Autodesk Legal Dept. Email Conversation

Email Conversation referenced from a post titled "A Case Against Buying Trademarked Domains" at the DomainCord blog.
Originally Published: July 9, 2019
Source: https://domaincord.com/blog/a-case-against-buying-trademarked-domains


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Autodesk Lawyer's Original Email
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Autodesk is the largest commercial software development company in the world with a net worth of $37 billion. As would be expected from a company this large, it, of course, had a trademark. I pre-registered the domain for $13 and ended up paying $60 after going to an auction. From there I put the domain up on Dan.com (then known as Undeveloped). That was my first mistake. From there I sought help from the domain community on NamePros.com, DomainCord.com, and several others. The majority of users I had contacted informed me of the potentially very poor decision I had made. Alex from DomainCord informed me of UDRP, which is the process that companies will take to try and regain control of domains infringing on their rights. Based on some advice I received, I planned to sell the domain for less than the cost of filing a UDRP takedown. In my head, wouldn’t the company rather pay the smaller amount? It’s a win win, right? After letting it sit for about a week I chickened out—afraid of a lawsuit—and deleted the domain. A month later, I was seriously regretting my decision of deleting the domain, so against my better judgement, I registered the domain again. After that I let the domain sit for a while, not sure what to do. However,  I didn’t have to do anything. A lawyer representing Autodesk emailed me the following:

To protect its proprietary rights associated with the AUTODESK® mark and ensure the public's recognition of it as the exclusive source for its software products and related services, Autodesk, Inc. has filed and obtained trademark registrations throughout the world based on the AUTODESK® mark. In the United States, Autodesk, Inc. is the owner of several AUTODESK®-related trademark registrations maintained on the Principal Register by the United States Patent and Trademark Office. Those include the registration of the AUTODESK® mark itself, registration number 13167 72, which was registered on January 29, 1985 and has achieved incontestable status under federal law. Other notable registrations owned by Autodesk, Inc. for the AUTODESK® mark include without limitation European Union Trademark registration number 004036687 and Chinese registration number 19900446. The AUTODESK® mark and associated goodwill are extremely valuable assets of Autodesk, Inc. That goodwill is the direct result of Autodesk, Inc.'s longstanding, continuous, commercial use of its AUTODESK® mark in connection with the distribution of software products and related services and the worldwide public's corresponding association of the AUTODESK® mark with the global reputation Autodesk, Inc. enjoys for high quality goods and services. Autodesk, Inc. has no record of having given you permission to incorporate the AUTODESK® mark into the Domain Name. Your incorporation of the AUTODESK® mark into the Domain Name causes a type of trademark infringement known as initial interest confusion. That is, Inter11et users searching for Autodesk, Inc. or its products or services are instead unknowingly brought to the website accessible via the Domain Name (the "Website"). It also incorrectly suggests that Autodesk, Inc. is affiliated with, sponsors, and/or endorses the Website, and it improperly dilutes the AUTODESK® mark through blurring (i.e., impairing its distinctiveness as a unique source identifier).

Autodesk, Inc. has a program to support protection of its trademarks and must investigate all instances of what appear td be unauthorized use, including in unrestricted thirdparty generic Top Level domain names (gTLDs). Accordingly, in light of the above discussion and putting aside your intent in registering the Domain Name, Autodesk, Inc. seeks your assistance in amicably and expeditiously resolving this matter with minimal inconvenience to all concerned. Specifically, please contact me by May 9, 2019 to confirm your willingness to voluntarily transfer the Domain Name to Autodesk, Inc. We will then send instructions detailing the transfer procedure. Thank you for your anticipated cooperation and understanding. We look forward to receiving your response and working with you to make the transition as smooth as possible. Nothing in this letter should be construed as any limitation, waiver, acquiescence, relinquishment, or election of rights or remedies Autodesk, Inc. niay have to assert, all of which Autodesk, Inc. expressly reserves.

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Domainer's Response
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I am in receipt of your letter April 29, 2019 and your request for me to transfer the domain Autodesk.dev to Autodesk, Inc. I appreciate your desire to acquire this domain; however, Autodesk, Inc. was offered this domain on multiple occasions and declined to acquire prior to it being sent to public auction. In turn, I registered for the public auction, bid on the domain name and ultimately acquired the domain. I had a reasonable expectation that Autodesk was not interested in acquiring the domain after they declined to acquire it on multiple occasions when offered by Google. Since acquiring the Autodesk.dev I have not attempted to profit from the acquisition of the domain name. In fact, I have expended considerable time and money to acquire the name through a public auction. It is not my intent to continue to hold the domain name without the consent of Autodesk, Inc. but hope they recognize they would have needed to purchase this from Google (when it was offered to the organization exclusively). It is my hope that Autodesk, Inc. will offer me fair market value to transfer the domain to their ownership. Additionally, to provide full disclosure and cooperation, I wanted to let you know that I also acquired the domain Revit.dev in the same manner after it was declined by Autodesk. I look forward to hearing from you and hope to find an amicable solution regarding both domain names.

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Lawyer's Response
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Thank you for your timely response to my April 29, 2019 correspondence. We appreciate your candor regarding the purchase of both the autodesk.dev and revit.dev domain names (collectively “Domain Names”). If you contact me by May 15, 2019 to confirm your willingness to transfer the Domain Names to Autodesk, Inc. (“Autodesk”), then Autodesk will reimburse you for this year’s reasonable registration costs associated with the Domain Names upon your proof of such actual costs and after: (1) the transfer of the Domain Names to Autodesk is complete; (2) you send me proof of purchase documentation, such as an invoice or receipt, detailing this year’s registration costs associated with the Domain Names; (3) you provide me with the name of the recipient (this may be you) to whom and the address to which the reimbursement check should be mailed; and (4) you assure us via e-mail that you will not register any other domain(s) that incorporate any of Autodesk’s registered trademarks in the future (for a full list of Autodesk’s trademarks, go to https://www.autodesk.com/company/legal-notices-trademarks/intellectual-property/trademarks. We trust you are aware that in registering the Domain Names you agreed to submit disputes pertaining to them to the Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP panels routinely have found that the unauthorized registration of domains incorporating another’s trademark ̶ and especially a federally registered, incontestable and famous marks, such as the AUTODESK® mark, and REVIT® mark, at issue here ̶ and the posting of dead or parked webpages accessible from those domains, as well financial demands on the trademark owner, constitute bad faith registration and use sufficient to require the involuntary transfer of those domains to the trademark owner.

Trademarks | Intellectual Property | Autodesk

Trademarks of Autodesk, Inc., and/or its subsidiaries and/or affiliates, in the United States.

Please advise me by May 15, 2019, whether you are willing to voluntarily transfer the Domain Names to Autodesk under the aforementioned terms. You may contact me if you have any questions. Autodesk sincerely appreciates your kind cooperation.

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Domainer's Response
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In your response you asked that I meet four conditions: (1) the transfer of the Domain Names to Autodesk is complete; (2) you send me proof of purchase documentation, such as an invoice or receipt, detailing this year’s registration costs associated with the Domain Names; (3) you provide me with the name of the recipient (this may be you) to whom and the address to which the reimbursement check should be mailed; and (4) you assure us via e-mail that you will not register any other domain(s) that incorporate any of Autodesk’s registered trademarks in the future (for a full list of Autodesk’s trademarks. I am willing to comply with 1, 3 and 4. As for purchase documentation and registrations cost I do not think this necessarily relevant. To be clear, I am not making any financial “demands” to relinquish these domains. However, I do have the option to release the names back to Google. If Autodesk would like me to transfer the domain names to them I ask again for fair market value. If Autodesk is unable or unwilling to make this offer, I will still release my rights to these domains by June 1, 2019 and Autodesk would be able to work through Google to obtain the domains.

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Lawyer's Response
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Thank you for your response to our offer of reimbursement for the voluntary transfer of the autodesk.dev and revit.dev (the “Domain Names”). Since you have informed us that you will release the rights to the Domain Names by June 1, 2019, we will wait to initiate any action until that date. We appreciate your communication.