WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autodesk, Inc. v. Brian Byrne, meshIP, LLC
Case No. D2017-0191
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 Brian Byrne, meshIP, LLC of Plano, Texas, United States, self-represented.
2. The Domain Names and Registrar
The disputed domain names <autocadcloud.com> and <hostedautocad.com> are registered with Register.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2017. On February 1, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 February 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2017. The Response was filed with the Center on February 27, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on March 7, 2017. 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.
On March 8, 2017, the Complainant submitted to the Center a supplemental filing ("Complainant's Supplemental Filing"). The Respondent, in an email to the Center of March 8, 2017, requested leave to submit a reply should the Panel allow the Complainant's Supplemental Filing. The Panel on March 13, 2017 issued an Administrative Panel Order accepting the Complainant's Supplemental Filing and granting the Respondent leave to file a reply addressing the issues raised in the Complainant's Supplemental Filing. In view of the Parties' supplemental submissions, the date for the Panel to forward its decision to the Center was extended to April 4, 2017.
4. Factual Background
The Complainant licenses computer software programs and related documentation, including computer aided design ("CAD") programs, using the AUTOCAD trademark. The Complainant has continuously used the AUTOCAD mark since 1983. In addition to the initial registration of the AUTOCAD mark in the United States on January 29, 1985, the Complainant has registered AUTOCAD and AUTOCAD-formative trademarks in more than seventy (70) countries around the world, including the countries comprising the European Union, the Benelux countries, Canada, the Russian Federation, and China. The Complainant reports that there are over 9 million users of the Complainant's products, with more than 17 million copies of software bearing AUTOCAD or AUTOCAD-formative marks distributed. The Complainant registered the domain name <autocad.com> in 1998, and has continually used the domain name with the Complainant's website since then.
The Respondent registered the disputed domain names <autocadcloud.com> and <hostedautocad.com> on January 28, 2011, and sometime thereafter associated the disputed domain names with parking pages containing pay-per-click advertising links to websites offering software products competing with the Complainant's AUTOCAD software products. Upon becoming aware of the Respondent's registration of the disputed domain names, the Complainant on March 1, 2011, forwarded by email a notice letter to the Respondent seeking the transfer of the disputed domain names. The Respondent discontinued the use of the disputed domain names with the pay-per-click sites in question, but on March 11, 2011, in response to further inquiries from the Complainant, declined to transfer the disputed domain names, citing "nominative use" as explained in a United States Court of Appeals decision in Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). Since that time, however, the Respondent has passively held the disputed domain names.
5. Parties' Contentions
A. Complainant
i. Complaint
The Complainant submits that the disputed domain names are identical or confusingly similar to the AUTOCAD mark, in which the Complainant asserts exclusive rights based on registrations in the United States, Russian Federation, European Union, Benelux, China, and many other countries around the world. The Complainant also asserts it has demonstrated common law rights in the AUTOCAD mark, relying on the sale of licenses for its various software products, long and exclusive use of the mark in commerce, a substantial user base, significant advertising and promotional expenditures in the millions of dollars, and unsolicited media coverage. According to the Complainant, its AUTOCAD mark is famous worldwide.
The Complainant notes that its AUTOCAD mark is incorporated in its entirety in both of the disputed domain names. The Complainant explains that the addition of the generic terms "cloud" in the disputed domain name <autocadcloud.com> and "hosted" in the disputed domain name <hostedautocad.com> do not serve to distinguish either of the disputed domain names from the Complainant's AUTOCAD mark, citing UDRP panel decisions Autodesk, Inc. v. Nurinet, WIPO Case No. D2011-1426; Autodesk, Inc. v. Whois Privacy Protection Services Inc. / Kelly Chow, Home, WIPO Case No. D2015-1300; Autodesk, Inc. v. Cayman Ninety Business, WIPO Case No. D2015-1360; Autodesk, Inc. v. Domain Administrator / Top Business Names, WIPO Case No. D2015-1950; and Autodesk, Inc. ("Autodesk") v. Domain Admin / Whois Privacy Corp., WIPO Case No. D2016-2063.
According to the Complainant, the common words "cloud" and "hosted" if anything enhance the connection with the Complainant's AUTOCAD mark because both words are used in the software industry to describe the online storage of electronic data. The Complainant further asserts that the generic Top-Level Domain ("gTLD") ".com" is usually disregarded in assessing identity or confusing similarity under paragraph 4(a)(i) of the Policy.
The Complainant maintains that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant's AUTOCAD mark for any purpose. The Complainant denies that it has endorsed or sponsored the Respondent or the Respondent's websites, or has any affiliation with the Respondent or the Respondent's websites.
The Complainant submits that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant maintains that the Respondent clearly was aware of the world-famous AUTOCAD mark when registering the disputed domain names on January 28, 2011, and that the Respondent's use of the disputed domain names to divert Internet users to websites advertising third-party software products competing directly with the Complainant does not constitute bona fide use within the meaning of paragraph 4(c)(i) of the Policy.
The Complainant contends that as the Respondent had actual (or constructive) knowledge of the Complainant's rights when registering the disputed domain names, the Respondent "had notice of this dispute" and cannot avail himself of paragraph 4(c)(i) to demonstrate rights or legitimate interests in the disputed domain names. The Complainant further submits that the Respondent's subsequent passive holding of the disputed domain names after ceasing to direct the disputed domain names to pay-per-click websites does not establish a basis for asserting rights or legitimate interests in the disputed domain names.
The Complainant asserts that the Respondent would not have chosen the Complainant's well-known AUTOCAD mark for incorporation into the disputed domain names unless he was intentionally seeking to create in consumers' minds a false impression of affiliation, endorsement, or sponsorship by the Complainant. The Complainant reiterates that the Respondent cannot rely on the "demonstrable preparations to use" language of paragraph 4(c)(i), and asserts that the Respondent must provide documentary evidence substantiating concrete steps the Respondent purportedly had already taken in anticipation of making a bona fide use of the disputed domain names. The Complainant submits it is well settled under the Policy that use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or services.
The Complainant maintains that the Respondent has not made a legitimate noncommercial or fair use of the disputed domain names within the contemplation of paragraph 4(c)(iii) of the Policy. The Complainant submits that the Respondent's use of the disputed domain names to divert Internet users to parking pages containing advertising links to other websites offering products competing directly with those of the Complainant cannot be deemed a fair use of the disputed domain names. According to the Complainant, this is reinforced by the Respondent's inclusion in the disputed domain names of the generic, software-related words "cloud" and "hosted", which serve to create further confusion in consumers' minds whether the websites are endorsed or sponsored by the Complainant. The Complainant observes that, while the Respondent's websites included some links to the Complainant's products, the inclusion on the Respondent's website of links to the Complainant's competitors is not a fair use, but rather evocative of deceptive bait and switch advertising practices, citing Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
In view of the foregoing, the Complainant maintains that the Respondent registered and has used the disputed domain names in bad faith. The Complainant points to decisions under the UDRP concluding in various contexts that bad faith may be found where a respondent knew or should have known of the complainant's trademark when registering a domain name. The Complainant notes that the use of a well-known trademark as a domain name by someone with no connection to the product suggests opportunistic bad faith. The Complainant submits such is the case here with the Respondent's registration of the disputed domain names decades after the Complainant registered and began using its well-known AUTOCAD mark.
The Complainant submits that bad faith is demonstrated under paragraph 4(b)(iv) of the Policy because the Respondent intentionally has attempted to attract for commercial gain Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's AUTOCAD mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites or the goods or services offered thereon. The Complainant argues that the Respondent was fully aware of the Complainant's rights when registering the disputed domain names; that the Complainant's AUTOCAD mark is an invented word with no meaning other than as an indicator of source for the Complainant's products; that the generic words in the disputed domain names are commonly used in the Complainant's line of business; and that the Respondent was contacted by the Complainant based on the Respondent's use of the disputed domain names to divert Internet users to websites where products competing with those of the Complainant were offered.
The Complainant further submits that the Respondent's passive holding of the disputed domain names since being placed on notice of the Complainant's rights on March 1, 2011 can be considered bad faith use of the disputed domain names under the seminal decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
ii. Complainant's Supplemental Filing
The Complainant submits that the Respondent acknowledges being aware of the Complainant's rights in the AUTOCAD mark when registering the disputed domain names, and that the Respondent's only use of the disputed domain names prior to being contacted by the Complainant was with websites containing advertising links offering products directly competitive with the Complainant's AUTOCAD products. According to the Complainant, it is well settled UDRP jurisprudence that such use constitutes bad faith. The Complainant argues that the Respondent cannot utilize paragraph 4(c)(i) of the Policy to demonstrate rights or legitimate interests in the disputed domain names based on a claimed good faith use commencing only after the Respondent received notice of the dispute.
The Complainant further asserts that the Respondent's claimed lack of knowledge of the use of the disputed domain names with pay-per-click parking pages is not exculpatory, as UDRP panels have repeatedly held that a registrant has a responsibility to ensure that its domain name is not used in bad faith. According to the Complainant, the Respondent's redirecting the disputed domain names away from these pay-per-click websites after receiving the Complainant's initial notice letter demonstrates his control of the websites, and the Respondent's argument that he did not personally profit from the third-party advertisements is irrelevant.
The Complainant argues that the Respondent has not brought forth demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Complainant asserts that the Respondent's two email exchanges with customers in 2010 and 2011 do not mention the disputed domain names or reflect any use or intention to use the disputed domain names. According to the Complainant, these email communications further confirm the Respondent's awareness of the Complainant's rights in the AUTODESK marks prior to his registration of the disputed domain names. The Complainant submits the Respondent has offered no evidence of having taken concrete, tangible steps to use the disputed domain names.
According to the Complainant, the Respondent cannot rely upon the nominative fair use defense because he has not made a nominative fair use of the disputed domain names in connection with the provision of goods or services related to the Complainant's AUTOCAD software products. The Complainant submits that the Respondent has not demonstrated that his business provides cloud and hosting services keyed only to the Complainant's AUTOCAD software, and that the Respondent promotes on his website the capability to provide cloud/hosting services for many third-party products unrelated to AUTOCAD, including "desktop applications" and "business applications" as well as Microsoft Office, Microsoft Exchange, and SAAS applications. The Complainant asserts that the Respondent's services are identifiable without reference to the AUTOCAD mark, and thus the nominative fair use defense is unavailable to the Respondent. The Complainant further argues that the Respondent's reliance on Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("Oki Data") is misplaced, as Oki Data considers and applies nominative fair use principles with reference to the respondent's use of the complainant's mark in a domain name.
The Complainant submits that the Respondent cannot place reliance upon the defense of laches, arguing that the non-applicability of the defense of laches has long been recognized by UDRP panels. The Complainant further asserts that were the Panel to consider the Respondent's equity-based laches argument, there is no evidence that the Respondent has incurred any expenditure or other detriment (other than registration costs) in reliance upon the Complainant's acquiescence. The Complainant observes that in 2011 the Respondent was put on notice that his use of the disputed domain names with advertising links to third-party products competing with the Complainant's products violated the Policy, and that the Respondent then ceased such bad faith use and began passively holding the disputed domain names. On this basis, the Complainant submits the Respondent has not been prejudiced by any act or omission of the Complainant in relation to the disputed domain names. Finally, the Complainant asserts that it has never interfered with the Respondent's ability to use his <hostedcad.com> domain name.
B. Respondent
i. Response
The Respondent represents that he owns and operates a technology services and consulting company, meshIP, LLC, incorporated in the state of Texas in 2005. The Respondent indicates that his company provides strategic and technical consulting for implementation and deployment of cloud computing, hosted applications, and virtualization services, with an emphasis on assisting small to mid-sized companies in transitioning from premises-based information technology infrastructures to cloud computing and hosted infrastructure. According to the Respondent, there are unique technical and deployment challenges associated with the transition to a cloud hosted environment, which is especially true for engineering companies utilizing CAD software such as the Complainant's AUTOCAD software.
The Respondent acknowledges being aware of the Complainant's AUTOCAD software, and references a 2008 press release in which the Complainant announced the availability of "Citrix Ready" applications, and identified a number of the Complainant's AUTOCAD software supporting the Citrix environment. The Respondent asserts that in 2010 his clients in the engineering industry sought his assistance in connection with the use of the clients' fully licensed AUTOCAD software in a third-party enabled, cloud hosted environment. The Respondent maintains he registered the disputed domain names on January 28, 2011,1 with the intention of making a nominative use of the disputed domain names in connection with a bona fide offering of services that would not be in competition with the Complainant. He relies on the decision of the United States Court of Appeals for the Ninth Circuit in Toyota Motor Sales v. Tabari, 610 F.3d 1171 (9th Cir. 2010). The Respondent asserts that he has offered services that assist the Complainant's smaller customers in realizing the benefits of the cloud deployment of their licensed AUTOCAD software.
The Respondent contends the disputed domain names are not identical or confusingly similar to the Complainant's AUTOCAD mark. The Respondent takes issue with the Complainant's characterization of the terms "cloud" and "hosted" as generic terms commonly used in the software industry to describe the online storage of electronic data. The Respondent submits these terms specifically describe the implementation of complex technologies needed to move the resources to run a software application from a server or local computer to a shared or third-party owned service. According to the Respondent, his services include assisting his clients in moving their licensed AUTOCAD software to cloud hosted infrastructure. The Respondent submits two emails, dated November 8, 2010 and January 25, 2011 respectively, predating the Respondent's registration of the disputed domain names, which the Respondent contends reflect demonstrable preparations to use the disputed domain names in connection with the services described by the Respondent. The Respondent maintains on this basis that he has established rights or legitimate interests in the disputed domain name.
The Respondent takes issue with the Complainant's contention that the Respondent's bad faith is demonstrated by his non-use of the disputed domain names since he was contacted by the Complainant in March 2011. The Respondent contends the use of the disputed domain names with a website is not the sum total of how domain names may be used on the Internet, and legitimate interests in domain names may be demonstrated through other means. The Respondent denies any intention to have registered the disputed domain names in order to sell the disputed domain names to the Complainant, or otherwise to seek to profit from or take advantage of the Complainant's rights in the AUTOCAD marks. The Respondent denies any involvement in the use of the disputed domain names with advertising links to the Complainant's competitors, or knowledge of such use prior to being contacted by the Complainant on March 1, 2011. According to the Respondent, the advertising on the website was placed there by the hosting provider Register.com, and any revenue derived from these ads accrued directly to Register.com. The Respondent insists that he in no way profited from the advertising. The Respondent acknowledges that upon being notified by the Complainant in March 2011 he redirected the disputed domain names away from the Register.com parking pages, and represents that for the past six years the disputed domain names lead to "dead sites" that are not reachable to Internet users or search sites.
In view of the foregoing, the Respondent submits that the Complainant has failed to demonstrate that the disputed domain names have been registered or used in bad faith under paragraph 4(a)(iii) of the Policy. The Respondent further asserts that the Complainant is barred under the doctrine of laches from bringing this Complaint, noting that six years have passed since the Complainant notified the Respondent of the Complainant's concerns. The Respondent cites a UDRP panel decision looking to United States law for the proposition that laches may be a valid defense. The Respondent maintains that he was prevented from investing in and building websites using the disputed domain names due to the "outstanding threat" by the Complainant's counsel to seek remedies through legal and administrative means.
ii. Respondent's Reply
The Respondent disputes the Complainant's assertion that he cannot utilize the nominative fair use defense, and maintains that he has fully documented his intent and his demonstrable preparations to use the disputed domain names for a bona fide purpose. The Respondent suggests that the Complainant's counsel lacks basic business and marketing sense, and questions why he would discuss his marketing strategy or planned domain name use in sales correspondence with clients. However, the Respondent submits the emails sent to customers that he relies upon conclusively demonstrate his good faith motivation for registering the disputed domain names as part of a legitimate marketing strategy associated with and in preparation before any notice of the dispute to use the disputed domain names in connection with a bona fide offering of services.
According to the Respondent, <hostedcad.com> was one of three domain names he registered in anticipation of and preparation for making a bona fide offering of services, but was not his preferred choice among the three domain names. The Respondent asserts this was a marketing decision and submits that his technical expertise is specifically in cloud hosting, licensed AUTOCAD software, and not other competing CAD software. The Respondent observes that the Complainant's AUTOCAD software held the "lion's share" of his targeted market in the Architecture, Engineering, and Construction ("AEC") industries at the time he was launching his new service. The Respondent represents that the use of the disputed domain names (incorporating the Complainant's AUTOCAD mark) was key to assisting potential clients to "identify me as a source of a particular service." The Respondent states that there are several pages on the Respondent's "www.meship.com" website associated with cloud hosting that specifically mention the Complainant or its AUTOCAD software.
The Respondent takes issue with the Complainant's argument that the nominative fair use doctrine does not apply since the Respondent has not used the disputed domain names at all since receiving the Complainant's initial notice letter. The Respondent asserts that the Complainant's initial letter and subsequent communications had the effect of putting his marketing initiatives and fair use of the disputed domain names on hold. The Respondent questions why any rational entrepreneur of limited resources would invest in building websites to use the disputed domain names while the threat of legal action remains, and reiterates that the Complainant waited six years to bring this Complaint under the UDRP.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See "Final Report of the First WIPO Internet Domain Name Process", April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names <autocadcloud.com> and <hostedautocad.com> are confusingly similar to the Complainant's AUTOCAD mark, in which the Complainant has established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the Complainant's AUTOCAD mark is clearly recognizable in the disputed domain names. The addition in the disputed domain names of the descriptive words "cloud" and "hosted" does not dispel the confusing similarity. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's AUTOCAD mark. The disputed domain names incorporate the Complainant's AUTOCAD mark in its entirety, and prior to being put on notice by the Complainant in March 2011, the disputed domain names resolved to parking pages including pay-per-click advertising links to websites offering software products competing with the Complainant's AUTOCAD software products. Subsequent to being contacted by the Complainant, the Respondent discontinued such use, but he refused at that time to transfer the disputed domain names to the Complainant. The Respondent since has passively held the disputed domain names.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As noted above, the Respondent contends that he registered the disputed domain name for purposes of making a nominative fair use, relying on the United States Ninth Circuit Court of Appeals decision in Toyota Motor Sales v. Tabari , supra (hereinafter "Tabari"). In Tabari, the plaintiffs were auto brokers, who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com>. The Tabari decision builds on the Ninth Circuit's earlier decision in New Kids on the Block v. News American Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992), in which the court of appeals held the referential use of another's trademark is permissible where (1) the trademark owner's product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the mark owner.
The Respondent also relies upon the UDRP decision in Oki Data. In Oki Data,the respondent was a reseller of the complainant's OKIDATA-branded products, and registered the domain name <okidataparts.com>. The panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a reseller could be deemed a "bona fide offering of goods or services" within the meaning of the Policy only if the following conditions are satisfied: (1) the respondent must actually be offering the goods or services at issue; (2) the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods); (3) the site itself must accurately disclose the respondent's relationship with the trademark owner; and (4) the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Respondent's reliance on Tabari and Oki Data is somewhat misplaced. The Respondent (1) has not attempted to make any nominative fair use of the disputed domain names for six years, and more importantly (2) has not brought forward evidence demonstrating preparations to make such a nominative fair use of the disputed domain names, either before or after receiving the Complainant's notice letter in March 2011. The Respondent relies principally on two email communications to customers, both of which predate the registration of the disputed domain names, in which the Respondent refers to services provided in connection with customers wishing to use the Complainant's AUTOCAD software in a cloud hosted environment. In these communications, however, the Respondent does not use the Complainant's AUTOCAD mark in a referential manner to identify his services; rather he is using the AUTOCAD mark in reference to the Complainant's software. Further, insofar as the record before this Panel reflects, the disputed domain names have not been used since March 2011, and then only with pay-per-click websites providing advertising links to other websites offering products competitive with those of the Complainant.
The record before this Panel does not reflect the Respondent's use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. The Respondent has made no claim to have been commonly known by the disputed domain names, or to have acquired trademark or service mark rights in the disputed domain names. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names. In short, the Respondent has not come forward with evidence of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondent was aware of the Complainant and the Complainant's AUTOCAD mark when registering the disputed domain names. The disputed domain names at first were used to generate pay-per-click advertising revenues, a practice that ceased only when the Complainant issued a notice letter to the Respondent. While the Respondent denies knowledge of such use the disputed domain names, the Respondent generally is responsible for the content appearing on websites to which his domain names resolve. See The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057. See generally WIPO Overview 2.0, paragraph 3.8.
The Respondent's registration of multiple domain names appropriating the Complainant's AUTOCAD mark and the use of the disputed domain names to generate advertising revenues as described above is in and of itself evocative of bad faith. Additionally, the record before the Panel casts significant doubt on the Respondent's professed intention to make a nominative fair use of the disputed domain names, given the lack of any evidence whatsoever of preparations to do so (instead, merely self-serving claims that he was not inclined to invest resources to that end), and the Respondent's subsequent passive holding of the disputed domain names.
The Respondent's passive holding of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, "the relevant issues is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. . . . it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances, among others, to be indicative of the Respondent's bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant's AUTOCAD mark is well known, and the Respondent was aware of the Complainant and the Complainant's rights in the mark when registering the disputed domain name. The Respondent, after initially using the disputed domain name to generate advertising revenues, was placed on notice by the Complainant. The Respondent then discontinued this use of the disputed domain names, but refused to transfer the disputed domain names to the Complainant. The Respondent at that time cited Tabari,but has never used the disputed domain names for the purpose he now claims, despite having held the disputed domain names continuously since then.
The Panel subscribes to the view shared by many other UDRP panelists that the defense of laches generally does not apply under the Policy. Panels have noted that the available remedies under the UDRP are injunctive rather than compensatory in nature, the concern being to avoid ongoing or future confusion as to the source of the communications, goods, or services. The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, supra.While a delay in bringing a complaint may make it more difficult for a complainant to establish its case, particularly on the second and third elements, delay should not be a determinative factor where a complainant can establish a case on the merits under the three requisite elements of the Policy. See WIPO Overview 2.0, paragraph 4.10 and cases cited therein. Further, as the Respondent has chosen to passively hold the disputed domain names after receiving notice, the Respondent has no basis for claiming prejudice or detrimental reliance. See, e.g., Red Bull GmbH v. Kevin Franke, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 names <autocadcloud.com> and <hostedautocad.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: April 4, 2017
1 The Respondent also registered the domain name <hostedcad.com> on January 28, 2011. The WhoIs record for this domain name was included with the Response.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2.