Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America ("United States").
Respondent is Host Master, DXSolutions Ltd of Croydon, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"). 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2017. On July 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 Respondent of the Complaint, and the proceedings commenced on August 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 25, 2017.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 30, 2017. 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
Complainant is an international business that provides management consulting, technology services and outsourcing services under the name "Accenture". Complainant has offices and operations in over 200 cities in 56 countries.
Complainant registered the first ACCENTURE mark on December 24, 2002.
Complainant owns, inter alia, the following trademark registrations with the United States Patent and Trademark Office ("USPTO"):
TRADEMARK
REGISTRATION NO.
REGISTRATION DATE
INTERNATIONAL CLASSES
ACCENTURE
3,091,811
May 16, 2006
9, 16, 35, 36, 37, 41 and 42
ACCENTURE
2,665,373
December 24, 2002
9, 16, 35, 36, 37, 41 and 42
ACCENTURE
3,340,780
November 20, 2007
6, 8, 9, 14, 16, 18, 20, 21, 24 and 28
ACCENTURE
2,884,125
September 14, 2004
18, 25 and 28
ACCENTURE and design
3,862,419
October 19, 2010
35 and 36
Oracle Corporation ("Oracle") is an international company that provides products and services related to technology and information technology in the fields of hardware and software such as, inter alia, cloud solutions, middleware, integrated systems and data storage.
Oracle owns, inter alia, the following trademark registrations with the USPTO:
TRADEMARK
REGISTRATION NO.
REGISTRATION DATE
INTERNATIONAL CLASSES
ORACLE
1,200,239
July 6, 1982
9 and 16
ORACLE
1,555,182
September 5, 1989
41 and 42
ORACLE
2,107,556
October 21, 1997
35, 36 and 42
ORACLE
2,040,313
February 25, 1997
38
ORACLE
3,030,079
December 13, 2005
25
Oracle also owns the following trademark registrations with the United Kingdom Intellectual Property Office:
TRADEMARK
REGISTRATION NO.
REGISTRATION DATE
INTERNATIONAL CLASSES
ORACLE
UK00001282825
August 3, 1990
42
ORACLE
UK00001313522
April 20, 1990
9
ORACLE
UK00002115435
June 13, 1997
38
ORACLE
UK00003014718
October 18, 2013
9
While not formally party to these proceedings, over the past 25 years, Complainant and Oracle developed a close relationship, cooperating in servicing their joint customers' needs. In 2010, Oracle certified Complainant as a "Diamond partner".
The disputed domain name was registered on March 29, 2017. The disputed domain name does not resolve to an active website. 5. Parties' Contentions A. Complainant
Complainant contends as follows:
The disputed domain name is confusingly similar to the ACCENTURE mark, in that it incorporates, in its entirety, Complainant's well-known ACCENTURE mark and simply combines this mark with the ORACLE mark. In fact, the addition of Oracle's ORACLE mark actually exacerbates the likelihood of confusion because Complainant is well known as a long-standing partner of Oracle.
Respondent has made no bona fide offering of goods or services. Respondent registered the disputed domain name to create a false association or affiliation with Complainant. Respondent registered the disputed domain name on the day after various news agencies reported that Oracle was exploring the possibility of purchasing Complainant. SeeAnnex P to the Complaint.
On April 21, 2017, Complainant wrote to Respondent by email asking for its reasons for registering the disputed domain name, and whether Complainant or Oracle was involved with the registration. Respondent did not reply to this email. On April 27, 2017, Complainant again wrote to Respondent asking for a response. On April 28, 2017, Respondent replied, with the following message: "It's the title of a novel I'm writing." See Annex W to the Complaint. Respondent has not yet posted any content at the disputed domain name and is not using it in connection with the offering of any products or services.
While a registrant may incorporate a third-party trademark in a domain name that references a book title, it must take care to avoid selecting a domain name that does not create initial interest confusion or falsely suggest an association with the complainant. See Costco Wholesale Corp. v. Yezican Industries,WIPO Case No. D2007-0638. In this case, Respondentmade no effort to avoid confusion or false association with the ACCENTURE Mark andregistered the disputed domain name, which merely fully incorporates both the ACCENTURE mark andthe ORACLE mark.
Respondent has no credible documentary evidence that it has legitimate rights in the disputed domain name, or that it is actually writing a book that is identical to the disputed domain name. Indeed, Respondent appears to offer information technology services, which are highly similar, if not identical to Complainant's services, and it does not appear to claim to have authored any books.
Neither Complainant nor Oracle has licensed or otherwise permitted Respondent to use the ACCENTURE mark or the ORACLE mark, or to apply for or use any domain names incorporating these marks.
In summary, there is no indication that Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead, Respondent deliberately chose a domain name that fully incorporates Complainant's ACCENTURE mark and the ORACLE mark, despite having full knowledge that such materials infringe on Complainant's trademarks. Thus, it is clear that Respondent has no legitimate interest in the disputed domain name, in view of Complainant's prior statutory and common law rights in the ACCENTURE Mark.
Respondent registered and is using the disputed domain name in bad faith. Respondent had constructive notice that the ACCENTURE mark was a registered trademark in the United States and many other jurisdictions worldwide. The disputed domain name merely incorporates Complainant's and Oracle's trademarks, without any reference to any other information or intention, and as such, the disputed domain name appears highly unlikely to be an actual book title and appears to actually be an attempt to create confusion or attract attention to the disputed domain name for commercial gain. The likelihood of confusion is even greater in this case because the disputed domain name merely incorporates the ACCENTURE mark and the ORACLE mark and Internet users visiting the disputed domain name are highly likely to expect the website to be Complainant's or Oracle's website, or a website authorized thereby.
Additionally, failure to present documentary and credible evidence to support a claim of a legitimate use of a domain name also supports a finding of bad faith. See Philip Morris USA Inc. v. Lance Williams,WIPO Case No. D2015-0546. There is no evidence that Respondent is – as it claims – writing a book with the same title as the disputed domain name, which further supports a finding of bad faith.
There is significant evidence that Respondent's claims that it is writing a book with the disputed domain name as a title are pretextual, such as:
- Respondent registered the disputed domain name the very next day after news reports published suggesting that Oracle was exploring purchasing Complainant (see Annex P to the Complaint);
- Respondent has not provided any credible evidence that it is writing a book;
- Respondent provides services in the same industry as Complainant and does not appear to have authored any books; and
- The disputed domain name merely incorporates the ACCENTURE mark and the ORACLE mark, which in and of themselves, are an unlikely title for a book.
It appears that Respondent did not register the disputed domain name to actually offer services but, instead, registered and is using it for the bad-faith purpose of appearing associated or affiliated with Complainant, to disrupt the business or Complainant and/or to prevent Complainant from registering and owning the disputed domain name. Therefore, Respondent has acted in bad faith. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
By submitting copies of registration certificates and printouts of the USPTO database, Complainant has proved to the satisfaction of the Panel that it has trademark rights in the ACCENTURE mark. See section 4 above.
The Panel notes that the disputed domain name contains, as a suffix, the ACCENTURE mark in its entirety, just preceded by Oracle's ORACLE mark as a prefix. In Confederation Nationale du Credit Mutuel v. HMD HMDA,WIPO Case No. D2013-1262, relating to , the panel found that the Policy should be applied in cases where the domain name at issue is composed of more than one mark. See Saab Automobile AB et al. v. Joachim Nordberg,WIPO Case No. D2000-1761, relating to and , (finding that "the domain names are a combination of two marks does not mean that the Policy cannot be applied"), and Volkswagen AG v. Swiss Recruitment,WIPO Case No. D2013-0534, relating to , and citing Bayrische Motoren Werke AG v. Null,WIPO Case No. D2002-0937 (finding that the combination of two marks in the same expression should deserve entirely the same type of protection that is envisaged for a single mark).
In conclusion, the Panel finds that the disputed domain name is confusingly similar to Complainant's ACCENTURE mark. B. Rights or Legitimate Interests
Complainant contends that Respondent has no credible documentary evidence that it has rights or legitimate interests in the disputed domain name, and, in particular, that Respondent is actually writing a book with a title identical to the disputed domain name. Respondent, says Complainant, appears to offer information technology services which are highly similar, if not identical, to Complainant's services, and Respondent does not appear to claim to have authored any books. Complainant adds that neither Complainant nor Oracle have licensed or otherwise permitted Respondent to use the ACCENTURE mark or the ORACLE mark, or to apply for or use any domain names incorporating these marks. Lastly, Complainant denies that Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Instead, Respondent deliberately chose a domain name that fully incorporates Complainant's ACCENTURE mark and the ORACLE mark, despite having full knowledge that doing so would interfere with Complainant's trademarks. Complainant concludes that Respondent has no legitimate interest in the disputed domain name.
The Panel notes that Respondent failed to make any submission in this proceeding, such as providing its reasons or purposes for registering the disputed domain name. On April 28, 2017, in reply to a request by Complainant's counsel about the reasons for Respondent's having registered the disputed domain name, a certain Oliver, in an email sent from an email address corresponding to the registrant of the disputed domain name, stated the following:
"Hi Jeff, It's the title of a novel I'm writing. Regards, Oliver"
The Panel recognizes that in the abstract there might be circumstances where there is a reasonable claim for using a mark in the title of a novel. However, on the available record there is no evidence whatsoever that any person – related or not to Respondent – in fact is writing any novel with the title "Oracle Accenture" or with any title containing any of both marks, or that any demonstrable preparations exist for such purpose. The Panel further notes that the website at the disputed domain name has showed no contents whatsoever. This apparent lack of any use, or demonstrable preparations to use the disputed domain name, prevent any possible allegation of bona fide use, or fair or legitimate noncommercial use pursuant to Policy paragraphs 4(c)(i) or (iii). Since Respondent is "Host Master, DXSolutions Ltd", Policy paragraph 4(c)(ii) (being commonly known by the domain name) also does not apply.
Thus, there appears to exist no explanation for the use by Respondent of the ACCENTURE (and ORACLE) marks in the disputed domain name other than Respondent's intent to profit from the confusion of the disputed domain name with both of those marks, especially considering that Respondent provides services similar to those provided by Complainant (and Oracle). This purpose for registering or using the disputed domain name clearly is illegitimate under the Policy, and does not confer any rights or legitimate interest.
The Panel concludes that Complainant made out its case that Respondent lacks any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that Complainant registered its ACCENTURE mark with the USPTO in December 2002, that is 15 years before Respondent registered the disputed domain name. See section 4 above. Complainant also has shown that its ACCENTURE mark enjoys considerable renown, and that it has invested substantial resources in advertising and promoting it. Further, Complainant has evidenced that Respondent provides services related to the field of business where both Complainant and Oracle are active participants. Lastly, Complainant has shown that the disputed domain name was registered the day after the press reported about the possible acquisition of Complainant by Oracle. In the Panel's opinion, all these facts and circumstances strongly indicate that Respondent knew of Respondent (and Oracle), as well of their marks ACCENTURE and ORACLE, and targeted these companies and marks at the time of registering the disputed domain name. In the circumstances of this case, the Panel finds that the registration of the disputed domain name was in bad faith.
Since Respondent does not appear to have any relationship with Complainant or Oracle, two well-known companies, and the disputed domain name reproduces the well-known trademarks ACCENTURE and ORACLE in their entirety, its use suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
In the Panel's opinion, since the disputed domain name does not presently resolve to an active website and does not appear to be used in any other way, the doctrine of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 ("Telstra"), is applicable to this case. The Panel considers that the following circumstances are relevant in the present case:
a) Complainant's ACCENTURE mark and services are well-known globally;
b) Respondent has no rights or legitimate interests in the disputed domain name;
c) Respondent failed to reply to the Complaint;
d) In particular, Respondent did not provide any concrete evidence that it is writing a novel with a title corresponding to the disputed domain name;
e) Respondent provides services in the same industry, and likely would profit of the confusion of the disputed domain name with Complainant's (and Oracle's) marks and
f) There is no conceivable circumstance of use of the disputed domain name by Respondent that would not be in prejudice of Complainant's rights in the ACCENTURE mark,
Under these circumstances, the Panel finds that under Telstra the absence of use of the disputed domain name amounts to passive holding within the meaning of bad faith use under the Policy. Accordingly, the third element of the Policy is met.
Lastly, the Panel notes that in an email dated June 27, 2017 sent to Complainant's IP counsel, the managing counsel for Oracle Legal confirmed that Oracle is not affiliated with the disputed domain name or with its registrant, that Oracle has no objection to Complainant filing a UDRP complaint against Respondent, and that Oracle consents to Complainant obtaining registration of the disputed domain name, so long as the domain name is used in a manner that does not infringe Oracle's rights and is not likely to cause consumer confusion. 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 disputed domain name be transferred to the Complainant.
Roberto Bianchi
Sole Panelist
Date: September 13, 2017
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