The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America.
The Respondent is shenzhongchao shen of Beijing, China. 2. The Domain Names and Registrar
The disputed domain names and ("the Domain Names") are registered with T, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2016. On February 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 3, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Registrar confirmed that the language of the registration agreement for the Domain Name is Chinese while the language of the registration agreement for the Domain Name is Chinese and English.
On February 5, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On February 8, 2016, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent of the Complaint in both Chinese and English, and the proceeding commenced on February 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 3, 2016.
The Center appointed Karen Fong as the sole panelist in this matter on March 9, 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. 4. Factual Background
The Complainant provides management consulting, technology services and outsourcing services under the mark ACCENTURE since 2001. It has operations in more than 200 cities in 56 countries. The ACCENTURE trade mark is registered in more than 150 countries and the Complainant owns more than 1,000 registrations for the marks ACCENTURE, ACCENTURE & Design, and many other marks incorporating the ACCENTURE brand for a variety of products and services including, but not limited to, its management consulting, technology services and outsourcing services.
Specifically, the Complainant owns numerous trade mark registrations in China, which is the Respondent's home country according to the WhoIs report. These include the following:
Mark
Goods & Services
Registration No.
Registration Date
ACCENTURE
Services in Class 42
1794726
6/21/2002
ACCENTURE
Products in Class 16
1750663
4/21/2002
ACCENTURE
Services in Class 37
1949522
8/21/2002
ACCENTURE
Products in Class 9
1982504
8/28/2002
ACCENTURE
Services in Class 35
1951607
8/28/2002
ACCENTURE
Services in Class 36
1789352
6/14/2002
ACCENTURE
Services in Class 41
1956604
9/14/2002
ACCENTURE & Design
Products in Class 09
1980261
10/14/2004
ACCENTURE & Design
Products in Class 16
2023523
10/28/2004
ACCENTURE & Design
Services in Class 35
1962869
10/14/2004
ACCENTURE & Design
Services in Class 36
1958949
10/14/2004
ACCENTURE & Design
Services in Class 37
1958478
10/14/2004
ACCENTURE & Design
Services in Class 41
1984770
11/7/2007
ACCENTURE & Design
Services in Class 42
2010421
9/28/2004
ACCENTURE in Chinese characters
Products in Class 9
1913611
9/21/2002
ACCENTURE in Chinese characters
Products in Class 16
1765722
5/14/2002
ACCENTURE in Chinese characters
Services in Class 35
1998868
10/7/2002
ACCENTURE in Chinese characters
Services in Class 36
1947820
8/28/2002
ACCENTURE in Chinese characters
Services in Class 37
1949526
8/28/2002
ACCENTURE in Chinese characters
Services in Class 41
1956606
11/21/2002
ACCENTURE in Chinese characters
Services in Class 42
1969012
9/14/2002
The Complainant owns and operates the website at "" which it registered on August 30, 2000. ACCENTURE has been recognized as a leading global brand in Interbrand's Best Global Brands Report since 2002 when it was ranked 53rd. In 2014, it was ranked 44th. It has received top rankings in various categories in Fortune Global 500 as well as other recognized market analysts, publications and forums. The Complainant has promoted and marketed its services extensively and as a result ACCENTURE is a well-known mark in connection with the services it provides.
The Complainant has enjoyed a strong business relationship and alliance with Amazon Web Services, which is an A, Inc. company since 1992. Amazon Web Services, together with A, Inc. and other A, Inc. companies including Amazon Technologies, Inc. are collectively referred to as "AWS". AWS offers a robust, fully featured technology infrastructure platform in the cloud comprised of a broad set of compute, storage, database, analytics, application, and deployment services from datacenter locations in across the world, and is the owner of the AWS trade mark (the "AWS Mark"). AWS owns trade mark applications and registrations for the AWS Mark including the United States and China, among other countries.
On October 7, 2015, the Complainant and AWS formed a new business group named Accenture AWS Business Group ("the Group"), which offers integrated consulting and technology solutions designed to help enterprise clients take greater advantage of the flexibility and economics of an "as-a-service" operating model where IT and business services are delivered on-demand, via the AWS Cloud. The Group has been and continues to be extensively publicized by the Complainant and AWS and has generated significant media attention.
The Respondent registered the Domain Names on October 8, 2015, one day after the Complainant and AWS publicly announced their new partnership under the name Accenture AWS Business Group. AWS has confirmed in writing that AWS is not affiliated with either the Domain Names or the Respondent, that AWS has no objection to the Complainant's filing of this Complaint and that AWS consents to the Complainant's ownership of the Domain Names.
The Domain Names have not been and are not currently connected to any active websites.
On November 30, 2015, the Complainant's legal representatives contacted the Respondent to ask for the purpose behind the registrations and ask for clarification of his affiliation with the Group. The Respondent replied in English on December 1, 2015 that they were registered as "a non-profit website". He also said that if there was infringement he would stop. He indicated that if the Complainant wants the Domain Names they can "discuss it". On December 2, 2015, the Complainant's legal representatives asked that he transfer the Domain Names to the Complainant. On December 6, 2015, the Respondent offered to transfer the Domain Names for USD 1,000. This was rejected on December 7, 2015 as the Complainant was only prepared to reimburse the Respondent for his out-of-pocket expenses supported by receipts in relation to the acquisition of the Domain Names. The Respondent reduced the offer to USD 900 on December 26, 2015. No receipts were supplied. Similar domain names were being offered by the Registrar for USD 10-30. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Names are identical or confusingly similar to the ACCENTURE trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Names and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complainant to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith. B. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese while the language of the registration agreement for the Domain Name is Chinese and English.
The Complainant's legal representatives submit in a letter to the Center on February 8, 2016 that the language of the proceeding should be English. The Complainant contends as follows:
- The Respondent is conversant in English as the pre-proceeding correspondence between the parties were in English.
- The Domain Names comprise English words.
- The Complainant has submitted extensive evidence to support the Complaint and having to translate would force it to incur additional costs.
The Panel accepts the Complainant's unrebutted submissions regarding the language of the proceeding. There is evidence that indicate that the Respondent has knowledge of the English language. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese especially in circumstances where the Respondent has elected not to file a Response to the proceeding. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent cannot avail himself of the excuse that he had no knowledge or did not understand that the proceeding has been filed against him. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding according to paragraph 11(a) of the Rules. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark ACCENTURE and that it is a well-known trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. The Domain Names incorporate the Complainant's mark in its entirety. In the case of , the three letter mark, AWS, belonging to a third party is added after ACCENTURE followed by the descriptive words, "business group". In the case of , the three letter mark AWS is added after ACCENTURE. In both cases the addition of the third party trade mark and descriptive terms does nothing to dispel confusion created from the impression that the Domain Names are associated with the Complainant especially in light of the formation of the Group and the extensive media coverage concerning Accenture AWS Business Group. The combination of the two marks as well as the use of the entire trading name would convey to Internet users an expected association rather than eliminate confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain suffix, in this case ".com."
The Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant has registered rights in the trade mark ACCENTURE in China. Neither the Complainant nor AWS has at any time authorized or licensed the Respondent to use ACCENTURE, AWS, the trade marks in combination or the trading name of the Group as a domain name, business or trading name, trade mark or in any other way. The Respondent has made no bona fide offering of goods or services nor is it making fair use of the Domain Names as they have yet to post any content at the Domain Names. The registration of the Domain Names occurred one day after the announcement of the joint venture. The Respondent failed to respond in correspondence the basis for which he registered the Domain Names and whether he claimed to be associated or affiliated with the Complainant.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. E. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the ACCENTURE and AWS trade marks when he registered the Domain Names. The announcement of the formation of the new venture Accenture AWS Business Group was announced one day before the registration of the Domain Names. The Domain Names were registered without prior consent of the joint venture partners.
The Panel concludes that the Respondent registered the Domain Names in bad faith.
The Panel also concludes that the actual use of the Domain Names was in bad faith. The Respondent attempted to sell the Domain Names for a sum which appears to be in excess of documented out-of-pocket costs directly related to the Domain Names. This is evidence of bad faith under paragraph 4(b)(i) and the Panel concludes that the Respondent's registration and use of the Domain Names were in bad faith. 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 Names and be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: March 16, 2016
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