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Sample UDRP domain disputes in the Software context

Sep 12th, 2016 | By | Category: Domain Name Disputes

California Domain Name Dispute Lawyer

Domain dispute lawyer

Introduction

Here are three domain cases that highlight how the UDRP domain dispute process works, and why a buyer of domain names should carefully think through the potential implications of intellectual property law (particularly trademarks) before purchasing domains, especially those related to “CAD” which seems to be a popular domain to go after.

What is Cybersquatting under the ACPA?

The Anti–Cybersquatting Consumer Protection Act (“ACPA”) creates liability for certain forms of cyber-piracy. Under the ACPA, a plaintiff must show that:
(1) the defendant registered, trafficked in, or used a domain name;
(2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff;
and
(3) the defendant acted with’ bad faith intent to profit from that mark. DSPT International v. Nahum, No. 08–55062 2010 WL 4227883 (9th Cir. Oct. 27, 2010); 15 U.S.C. § 1125(d)(1)(A).  See Microsoft Corp. v. Shah, No. C10-0653 RSM, 2011 WL 108954 (W.D. Wash. Jan. 12, 2011).

In Symantec Corp. v. Johns Creek Software, Inc., No. C 11-03146 WHA, 2012 WL 10518 (N.D. Cal. Jan. 3, 2012) the United States District Court in Northern District of California noted:

A person is liable under the ACPA if that person has a bad faith intent to profit from a mark and registers, traffics in, or uses a domain name that is identical or confusingly similar to that mark. 15 U.S.C. 1125(d)(1)(A). There is no requirement that the bad faith intent exists at registration and during the entire course of use of the domain name. DSPT Int’l, Inc. v. Nahum, 624 F.3d 1213, 1219–20 (9th Cir.2010) (“Evidence of bad faith may arise well after registration of the domain name.”).

Autodesk domain name cases

 Here are some sample domain name disputes featuring Autodesk (this is one of the many companies we deal with in defending software licensing compliance audits).  As you might know, Autosdesk is a leading publisher of software for designers, engineers and architects.  They sell millions of dollars in software each year and some “domainers” like to try to buy and sell domains with the “CAD” in the tagline and these can trigger the San Rafael based software company to take legal action, whether by filing a UDRP complaint, and a suit under the ACPA is always possible.

The Complainant is an American company, offering licensed copies of computer software programs, associated user manuals and related documentation. Furthermore, the Complainant is the holder of trademark registrations for AUTOCAD in, inter alia, the United States of America. The Complainant’s oldest trademark registration for AUTOCAD was granted by the United States Patent and Trademark Office (registration number 1316773) on January 29, 1985.  The disputed domain name was registered on May 27, 2015.  The disputed domain name <autocadd.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).  In this case the WIPO arbitration center, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, ordered that the disputed domain name <autocadd.com> be transferred to the Complainant.  A win for Autodesk.

The disputed domain name <iautocad.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).  The reporting of the case noted the basic facts:

“The Respondent states that he searched for “autocad” in United States Patent and Trademark Office and World Intellectual Property Office trademark databases, and did not find any registered trademark “IAUTOCAD”. The Respondent argues that the logo on the web site on the Domain Name did not resemble the Complainant’s logo for its AUTOCAD trademark. The Respondent states that he has been a Computer-Aided Design (abbreviated “CAD”)/AutoCAD drafter for over 18 years. He is the owner of The Blue Solutions Corp., a provider of online drafting services for the woodwork and metalwork industries in the U.S. and Canada since 2006. The Respondent acknowledges that “Autocad is the name of Autodesk Inc. software that is used to produce CAD drawings”. He “agrees with the Complainant that Autocad is well known and recognizable software – in matter of fact it is the main and leading CAD software on the market for numerous years. Because of such popularity Autocad drawing has become a synonym of CAD drawing”. The Respondent states that web site at the Domain Name was designed to provide an opportunity for Autocad drafters to sell their royalty-free Autocad drawings and to connect freelance Autocad drafters with clients from all over the world. The Respondent asserts that the “i” in the Domain Name suggests that you can find a person at the site who uses AutoCAD. The Respondent argues that it is difficult to find an alternate domain name because there are few available domain names, and it is impossible to find short domain names, so he chose the available domain name with the shortest name that was related to the content of the web site.”

In applying the three factors, the panel found for Autodesk.  In particular, the panel noted:

“The Complainant has presented ample evidence of the Respondent’s bad faith in this case. The Respondent admits that he was aware of the Complainant’s well-known software that is sold under the name AUTOCAD. He used the confusingly similar Domain Name in connection with a web site offering services that were related to the Complainant’s products and featured advertising for products that were competitive with the Complainant’s products. Although the Respondent offers some explanations for his good faith in adoption and use of the Domain Name, they are not plausible. In particular, the Respondent’s statement that he chose the Domain Name because of a lack of other suitable available domain names is completely implausible. With numerous generic Top-Level Domains to choose from and use of punctuation and other descriptive terms, it certainly would have been possible to choose a domain name that would have described the Respondent’s services and was not confusingly similar to the Complainant’s trademark.  The domain was ordered to be transferred to Autodesk.

Finally, in this UDRP case before WIPO the Complainant is Autodesk, Inc. of San Rafael, California, United States of America, represented by Donahue Fitzgerald LLP, United States.  The Respondent is Web Admin, Ebills Online Services of Mexico City, Mexico.  The disputed domain name <autocadzone.com> is registered with Rebel.com Corp. (the “Registrar”).

Attorney Steve explains the UDRP domain dispute process (VIDEO SERIES)

Part One

Part Two

Part Three

What does the complaining party have to show to prevail in a domain dispute?

The party complaining about a domain name registered in violation of the law bears the BURDEN OF PROOF to show:

1.  The registered domain name is Identical or confusingly similar to Plaintiff’s trademark

The disputed domain name incorporates the Trademark in its entirety.  The incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to such registered trademark (see AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758).

2.  The party registering the mark has no legitimate rights to the domain name

Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).  Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.

3.  The mark was registered in bad faith 

Respondent used the disputed domain name to divert Internet traffic to a website displaying Complainant’s house logo and company name, but not authorized by Complainant, for the purpose of achieving commercial gain.  The Panel also notes that the Respondent apparently supplied inaccurate WhoIs information, which in this instance is not a determinative fact but certainly consistent with Respondent’s overall behavior.  In total, such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.

What happens if a domain registrant fails to respond to the UDRP complaint?

In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview, 2.0”), paragraph 2.1., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064, and Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

Contact an IP and domain dispute law firm

If you need help with an Autodesk software audit, or UDRP involving CAD software contact us to speak with an intellectual property lawyer.  We offer low flat rate fees for most non-litigation cases.  We can be reached at (877) 276-5084.

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We are a business and civil litigation firm with a focus on copyright infringement cases involving illegal movie downloads (torrent cases such as London Has Fallen, ME2 Productions and Malibu Media defense), software audits (ex. Microsoft audits, SPLA, Autodesk audit notification letter, Siemens PLM defense, SIIA, Adobe and Business Software Alliance defense) and other software vendors threatening piracy and infringement. We also handle cases involving internet law, anti-SLAPP, media law, right of publicity, trademarks & domain name infringement, and we have a niche practice area handling California BRE licensing disputes, accusations, subpoena response, statement of issues and investigations. We have offices in San Francisco, Beverly Hills, Newport Beach, San Diego & Phoenix, Arizona and accept federal copyright and trademark cases nationwide. All content on our website is general legal information only and not a substitute for legal advice, and should not be relied upon. Decisions to hire counsel should not be based on advertising alone. Blogs, videos and podcasts are authored by Steve Vondran, Esq. unless otherwise noted. We can be reached at (877) 276-5084.

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