Complainant is Autodesk, Inc. of San Rafael, California, United States of America (“United States”), represented by Donahue Fitzgerald, United States.
Respondent is Dennis Dunbar of Philadelphia Pennsylvania, United States.
The disputed domain name <autodesk.co> is registered with NameScout Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2016. On March 31, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 11, 2016, after multiple reminders from the Center, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceeding commenced on April 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 6, 2016.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on May 20, 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.
Complainant has offered for sale licensed copies of computer software programs and related documentation since 1983. Complainant’s products are sold under the mark AUTODESK, which was registered in the United States on January 29, 1985. Complainant also has registered the mark in at least 72 countries, including the European Union, Benelux Office, Canada, and China. It also has established common law trademark rights. Complainant sells licenses on every continent, and has over 9 million users of its products. It has distributed over 9.3 million standalone copies and 8.5 million copies bundled into suites.
Complainant registered <autodesk.com> on August 3, 1989, and has used that domain name continuously to sell its products.
Respondent registered the disputed domain name on October 13, 2013. According to Complainant’s efforts, in February 2016 the disputed domain name resolved to third party webpages advertising products and services unrelated to Autodesk and its products, such as “www.bizrate.com” and “www.walmart.com”. On another of Complainant’s attempts, an effort to access the disputed domain name’s webpage was forwarded to a webpage containing a fake technical support warning that told users to call a telephone number at which a fraudulent technical support technician attempted to convince them to install a backdoor software application to gain unauthorized access to their computers. Since that time, the disputed domain name no longer automatically redirects users to the third party sites or to the site with the fake technical warning, and no longer resolves to any web site.
Complainant asserts that it has rights in the AUTODESK trademark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s AUTODESK mark in its entirety. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
To satisfy paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As set forth above, Complainant owns many international trademark registrations for the AUTODESK mark. Consistent with many prior UDRP decisions, this disputed domain name is confusingly similar to Complainant’s AUTODESK mark because it contains Complainant’s mark in its entirety. Additionally, since the very early UDRP decisions, the difference in Top-Level Domains is irrelevant to a conclusion of identical or confusing similarity. Complainant has satisfied paragraph 4(a)(i) of the Policy.
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has exclusive rights in the AUTODESK mark and has not authorized Respondent to register and use the disputed domain name <autodesk.co>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the AUTODESK mark. Respondent is not known under the mark. Respondent has made no showing that it has any legitimate interest in using the disputed domain name for a bona fide offering of goods or services under the mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
It is difficult to conceive that Respondent did not know of Complainant’s marks and products when Respondent registered the disputed domain name. As set forth above, the AUTODESK products are protected by various United States and international trademark registrations, and AUTODESK is a well-known mark. Complainant uses the AUTODESK mark for all of its products. All of this occurred before Respondent registered <autodesk.co> on October 13, 2013. Additionally, under 15 USC §1072, registration of the mark AUTODESK constitutes constructive notice of the mark. Respondent therefore had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name. Based on these facts, this Panel infers that Respondent was aware or must have been aware of Complainant’s mark when Respondent registered the disputed domain name, and therefore registered it in bad faith. See, e.g., Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, in which the panel found it “inevitable that [r]espondent registered the domain names in full knowledge of [c]omplainant’s rights and interests”.
It is also quite clear that Respondent has intentionally attempted “to attract, for commercial gain, Internet users to [Respondent’s] web site… by creating a likelihood of confusion with the complainant’s mark as to the source sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on your web site or location”. Policy, paragraph 4(b)(iv). Here, the disputed domain name resolves to “www.bizrate.com” and “www.walmart.com”, two well-known commercial sites unaffiliated with Complainant.
More troubling, however, is the fact that on another of Complainant’s attempts, the disputed domain name forwarded to a webpage containing a fake technical support warning that told users to call a telephone number at which a fraudulent technical support technician attempted to convince them to install a backdoor software application to gain unauthorized access to their computers. Respondent is using the disputed domain name to spread malware, with the deliberate intention of harming Internet users. See 24/7 Real Media Inc v Thomas Shultz, WIPO Case No. D2009-0043. Respondent’s use of the disputed domain name for per se illegal activities constitutes bad faith. Autodesk, Inc. v. Xiaodong Wang, WIPO Case No. D2014-1690.
Complainant has satisfied paragraph 4(a)(iii) 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, <autodesk.co>, be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Date: June 2, 2016