WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Autodesk, Inc. v. PrivacyProtect.org / Tech Domain Services Private Limited

Case No. D2011-1958

1. The Parties

The Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Gallagher Woods LLP, United States of America.

The Respondent is PrivacyProtect.org / Tech Domain Services Private Limited of Nobby Beach, Queensland, Australia and Mumbai, Maharashtra, India, respectively.

2. The Domain Name and Registrar

The disputed domain name <autoddesk.com> (the “Domain Name”) is registered with Tirupati Domains and Hosting Pvt Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 15, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 19, 2011.

On November 15, 2011, the Center informed the Registrar about the impending expiration of the Domain Name. Although the Registrar did not reply to the several communications from the Center, the Center noted that the Domain Name had been correctly renewed.

The Center verified that the Complaint together with the amended 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2011.

The Center appointed Linda Chang as the sole panelist in this matter on January 13, 2012. 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.

The Registrar has confirmed that the language of the Registration Agreement is English, therefore in accordance with paragraph 11(a) of the Ruesl the language of this proceeding is English..

4. Factual Background

The Complainant is the owner of the registered AUTODESK trademark (the “Mark”). For nearly three decades, the Complainant has used the Mark in connection with Complainant’s licensed copies of computer software programs, associated user manuals, and related documentation.

the Complainant also incorporates the Mark into the names applied to many of its software products, including without limitation over fifty products registered with the United States Copyright Office in the year 2010 alone. The Complainant has continually used its Mark in commerce since at least February 1983. On January 29, 1985, the United States Patent and Trademark Office (“USPTO”) granted the Complainant trademark registration number 1316772 covering the AUTODESK trademark as maintained on the USPTO’s Principal Register. This registration has since achieved incontestable status under federal law in the United States (see Kalb Declaration).

Autodesk has also registered its exclusive right to use the Mark in other countries and jurisdictions throughout the world. These include: (a) on July 24, 2006, the Trade Marks and Designs Registration Office of the European Union granted the Complainant Community Trade Mark registration number 004036687 covering the Mark; (b) on October 5, 1988, the Benelux Office for Intellectual Property granted Autodesk the Benelux trademark registration number 0449012 covering the Mark; and (c) on April 6, 1990, the Canadian Intellectual Property Office granted the Complainant trade-mark registration number TMA367469 covering the Mark. In total, and not including the aforementioned Community Trade Mark registration collectively granted by the countries that comprise the European Union, the Complainant has obtained registrations covering its Mark from at least seventy-two different countries (see Kalb Declaration).

The Complainant also owns common law rights in the Mark. The Complainant has over 9 million users of its products. To accommodate this user base, The Complainant works with approximately 1,700 channel partners, 3,300 development partners, and 2,000 authorised training centers to assist its customers with their worldwide use of its products known by names that incorporate the Mark and/or that include the Mark in product packaging. The Complainant has spent millions of dollars to advertise and promote its products around the world. Media coverage tying the Mark to the Complainant is widespread.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has never authorised the Respondent to incorporate the Mark into the Domain. The Respondent is not authorised to use the Mark in connection with distributing any AUTODESK product. The Complainant is not affiliated with, and has never endorsed or sponsored Respondent’s Website.

The Respondent’s Website consists entirely of links under the labels “Related Searches” and “Popular Categories”. These links bear various names, such as “2D 3D CAD software,” “AutoCAD 2012,” and “Designing Software.” When clicked, these links redirect users to additional webpages within the Respondent’s Website displaying: (a) lists of third party sponsored links under the label “Ads” (each, a “Sponsored Link”; collectively, the “Sponsored Links”); and (b) other links under the label “Related Searches,” which routed users to additional pages of Sponsored Links. The Sponsored Links are clicked, users are automatically redirected to various third party-websites selling products and services unrelated to the Complainant and its products and services (collectively, the “Third Party Websites”).

The Sponsored Links on the Respondent’s Website include advertisements for products that directly compete with the Complainant’s products. For example, one consistently displayed Sponsored Link bears the text “SolidWorks 3DCAD Software” with a link to a webpage maintained by or on behalf of a third party called Hawk Ridge Systems. That webpage advertises Hawk Ridge Systems as the “#1 SolidWorks Reseller”. SolidWorks® software directly competes with the Complainant’s products whose names incorporate the Mark, and Hawk Ridge Systems is a reseller of SolidWorks® licenses.

Additional Sponsored Links advertise other software products that directly compete with the Complainant’s software programmes. One non-exclusive example includes a Sponsored Link with the label “Download Free 3D CAD,” which when clicked redirects users to the webpage maintained by or on behalf of a third party named Alibre Inc.. This webpage advertises and describes Alibre Design 3D CAD software as “A 3D and 2D Alternative to Autodesk AutoCAD Software.” Like SolidWorks® software, Alibre Design 3D CAD software directly competes with Autodesk’s software products.

Another example is the Sponsored Link with the label “Free CAD Download,” which when clicked redirects users to a webpage maintained by or on behalf of a third party named ZWCAD Software Co., Ltd.. This webpage advertises and describes ZWCAD® software. Like SolidWorks® and Alibre Design 3D CAD software, ZWCAD® software directly competes with Autodesk’s software products (see Kalb Declaration).

The Complainant first tried to contact the Respondent regarding the Domain Name on May 27, 2011 (see Hofer Declaration, Exhibit O). The Complainant received a response from “[email protected]” with instructions to contact the registrant of the Domain Name at “www.privacyprotect.org/#contact_domain_owner”. The Complainant contacted the registrant via these means as per the instructions provided and received no response. On June 8, 2011, The Complainant attempted a second time to contact the Respondent (see Exhibit P). Again, The Complainant received no response. On June 29, 2011 and June 30, 2011, The Complainant made further attempts to contact the Respondent (see Exhibit Q). Once again, The Complainant received no response from the Respondent.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Under Policy paragraph 4(a)(i), the Complainant must demonstrate: (a) it has rights in the Mark; and (b) the Domain Name is identical or confusingly similar to the Mark. The Complainant has satisfied both elements.

The Complainant owns rights in the Mark and owns the exclusive right to use the Mark in the United States, the European Union, the Benelux Countries, Canada, and in the dozens of other countries around the world from which The Complainant has obtained registrations for the Mark. Ownership of a registered mark to which a disputed domain name is confusingly similar satisfies paragraph 4(a)(i) of the Policy. See Consorzio del Formaggio Parmigiano Reggiano v. La casa del Latte di Bibulic Adriano, WIPO Case No. D2003-0661.

The Complainant has also demonstrated common law rights in the Mark substantially preceding the Respondent’s registration of the Domain Name. Such rights arise when a complainant’s mark use results in secondary meaning, i.e. the mark becomes a distinctive identifier associated with the complainant or its goods or services. See Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.

Secondary meaning can be established by a variety of factors, including without limitation advertising expenditures, consumer linking of the mark to the source, unsolicited media coverage of the product, sales success, and length and exclusivity of the mark usage. See Universal City Studios, Inc. v. David Burns and Adam12 Dot Com, WIPO Case No. D2001-0784. The facts demonstrate that the Complainant has cultivated sufficient secondary meaning in the Mark as a unique source identifier of its products such that the Complainant has proven its common law rights therein.

The addition of a gTLD, whether “.com” or any other extension, may be irrelevant to an analysis of identicalness or confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127. This, the inquiry here under Policy 4(a)(i) concerns only whether the “autoddesk” is identical or confusingly similar to the Mark.

When a domain name consists of a minor misspelling of the Complainant’s registered trademark by the addition of a single letter “d”. Such is commonly referred to as “typosquatting” See Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003- 0161. Domain names which constitute typo squatting may be confusingly similar to a Complainant’s trademark; it is this similarity which makes them attractive. See Dell Computer Corporation v. Clinical Evaluations, WIPO Case No. D2002-0423; See also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (“addvil.com” held confusingly similar to ADVIL); ESPN, Inc. v. West Coast Entertainment, Inc., National Arbitration Forum Claim No. FA95047 (“espns.com” held confusingly similar to ESPN); Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (“expresscripts.com” held confusingly similar to EXPRESS SCRIPTS).

Panels, under the UDRP, have consistently found the use of terms that are a slight variation from a registered mark to be “confusingly similar” and/or “virtually identical” to that mark. See e.g., Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043 (finding the domain name <edmundss.com> with a double “s” was confusingly similar to the complainant’s mark EDMUND’S and domain name <edmunds.com>), citing Humana, Inc. v. Cayman Trademark Trust, WIPO Case No. D2006-0073 (finding the repeated consonant “n” does not significantly affect the appearance or pronunciation of the domain name <humanna.com>); Neuberger Berman Inc. v. Alfred Jacobsen,WIPO Case No. D2000-0323 (finding the slight difference in spelling between “newberger” and “neuberger” and their phonetic identity makes the domain name <newbergerberman.com> confusingly similar to the complainant’s name Neuberger Berman Inc. and domain name <neubergerberman.com>). As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) at paragraph 1.10: “A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”

The present dispute is, to the Panel’s opinion, a classic “typosquatting” case where the disputed domain name is a slight misspelling of a registered mark. The principal component of the Domain Name is the Mark. In fact, the Domain Name is composed of the Complainant’s registered mark AUTODESK with only a single letter misspelling of the Mark – a double consonant “d” in the middle. In addition, the Domain Name is phonetically identical to the Mark and is virtually identical to The Complainant’s domain name <autodesk.com> which resolves to the Complainant’s official website. The Domain is clearly confusingly similar to the Mark.

B. Rights or Legitimate Interests

The second element the Complainant must establish is that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. The Complainant must merely make a prima facie showing of this element to shift the burden to the Respondent to produce conclusive evidence to the contrary. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. Upon the evidence presented: (a) The Complainant has made its required prima facie showing thereby shifting the burden to the Respondent; and (b) the Respondent has not met its burden to prove it has any rights or legitimate interests in the Domain Name.

Paragraph 4(c)(i) of the Policy through (iii) provides that rights or legitimate interests in a domain name can be established if a respondent demonstrates it either: (a) before receiving notice of the dispute, used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; (b) has been commonly known by the domain name; or (c) is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or tarnish the complainant’s mark. UDRP panels have consistently held that “a mere addition or a minor misspelling of a mark does not create a new or different mark in which the Respondent has rights. See Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317.

In this case, the Respondent cannot demonstrate any rights or legitimate interests in the Domain Name under the Policy.

The Complainant has never authorised the Respondent to use the Mark in the Domain Name or otherwise. The Complainant is the exclusive owner of all rights in and to the Mark in jurisdictions around the world as mentioned above. The Complainant has never granted the Respondent any license, franchise, or other authorisation to incorporate the Mark into the Domain Name. The Respondent is not authorised to use the Mark in connection with distributing any products. The Complainant is not affiliated with, and has never endorsed or sponsored, the Respondent’s Website to which the Domain Name resolves. Accordingly, the Respondent has no basis to argue it has any rights or legitimate interests in the Domain Name.

The Respondent had notice of this dispute. Paragraph 4(c)(i) of the Policy, concerning whether the Respondent has used the Domain Name in connection with a bona fide offering of goods, applies by its own terms only if the Respondent made bona fide use of the Domain Name “before any notice to Respondent of the dispute”. In similar circumstances, a respondent who “knew or should have known” of a complainant’s trademark rights at the time of registration would typically be precluded from demonstrating it put the mark to a legitimate use. See SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.

The Respondent knew or should have known of the Complainant’s exclusive Mark rights when the Domain Name was registered. This administrative proceeding concerns a well-known mark used by the Complainant around the globe for more than a quarter century and dozens of worldwide registrations owned by the Complainant encompassing the Mark. The Respondent registered the Domain Name decades after the Complainant began obtaining its Mark registrations.

Moreover, the Respondent knowingly chose to register a Domain Name consisting of nothing other than the AUTODESK mark with a minor misspelling by the addition of a single letter “d”, thus obviously attempting to divert traffic to its site for the purpose of commercial gain. This fact circumstantially evidences the Respondent’s knowledge at all relevant times of the Complainant’s exclusive Mark rights. See Bridgestone Corporation v. Horoshiy, Inc.,WIPO Case No. D2004-0795.

In addition, the Sponsored Links on the Respondent’s Website and the Third Party Websites accessible through the website advertise third party products that directly compete with the Complainant’s products, including competing SolidWorks’ software, Alibre Design 3D CAD software, and ZWCAD® software. Both the Sponsored Links pointing customers to the Complainant’s competitors and the Third Party Websites on which products that compete with those of The Complainant are advertised evidence the Respondent’s knowledge at all relevant times of the Complainant’s exclusive Mark rights. See Bridgestone Corporation, supra.

The Respondent thus either knew or should have known the Complainant’s exclusive Mark rights when it registered the Domain Name. See The Sportman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305. Consequently, the Respondent “had notice of this dispute” at the time of the registration of the Domain Name and in the circumstances of this case cannot use paragraph 4(a)(i) of the Policy to establish any rights or legitimate interests in the Domain Name.

The Respondent cannot establish any right or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policybecause it has never used the Domain Name in connection with a bona fide offering of goods or services. Instead, the Respondent registered and has been using the Domain Name simply because it incorporates the Mark and, due to user confusion, generates traffic to: (a) the Respondent’s Website containing lists of Sponsored Links with titles such as “2D 3D CAD Software,” “Free AutoCAD Software” and “Designing Software”; and (b) the Third Party Websites to which Internet users are redirected when they click on the Sponsored Links. The Sponsored Links and the Third Party Websites advertise products, such as SolidWorks® software, Alibre Design 3D CAD software, and ZWCAD® software, that directly compete with Autodesk’s products or services related to such competing products.

Associating a domain name incorporating another’s mark with a website of sponsored third party links pointing to other websites offering competing or closely related products to those of the mark owner is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Panels have repeatedly held that “registering a domain name incorporating a well-known trade mark and using it to misdirect Internet users to websites offering competing products and services, with the apparent intention of earning click-through revenue, does not give rise to a legitimate interest. See Societe Anonyme des Galeries Lafayette and Galeries Lafayette Voyages v. Domains By Proxy, Inc./Reinhard Herrmann, WIPO Case No. D2009-0904; see also Lockheed Martin Corporation v. NBPro Hosting,WIPO Case No. D2003-0859; Lego Juris A/S v. Privacy Protect.org/SMVS Consultancy Private Limited, WIPO Case No. D2009-1094.

The Domain Name incorporates the Mark and resolves to the Respondent’s Website with Sponsored Links advertising competing or closely related products to those published and marketed by the Complainant.. Internet users who understandably believe they may through the Domain Name find the Complainant’s official website located at <autodesk.com> are automatically redirected to advertisements (i.e., the Third Party Websites) selling products and services unrelated to the Complainant. Under these circumstances, the Respondent’s use of the Domain Name does not qualify as a bona fide offering of goods or services.

This conclusion is unaffected by any assertion the Respondent may raise that it has made “demonstrable preparations to use” the Domain Name as allowed by paragraph 4(c)(i) of the Policy. Firstly, any such preparations would need to be in connection with a bona fide offering of goods or services, which the Respondent has not proven. Secondly, neither such extended “use” nor even an affidavit from the Respondent testifying to supposed planned use of the Domain Name in the future for something other than a sponsored links farm would be sufficient evidence of any “demonstrable preparations to use” the Domain Name; instead, the Respondent would have needed to provide documentary evidence substantiating steps taken to prepare for anticipated proper use of the Domain Name. See AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corp. Texas v. Guillermo Lozada, Jr., WIPO Case No. D2005-0485. The Complainant submits that no such documentary evidence exists. The Respondent cannot avail itself of Policy 4(c)(i) to prove any right or legitimate interest in the Domain Name.

Under the Policy, paragraph 4(c)(ii), the Respondent may attempt to prove a right or legitimate interest in the Domain Name by establishing it has been known by the Domain Name. What paragraph 4(c)(ii) envisages is a situation where a person or business is commonly known prior to registration of the disputed domain name. See Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. Further, “the registration and use of the disputed domain name, in connection with the Respondent’s website, does not by itself support a conclusion that the Respondent was commonly known by the domain name. See Yakka Pty Ltd. v. Mr. Paul Steinberg, WIPO Case No. D2004-0502. No evidence suggests the Respondent has ever been called by any name incorporating the Mark or been commonly known by the Mark or the Domain Name. While the Respondent has chosen to hide its identity behind a privacy service, it is unlikely that the Respondent uses a misspelling of the Mark as its name.

Paragraph 4(c)(iii) of the Policy allows the Respondent to claim a right or legitimate interests in a domain name if the Respondent can demonstrate it has been “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.” The Respondent in this case cannot satisfy this test since its: (a) use of the Domain Name has always been commercial; and (b) intent has always been to misleadingly divert consumers looking for the Complainant or its software to the Respondent’s Website and ultimately, via the Sponsored Links therein, to the Third Party Websites advertising products that directly compete with those of the Complainant. As stated above, the intentional misspelling of another’s trademark, or “typosquatting,” does not constitute fair use and may be legitimate noncommercial or fair use of a domain name. See Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554 (finding the respondent’s use of the disputed domain names with a single letter difference from a registered trademark to be the obverse of a legitimate noncommercial or fair use of a domain name).

The “use of [a] Domain Name Name [...] simply to provide links to web sites (a practice that is typically engaged in to collect click through referral fees) cannot be considered [...] a noncommercial use”. See Lego Juris A/S, supra. The Respondent’s use of the Domain Name at all times has been commercial given the sponsored ads that comprise the Respondent’s Website (i.e., the Sponsored Links) and the singular commercial purpose of the Third Party Websites to which the Sponsored Links resolve.

Because the Respondent commercially uses the Domain Name, paragraph 4(c)(iii) of the Policy does not apply. The use of the Domain Name is clearly commercial.

The Respondent’s actions and omissions in connection with the Domain Name are deceptive advertising tactic subjecting the Domain Name to a transfer via this proceeding.

C. Registered and Used in Bad Faith

To obtain the relief it seeks the Complainant must satisfy paragraph 4(a)(iii) of the Policy by showing that the Respondent registered and is using the Domain Name in bad faith. Policy, paragraph 4(b), lists situations in which the Panel must make a bad faith finding against the Respondent for its registration and use of the Domain Name. The record establishes at least three other distinct grounds on which the Respondent’s bad faith in registering and using the Domain Name has been conclusively proven.

1) A finding of bad faith may be made where the Respondent knew or should have known of the registration and use of the mark prior to registering the Domain. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Otherwise stated differently, “registration of a well-known trademark as a domain name is a clear indication of bad faith. See The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113. This is the case with the Respondent’s registration of the Domain Name decades after the Complainant began obtaining its registered and common law rights in its well-known Mark. It would be implausible for the Respondent to assert that it innocently registered the Domain Name in good faith and without knowledge of the Complainant’s rights.

2) The Respondent’s bad faith under paragraph 4(b)(iv) of the Policy is established because the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s Mark[s] as to the source, sponsorship, affiliation, or endorsement of Respondent’s Website or location or of a product or service on Respondent’s website or location. In other words, bad faith under paragraph 4(b)(iv) of the Policy “is concerned with illegitimately attracting Internet users to a respondent’s website for commercial gain, by creating confusion as to the website’s affiliation with a trademark owner. See Lance Armstrong Foundation v. CSA Marketing, WIPO Case No. D2005-0886.

A respondent’s use of a domain name which is confusingly similar to a complainant’s mark for the purpose of attracting traffic to a website without content of its own and that provides links to commercial websites of others satisfies the bad faith criteria of Policy 4(b)(iv). See MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC,WIPO Case No. D2006-0550. For instance, in Emirates v. WhoisGuard Protected, WIPO Case No. D2006-0433, the panel based its transfer decision in part on the following: “It is also apparent that the Respondent has sought to attract Internet users for commercial gain, since it appears that the diversion of Internet users via the disputed domain name takes place in connection with a sponsorship scheme, under which the Respondent may receive fees for referrals.”

The Respondent similarly uses a sponsorship scheme on the Respondent’s Website to promote third party businesses whose products and services directly compete with those of the Complainant. In addition, the Respondent profits when users searching for the Complainant and its official website located at <autodesk.com> understandably attempt to go through the Domain Name but are instead automatically redirected to third parties’ advertisements that have nothing to do with the Complainant. The Respondent thus trades off the Mark’s fame by using it, without the Complainant’s authorisation, to attract for commercial gain users to the Respondent’s Website and the Third Party Websites.

The Respondent cannot rebut this conclusion by attempting to disclaim a direct connection to the Sponsored Links or the advertisements on the Third Party Websites, for instance by alleging either the Registrar is solely responsible for selecting and publishing the content or that the Respondent may supposedly not be financially benefiting therefrom. UDRP Panels regularly reject such arguments by holding respondents ultimately responsible for content published given their ownership of the disputed domains. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

3) UDRP Panels have recognised the existence of bad faith registration and use where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection to the product suggests opportunistic bad faith”. See Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; see also RapidShare AG, Christian Schmidt v. PrivacyProtect.org, Domain Admin n/a Sergey Malgov, WIPO Case No. D2010-0608.

Such is the case with the Respondent’s registration of the Domain Name, which is so obviously connected with the Complainant’s fame and that of its software products whose names incorporate the Mark given the millions of copies thereof which The Complainant has distributed to the public and the enormous efforts and expense the Complainant has undertaken and incurred to promote its Mark as a unique source identifier of its products. The Respondent has no connection to the Complainant or its products that incorporate the Mark into their names, and the Respondent’s opportunistic bad faith is therefore proven.

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 Domain Name <autoddesk.com> be transferred to the Complainant.

Linda Chang
Sole Panelist
Dated: February 1, 2012