The Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America ("United States"), represented by DLA Piper LLP (US), United States.
The Respondent is Zhe Li, Li Zhe of Anyang, Henan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Chengdu West Dimension Digital Technology Co., Ltd. (the "Registrar"). 3. Procedural History
The Complaint was filed in English 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 28, 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 details. On August 2, 2017, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 2, 2017. 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 in English and Chinese of the Complaint, and the proceedings commenced on August 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 5, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on September 17, 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
The Complainant Accenture Global Services Limited, along with its affiliates and predecessor Accenture Global Services GmbH, is an international business that provides management consulting, technology services and outsourcing services.
The Complainant is the owner of trademarks registered in the United States, for example:
Mark
Goods and Services
Registration No.
Registration Date
ACCENTURE
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42
3,091,811
May 16, 2006
ACCENTURE & Design
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42
2,665,373
December 24, 2002
ACCENTURE & Design
Various goods in Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28
3,340,780
November 20, 2007
ACCENTURE & Design
Various goods in Classes 18, 25 and 28
2,884,125
September 14, 2004
ACCENTURE & Design
Various services in Classes 35 and 36
3,862,419
October 19, 2010
The Complainant owns and controls the domain name , bearing the "ACCENTURE" Mark.
Since at least as early as 1992, the Complainant and its predecessors-in-interest have enjoyed a strong business relationship and alliance with Oracle Corporation.
Oracle is an international business that provides a wide variety of products and services related to technology and information technology in the fields of hardware and software, cloud solutions, middlewear, integrated systems and data storage, and is the owner of the ORACLE trademark and company name.
Oracle owns trademark registrations for the ORACLE Mark, for example, in the United States:
Mark
Goods & Services
Registration No.
Registration Date
ORACLE
Products in Classes 9 and 16
1200239
July 6, 1982
ORACLE
Services in Classes 41 and 42
1555182
September 5, 1989
ORACLE
Services in Classes 35, 36 and 42
2107556
October 21, 1997
ORACLE
Services in Class 38
2040313
February 25, 1997
ORACLE
Products in Class 25
3030079
December 13, 2005
and in China:
Mark
Goods & Services
Registration No.
Registration Date
ORACLE
Products in Class 16
283930
April 10, 1987
ORACLE
Products in Class 9
286042
May 10, 1987
ORACLE
Services in Class 42
797963
December 7, 1995
ORACLE
Services in Class 36
939804
January 28, 1997
ORACLE
Services in Class 41
801873
December 21, 1995
ORACLE in Chinese characters (甲骨文)
Products in Class 16
287948
May 20, 1987
ORACLE in Chinese characters (甲骨文)
Products in Class 9
286043
May 10, 1987
The Respondent is Zhe Li, China.
The disputed domain name is and it was registered on March 30, 2017. The disputed domain name does not resolve to any active website. 5. Parties' Contentions A. Complainant Identical or confusingly similar
The Complainant submits that the disputed domain name incorporates, in its entirety, the Complainant's registered trademark ACCENTURE and another registered trademark ORACLE, to which generic Top-Level Domain ("gTLD") ".com" has been added. It is therefore confusingly similar to the Complainant's registered trademark ACCENTURE.
The Complainant also submits that given its long-standing partnership with Oracle, the addition of Oracle's trademark actually exacerbates the likelihood of confusing the users. In addition, domain names which are highly similar to the disputed domain name, , and , were found by prior panel to be confusingly similar to the Complainant's mark ACCENTURE.
The Complainant further submits that ACCENTURE, rather than being a descriptive or generic term, is a coined term and consumers associate this term exclusively with the Complainant and its products and services. No rights or legitimate interests
The Complainant submits that neither the Complainant nor Oracle have licensed or otherwise permitted the Respondent to use the ACCENTURE Mark or the ORACLE Mark or to apply for or use any domain names incorporating these marks; and neither of them maintain any licensing relationship with the Respondent.
The Complainant further submits that by passively holding the website the Respondent has failed to make use of this disputed domain name's website and has not demonstrated any attempt to make legitimate use of the domain name and website. Registered and is being used in bad faith
The Complainant submits that given its worldwide reputation the Respondent was or should have been aware of the ACCENTURE Mark prior to registering the disputed domain name and this constitutes bad faith; particularly, two days before the Respondent registered the disputed domain name, various news agencies reported that Oracle was exploring the possibility of purchasing the Complainant.
The Complainant further submits that the term "ACCENTURE" is an invented word which is not a term that a domain name registrant would legitimately choose unless he is seeking to create an impression of an association with the Complainant.
As such, even though the disputed domain name has not been used the Complainant alleged registration and use of the disputed domain name was in bad faith. Remedies Requested
The Complainant submits that Oracle has provided consent to the Complainant's ownership of the disputed domain name and therefore requests a transfer of the disputed domain name to the Complainant. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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."
The Complainant requested the language of proceedings be in English on the grounds that it had submitted evidence the registration agreement was in Chinese, the domain name incorporates the name of an Irish and an American company and that there is substantial evidence the domain name was registered in bad faith, translating the complaint would delay proceedings and give the Respondent an advantage.
The Respondent has not responded to the proceeding nor to the request that the language of the proceeding to be in English.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding "should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint".
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delay in this matter.
These factors lead the Panel to determine to follow the Center's preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English. 6.2. Substantive Issues
The burden for the Complainant under paragraph 4(a) of the Policy is to prove that:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name is made up of the registered trademarks ORACLE and ACCENTURE, linked by a hyphen, plus the gTLD ".com". The disputed domain name is confusingly similar to the Complainant's registered trademark ACCENTURE. The addition of "ORACLE" does nothing to dispel any confusion, given that the Complainant and Oracle Corporation have long standing business relationships.
The first part of the paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") provides:
"While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of 'proving a negative', requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element."
Paragraph 4(c) of the Policy sets out ways in which a respondent may establish they have rights and legitimate interests. These are:
"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads.
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The second part of the paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered and used in bad faith.
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain name was registered and is being used in bad faith.
Given the Complainant's ACCENTURE trademark is a coined term, the Panel finds it difficult to believe that the Respondent was not aware of the Complainant's trademark at the time of registration of the disputed domain name. A cursory search on the Internet would have revealed the fame of the Complainant's ACCENTURE trademark.
Furthermore, the timing of the registration, just two days after news of a possible purchase of the Complainant by Oracle, also suggests that the disputed domain name was registered to somehow take advantage of the potential acquisition.
While the disputed domain name is currently not being used, this does not prevent a finding of bad faith (see section 3.3 of the WIPO Overview 3.0).
Having examined all the circumstances of the case the Panel finds that the Respondent registered and is using the disputed domain in bad faith.
The third part of the paragraph 4(a) of the Policy is therefore satisfied. 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.
Douglas Clark
Sole Panelist
Date: September 28, 2017
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