WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc v. shuai zhang, zhang shuai

Case No. D2021-2204

1. The Parties

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

The Respondent is shuai zhang, zhang shuai, China.

2. The Domain Name and Registrar

The disputed domain name <360revit.com> is registered with Long Drive Domains LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 2021, 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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2021.

The Center appointed Antony Gold as the sole panelist in this matter on August 17, 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 is a producer of computer software programs and associated user manuals and related documentation. It operates in many countries and works with approximately 1,700 channel partners, 3,300 development partners and 2,000 authorized training centers in order to support its customers. There are over 9 million users of its software products worldwide.

Various software products of the Complainant are sold under the “REVIT” brand. The Complainant has used its REVIT mark since 2002 and it is protected by a number of trade mark registrations. These include, by way of example only, United States Trade Mark, Registration No. 2565790 for REVIT in classes 9, 21, 23, 26, 36 and 38, first registered by the Complainant’s predecessor, on April 30, 2002. The Complainant has, in addition, secured REVIT trade mark registrations in other jurisdictions, including in China where the Respondent is based. It also owns and operates the domain name <revit.com>, which resolves to a website on which its REVIT-branded products are marketed. The Complainant uses the number “360” in connection with several of its software products, which include “BIM 360” and “Fusion 360”.

The disputed domain name was registered on August 5, 2018. Between, at least, October 2019 and September 2020, it resolved to a website, the content of which was mainly in Chinese characters, which offered various gambling relating services under the trading style (in Latin script) “bet365”. It presently resolves to a directory page containing a series of pay-per-click (“PPC”) links. The links appear to change relatively frequently, but have included “3d Rendering”, “Free 3d Interior Design Software” and “Rendering”¹ .

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain name is identical or confusingly similar to its REVIT trade marks. For the purpose of the comparison, the generic Top Level Domain (“gTLD”) is irrelevant. Incorporating a trade mark into a domain name is sufficient to establish that it is confusingly similar to the trade mark. Moreover, the Complainant’s mark is distinctive and forms the dominant component of the disputed domain name. The addition of the added element “360” does nothing to dispel the connection that the public is likely to make between the disputed domain name and the Complainant, not least when the Complainant uses “360” in conjunction with some of its brand names to denote a number of its other software products.

The Complainant says also that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services. By its use of the disputed domain name, the Respondent has been able to trick consumers into visiting its gambling website and transacting via the gambling content and advertisements on it. Use of a domain name for nefarious purposes does not comprise a bona fide offering of goods and services; see Autodesk, Inc. v. zhang jie, WIPO Case No. D2019-1583. The fact that the Respondent is no longer using the disputed domain name to resolve to a website providing gambling-related services does not affect the position; see Autodesk, Inc. v. Oring Ltd, WIPO Case No. D2020-1610.

The Complainant has never authorized the Respondent to use its mark in the disputed domain name, nor to operate a gambling website using the disputed domain name. Nor has the Respondent been commonly known by the disputed domain name, as is evident from the fact that the WhoIs record does not mention the Complainant’s mark and the Respondent’s gambling website used the trade name “bet365”. Furthermore, the Respondent’s use of the disputed domain name does not comprise a legitimate noncommercial or fair use of it.

The Complainant says, lastly, that the Respondent registered and is using the disputed domain name in bad faith. A finding of bad faith registration can be made where the Respondent knew or should have known of the Complainant’s registration and use of its well-known trade mark prior to its registration of the disputed domain name; see The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. The Respondent’s use of the disputed domain name for illegal or nefarious purposes comprises bad faith use. Other UDRP panels have found that using a well-known trade mark to offer gambling and/or pornography services comprises bad faith use, in that the respondent is seeking to divert Internet users for commercial gain; see, for example, International Business Machines Corporation v. chenaibin, WIPO Case No. D2021-0339. The same reasoning applies here. Moreover, the Respondent’s registration and use of the disputed domain name is so obviously connected with the Complainant as to amount to opportunistic bad faith; see Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain name is identical or confusingly similar to a trade mark 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.

A. Identical or Confusingly Similar

The Complainant has provided details of a number of the registered trade marks it owns for REVIT, including the registration in respect of which full details have been provided above, which thereby establish its rights in this mark.

As a technical requirement of registration, the gTLD, that is “.com” in the case of the disputed domain name, is typically disregarded when assessing confusing similarity. The disputed domain name comprises the Complainant’s REVIT mark preceded by the number “360”. This additional content does not prevent the disputed domain name from being considered confusingly similar to the Complainant’s mark. As explained at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Complainant’s REVIT mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that it is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.

Having regard to the repute of the Complainant’s REVIT mark and its distinctive character, coupled with the disputed domain name’s confusing similarity to this mark, the disputed domain name is evidently being used by the Respondent in order to attract Internet users to its website who are likely to have been searching for a website operated by, or connected with, the Complainant. Irrespective of the content of the Respondent’s website, use of the disputed domain name simply as a means of increasing Internet traffic to its website does not comprise a bona fide offering of goods and services. The use by a respondent of a domain name apt to be associated with a complainant, which resolves to services such as gambling or pornography may be regarded as an exacerbating factor; see, for example, Agfa-Gevaert N.V. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org) / Leng Da Ge, WIPO Case No. D2020-2637.

The second of the circumstances set out at paragraph 4(c) is inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. Nor is the third circumstance applicable; the uses which the Respondent has made of the disputed domain name have plainly been intended to produce commercial benefit for the Respondent and the Respondent’s exploitation of the confusing similarity between the disputed domain name and the Complainant’s mark is not such as to amount to fair use of it. The fact that the disputed domain name also incorporates the number “360”, which has been used by the Complainant in connection with a number of its software products, creates an added resonance with the Complainant. In this respect, see section 2.5.1 of the WIPO Overview 3.0; “[W]here a domain name consists of a trademark plus an additional term (at the second- or Top-Level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”.

Once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

As at the date of registration of the disputed domain name in August 2018, the Complainant had registered and had been using its REVIT mark for approximately 16 years. The mark had subsequently been registered in China where the Respondent is based. The incorporation within the disputed domain name of the Complainant’s mark, coupled with the failure of the Respondent to provide any explanation which might provide a bona fide justification for its registration of it, provides a persuasive indication that Respondent was aware of the Complainant’s REVIT mark as at the date of registration of the disputed domain name and that it was registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. See also Costco Wholesale Membership Inc. and Costco Wholesale Corporation v. Almantas Kakareka and Hostmaster Oneandone, 1&1 Internet, Inc., WIPO Case No. D2007-1833. The Panel therefore finds the Respondent’s registration of the disputed domain name to have been in bad faith.

Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The use to which the Respondent has put the disputed domain name falls within the circumstance described at paragraph 4(b)(iv) in that the Respondent is using the repute of the Complainant’s mark in order to attract Internet users to its website who are likely to assume, from the fact that the disputed domain name is confusingly similar to the Complainant’s REVIT mark, that any website to which it resolves will be connected with the Complainant and its products. The fact that such users would realize, on reaching the Respondent’s website, that this is not the case is immaterial because, whether the disputed domain name resolves to a gambling website or a directory webpage, the Respondent will have lured Internet users to its website and secured an opportunity to earn revenue from the fact that some of those visitors will either use the gambling services offered in the website’s original iteration or, in its most recent iteration, click on some of the PPC links which now feature on the directory page. See for example, Yahoo! Inc. v. Hildegard Gruener, WIPO Case No. D2016-2491

There is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, through service of a response to these proceedings or otherwise. These factors collectively point to bad faith registration and use of the disputed domain name and the fact that the Respondent’s website has previously featured gambling-related content, further confirms the Respondent’s bad faith. See, by way of example; Sanofi v. Yansheng zhang, GNAME.COM PTE. LTD, WIPO Case No. D2021-1751.

The Panel accordingly finds that the disputed domain name was 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 <360revit.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: August 31, 2021

¹ As outlined at section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. The Panel has accordingly visited the website to which the disputed domain name resolves to establish its current use.