DECISION

 

Autodesk, Inc. v. Boris Pribich

Claim Number: FA0110000101157

 

PARTIES

The Complainant is Autodesk, Inc., San Rafael, CA (“Complainant”) represented by Michael J. Hughes, of Oppenheimer Wolff & Donnelly LLP.  The Respondent is Boris Pribich, Simi Valley, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <autocad3d.com>, registered with Register.com.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 22, 2001; the Forum received a hard copy of the Complaint on October 24, 2001.

 

On October 22, 2001, Register.com confirmed by e-mail to the Forum that the domain name <autocad3d.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@autocad3d.com by e-mail.

 

A timely response was received and determined to be complete on November 13, 2001.

 

On November 29, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

1.         Autodesk, Inc., the Complainant, is a Delaware corporation, and is the owner of five United States trademarks, registered with the United States Patent and Trademark Office, for computer software programs containing the term “AUTOCAD.”  The first of the registrations was January 29, 1985, and the mark was first used in commerce on February 1, 1983.  In addition, Complainant has foreign registrations in forty-nine countries worldwide.

 

2.         The software manufactured and sold by Complainant has three dimensional (3D) capability which allows engineers and architects to view a design from any angle.

 

3.         On August 19, 1999, Respondent registered the domain name “AUTOCAD3D.COM,” which is a combination of Complainant’s trademark and a generic adjective identifying the three dimensional capability of the products sold under the trademark.  Thus, the disputed domain name is confusingly similar to Complainant’s trademarks.

 

4.         Respondent has no rights or a legitimate interest in the disputed domain name under Paragraph 4© of the Policy.  This is because Respondent is not commonly known by AUTOCAD3D or by <autocad3d.com>.  Moreover, Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but obviously intends to divert consumers to its website for commercial gain.

 

5.         Under paragraph 4(b) (iv) of the Policy, Respondent registered and is using the disputed domain name in bad faith.  This is because Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website.  He has created a likelihood of confusion with Complainant’s marks as to the sources, sponsorship, affiliation, and endorsement of Respondent’s services. A disclaimer does not obviate the bad faith use.

 

B. Respondent

1.         Respondent denies that the disputed domain name is confusingly similar to Complainant’s trademark “AUTOCAD.”  A search by the Google search engine did not produce <autocad3d.com> when “autocad3D” was typed in.

 

2.         Respondent asserts that he does have rights and a legitimate interest in the disputed domain name because he sells 3D design skills, while Complainant sells AUTOCAD software.

 

3.         Respondent did not register nor is it using the disputed domain name in bad faith.  Rather, Complainant is acting in bad faith because it fabricated the claim that Respondent used defamatory language on its website.

 

DISCUSSION, FINDINGS AND DETERMINATIONS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

 

The Panel has reviewed the exhibits submitted by the parties and has considered the charges and countercharges made with respect to the alleged defamatory material posted on the websites.  In the Panel’s view, the material and the motivation for posting the material are not relevant in this proceeding.  This is because, as will be seen, on the merits, based on the facts and the law, Complainant must prevail.

 

Identical and/or Confusingly Similar

The Panel finds that the disputed domain name is famous and distinctive, and that it is confusingly similar to Complainant’s federally and internationally registered marks under paragraph 4(a)(i) of the Policy.  The addition of a generic word, term or suffix is not enough to create a distinctive mark.[1]

 

Despite the one Google search submitted by the Respondent, it is determined that a reasonable Internet user unquestionably would assume that there was affiliation with Complainant.[2]

 

Rights or Legitimate Interests

It is determined by the Panel that Respondent has no rights or a legitimate interest in the disputed domain name.

 

Respondent is not commonly known by AUTOCAD3D or by <autocad3d.com>, as required by Paragraph 4©(ii) of the Policy.  Respondent is actually commonly known as “Interactive 3D Engineering” and lists this name on its website at the disputed domain name site.[3]

 

Objectively, the Panel is required to find that Respondent intentionally is diverting Internet users to his website for his own commercial gain and he is, accordingly, not making a legitimate noncommercial, or fair use of the disputed domain name pursuant to Paragraph 4©(iii) of the Policy.[4]

 

Respondent’s argument that he sells design services while Complainant sells software is not helpful.

 

While under traditional trademark law the similarity or nonsimilarity of the products involved may be considered, this is not a factor under the Policy.  Indeed, the recently enacted Anticybersquatting Consumer Protection Act (15 U.S.C. §1125(d) protects “distinctive’ and ‘famous” marks “without regard to the goods or services of the parties.”  (15 U.S.C. §1125(d)(1)(A).)

 

Registration and Use in Bad Faith

The Panelist finds and determines that Respondent has acted in bad faith.

 

Section 4(b) of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith.  Subparagraph (iv) of Section 4(b) provides:

 

by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.

 

The words “source, sponsorship, affiliation, or endorsement” are particularly apt here.  Inevitably, the Panel believes that consumers would conclude that the disputed domain name was endorsed and sponsored by Complainant.

 

In addition to the demonstration of bad faith by the application of subparagraph (iv) of Section 4(b) of the Policy, there is a legal presumption of bad faith, when Respondent, as here, reasonably should have been aware of Complainant’s trademarks, actually or constructively.

 

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th 1999) 184 F.3d 1107, 111, it was said:

 

However, ISS became aware of the ‘EPIX’ trademark when it applied for its own registration of ‘EPIX.’  Adopting a designation with knowledge of its trademark status permits a presumption of intent to deceive.  See Brookfield, 174 F.3d at 1059 (citing Official Airline Guides, Inc. v. Goss, 6 F.3d 1385 (9^th Cir. 1993)).  In turn, intent to deceive is strong evidence of a likelihood of confusion.  Sleekcraft, 550 F.2d at 354.[5]

 

Thus, the disputed name was registered and is being used in bad faith.

 

But, says Respondent, I will place a disclaimer on my website.

 

Such disclaimers are not sufficient to prevent initial interest confusion.  (See, Madonna v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment Corp., (9^th Cir. 1999) 174 F.3d 1036, “[r]espondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).[6]

 

DECISION

Based on the above findings, conclusions, and determinations, it is decided that the domain name <autocad3d.com> registered by Respondent Boris Pribich, Simi Valley, California, shall be, and the same hereby is, transferred to Complainant Autodesk, Inc., San Rafael, California.

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist

 

Dated:  December 11, 2001