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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. (“Autodesk”) v. Domain Admin / Whois Privacy Corp.

Case No. D2016-2063

1. The Parties

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

The Respondent is Domain Admin / Whois Privacy Corp., Nassau, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <autocadfree.org> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2016. On October 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 12, 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 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 4, 2016.

The Center appointed Ladislav Jakl as the sole panelist in this matter on November 18, 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 is Autodesk, Inc. (“Autodesk”), a United States – based corporation with its principal place of business in the State of California. The Complainant is the holder of United States AUTOCAD word trademark No. 1316763, registered on January 29, 1985 (Exhibit G to the Complaint). The Complainant has also obtained its exclusive rights AUTOCAD trademark registrations covering at least seventy six jurisdictions, for example: Russian Federation No. 083966; European Union Trade Mark No. 004036745; Benelux No. 0465001; Canada No. TMA324983; China No. 307895 (Exhibits B-F to the Complaint).

The Complainant is also the owner of the domain name <autocad.com>, registered on April 24, 1998 (Exhibit K to the Complaint).

The disputed domain name <autocadfree.org> was registered on January 7, 2015 (Exhibit A to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that the disputed domain name <autocadfree.org> is identical or confusingly similar to its trademark AUTOCAD, that the Respondent has no rights or legitimate interests in respect to the disputed domain name and that the disputed domain name was registered and is being used in bad faith.

The Complainant states that the disputed domain name <autocadfree.org> incorporates the Complainant’s trademark AUTOCAD in its entirety and that the addition of a generic Top-Level Domain (“gTLD”) “.org” and the generic term “free” does not sufficiently distinguish the disputed domain name from trademark of the Complainant. The addition of the generic term “free” does not sufficiently distinguish the disputed domain name from the Complainant’s trademark. Reference is made to the UDRP decision Busy Body, Inc, v. Fitness Outlet Inc., WIPO Case No. D2000-0127 and Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426, according to them a user of a mark may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it. Furthermore, the Complainant’s use and registration of the mark AUTOCAD do predate the Respondent’s registration of the disputed domain name. The Complainant concludes that the disputed domain name is confusingly similar to the disputed domain name.

As to rights or legitimate interests, in respect of the disputed domain name, the Complainant essentially contends that it has exclusive rights for AUTOCAD trademark and that no license or authorization was granted to the Respondent to use the AUTOCAD trademark in the disputed domain name. Furthermore the Complainant contends that the Respondent had knowledge of the Complainant’s AUTOCAD mark when it registered the disputed domain name, has not used the disputed domain name in connection with a bona fide offering of goods, has never been commonly known by the disputed domain name and that the Respondent’s commercial use of the Complainant’s trademark is not protected by the fair use doctrine. The Complainant concludes that the Respondent does not have any rights or legitimate interests in disputed domain name.

Furthermore the Complainant argues that the disputed domain name is also being used in bad faith, as at the time of its registration the Respondent knew or should have known of the registration and use of the Complainant’s trademarks prior to the Respondent registering the disputed domain name and that registration of a well-known trademark as a domain name is a clear indication of bad faith itself, even without considering other elements. References are made to the UDRP decisions Faconnable SAS v. Names4sale, WIPO Case No. D2001-1365; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. Moreover the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to source, sponsorship, affiliation, or endorsement of either the Respondent or the Respondent’s websites. The disputed domain name is being used in bad faith, as the Respondent at the time of registering it had knowledge of the Complainant’s rights in the AUTOCAD mark incorporated into that domain name (Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886). In addition the Respondent’s use of the disputed domain name for the Respondent’s website, which advertises and purports to allow consumers to download illegal copies of Complainant’s software products is a per se illegal activity that proves the Respondent’s bad faith in registering and using the disputed domain name. The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that links on the website are associated or recommended by the Complainant.

In accordance with paragraph 4(i) of the Policy, for the described reasons, the Complainant requests, that the disputed domain name <autocadfree.org> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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

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

(iii) the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant.

A. Identical or Confusingly Similar

The disputed domain name <autocadfree.org> incorporates the Complainant’s trademark AUTOCAD in its entirety and that the addition of a the generic term “free” does not sufficiently distinguish the disputed domain name from trademark of the Complainant (Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694; Busy Body, Inc. v. Fitness Outlet Inc., supra; Autodesk, Inc. v. Nurinet, supra). The gTLD suffix “.org” does not avoid confusing similarity between a domain name and trademark for the purposes of the Policy (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; Sanofi-Aventis v. Brad Hedlund, WIPO Case No. D2007-1310). Furthermore, the Panel notes that the Complainant’s use and registration of the mark AUTOCAD do predate the Respondent’s registration of the disputed domain name.

For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark AUTOCAD in which the Complainant has registered rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name. Any of the following circumstances, as indicated in paragraph 4(c) of the Policy, in particular but without limitation shall demonstrate rights or legitimate interests:

(i) before the Respondent obtained any notice of the dispute, he has used or has made demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as individual, business, or other organization) has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or

(iii) the Respondent was making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel accepts the arguments of the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name, as the Complainant has exclusive rights for AUTOCAD trademark and that no license or authorization was granted to the Respondent to use the AUTOCAD trademark in the disputed domain name. The Respondent has not used the disputed domain name in connection with a bona fide offering of goods, has never been commonly known by the disputed domain name and that the Respondent’s commercial use of the Complainant’s trademark is not protected by the fair use doctrine. The Respondent is using the Complainant’s trademark in order to divert Internet users from the Complainant’s website by capitalizing on the public recognition of the AUTOCAD trademark. This cannot provide the Respondent with any rights or legitimate interests in the disputed domain name. The Respondent has no connection with or affiliation to the Complainant and has not received any express or implied license or authorization to use AUTOCAD trademarks in a domain name or in any other manner. A mere registration of a domain name does not give the owner a right or a legitimate interest in the domain name itself (Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666; St Andrews Links Ltd. v. Refresh Design, WIPO Case No. D2009-0601; Gibson, LLC v. Jeanette Valencia, WIPO Case No. D2010-0490).

For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular, but without limitation, are to be construed as evidence of both:

(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) the Respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 his website or of a product or service on that website or location.

The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name in bad faith as he knew or should have known of the registration and use of the Complainant’s trademarks prior to registering the disputed domain name. That registration of a well-known trademark as a domain name is a clear indication of bad faith (Faconnable SAS v. Names4sale, supra; The Gap, Inc. v. Deng Youqian, supra. The incorporation of a well-known trademark into a domain name by a registrant having no plausible explanation for doing so may be an indication of bad faith (Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273). Moreover, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with Complainant’s trademark as to source, sponsorship, affiliation, or endorsement of his website (Popular Enterprises.LLC v. American Consumers First et al., WIPO Case No. D2003-0742). In such a way the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The disputed domain name is being used in bad faith, as the Respondent at the time of registering a disputed domain name had knowledge of the Complainant’s rights in the AUTOCAD mark (Lance Armstrong Foundation v. CSA Marketing, supra). In addition the Complainant alleges and the Respondent has not refuted that the Respondent’s use of the disputed domain name and Respondent’s website allows consumers to download purportedly illegal copies of Complainant’s software products. Such commercial activity trading on the goodwill associated with the Complainant’s mark is indicative of the Respondent’s bad faith in registering and using the disputed domain name. The Respondent, by using the disputed domain name, is intentionally misleading the consumers and confusing them by making them believe that links on the website are associated or recommended by the Complainant.

For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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, <autocadfree.org> be transferred to the Complainant.

Ladislav Jakl
Sole Panelist
Date: December 2, 2016

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