed domain name is confusingly similar to the AUTOCAD trademark of the Complainant. This satisfies the Panel that the disputed domain name was registered with knowledge of the well-known AUTOCAD trademark and in view of its popularity.

As submitted by the Complainant, the Respondent has also registered the domain names <autocadmep.net> and <autocadmep.org>, and is presently offering to sell the disputed domain name registration is for sale for 9,900 US Dollars, which is an amount significantly higher than the Respondent's out-of-pocket costs directly related to the disputed domain name.

In view of the above, and in the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that the Respondent has engaged in a pattern of registering domain names to prevent the Complainant from reflecting the AUTOCAD trademark in corresponding domain names, and that the Respondent has registered the disputed domain name primarily for the purpose of selling its registration to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

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 name <autocadmep.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 5, 2016

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