The Complainant is Acxiom LLC, United States of America (“United States”), represented by Wright, Lindsey & Jennings, LLP, United States.
The Respondent is Acxiom Technologies LLP, India / Husein Vohra, Acxiom Technologies UK Ltd, India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2021. On March 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 1, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 6, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 6, 2021. The Center verified that the Complaint together with the amended 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, and the proceedings commenced on April 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2021. The Response was filed with the Center on April 26, 2021. The Center appointed Luca Barbero as the sole panelist in this matter on May 17, 2021. 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. On June 3, 2021, the Panel requested an extension of the due date from May 31, 2021, to June 15, 2021. On June 7, 2021, pursuant to its general powers under paragraphs 10 and 12 of the Rules, the Panel issued the Administrative Panel Procedural Order No.1 (“Panel Order No. 1”), requesting the Complainant and the Respondent to submit, by June 14, 2021, further supporting documents to substantiate, respectively, the statements on the Complainant’s commercial activities, reach and global reputation included in the Complaint, and to provide explanations as to the reason why the Respondent registered the disputed domain name. In response to the Panel Order No. 1, the Complainant filed a Supplemental Filing, on June 11, 2021, in which it provided the requested documentation. The Respondent filed its Supplemental Filing in reply to the Panel Order No. 1, on June 12, 2021 also providing information on the reason for which it registered the disputed domain name. In accordance with its general powers under paragraph 10 of the Rules, the Panel requested a second extension of the due date for decision from June 15, 2021, to June 22, 2021. 4. Factual Background The Complainant is a global database marketing services and technology company. The Complainant is the owner of several trademark registrations for ACXIOM, including the following, as per trademark certificates submitted as annexes to the Complaint: - United States Trademark Registration No. 1907571 for ACXIOM (word mark), filed on May 24, 1994, and registered on July 25, 1995, in international classes 35 and 42; The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name The Complainant underlines that the inclusion of the term “tech” only serves to further increase the likelihood of confusion. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has not been licensed or otherwise permitted to use any of the Complainant’s trademarks, nor has it licensed or otherwise permitted the Respondent to register the disputed domain name incorporating the Complainant’s trademark. The Complainant states that there is no association between the Complainant and the Respondent and that the term ACXIOM is not a generic or descripting word that the Respondent would otherwise have the right to use. Moreover, the Complainant underlines that, whilst the term “axiom” is indeed a word with a definition, the addition of a letter “c” in the name AXCIOM is not, and that the Complainant chose to add the letter “c” solely to create continuity with its former name “Ccx Network”. With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, products or services. The Complainant also emphasizes that the Respondent, upon registering the disputed domain name, identical or in any case confusingly similar to the Complainant’s trademark, cannot claim to have been unaware of the Complainant, considering its world renown and global reach on the Internet and that the ACXIOM trademark has been in use since 1995. Moreover, the Complainant underlines that the Respondent claims to have 10 years’ experience in the field of data management, which has seen him manage, lead and implement Data warehouse, Data quality and MDM projects for clients across India, United States, Middle East and South East Asia. If that were indeed the case, the Complainant asserts that it is highly unlikely that in a period of 10 years they would not be familiar with the Complainant especially given the nature of the Complainant’s services and technologies, which closely resemble those of the Respondent. Lastly, the Complainant informs the Panel that the work history of the Respondent’s co-founder, shows that he was employed since as early as 2005 at various software companies, including one of the Complainant’s partner companies, and that it is thus unconceivable that the Respondent did not have knowledge of the Complainant or its trademark before registering the disputed domain name. B. Respondent The Respondent replied to the Complainant’s contentions denying all allegations and stating that the disputed domain name is in no way identical or confusingly similar to the Complainant’s trademark since its name is clearly distinguished by the term “tech” which indicates the technological services provided by its company. Moreover, the Respondent contends that, if the Complainant really wanted the disputed domain name, it should have not waited seven years to identify that the Respondent was using it instead. The Respondent asserts that the Complainant’s statement, regarding its world renown during the Respondent’s decade-long career in data management, MDM and data quality, is in no way founded and it highlights that, though it has, over time, heard names such as SAS, Oracle, Address Doctor and Informatica as being leaders in their specialty, it never heard about the Complainant as being a leader in its sector. The Respondent requests that the Panel does not grant the Complainant the transfer of the disputed domain name as it believes that both can coexist as separate entities. C. Complainant’s Supplemental Filing In response to the Panel Order No. 1, the Complainant filed a Supplemental Filing, on June 11, 2021, in which it provides the following information and supporting documentation. The Complainant underlines that its company was founded in 1969 under the name of Demographics Inc. The company name was later changed to Acxiom Corporation in 1988. In 2018, the Complainant was purchased by Interpublic Group, one of the four largest advertising agencies in the United States. The Complainant further contends that its services are not provided to the general public and are thus not advertised directly to individual consumers, though ACXIOM is a well-known brand amongst large brand owners that make up its target client base, which includes almost half of the Fortune 100 largest companies the world, comprising 9 out of 10 of the top credit card issuers, 7 of the top 10 retail banks, 9 of the 10 top insurance providers, 5 of the 10 top retailers, 8 of the 10 top United States hotel brands, 8 of the 10 telecom companies, 8 of the 10 top United States automobile manufacturers, 9 of the 10 top technology companies and 4 of the 5 top United States airlines. Moreover, with an annual revenue exceeding USD one billion, the Complainant offers its services to clients in more than 60 countries, including United States, Europe and the Asian-Pacific region. An annual report has been provided to substantiate this allegation. Lastly, with regards to its global reach and world renown, the Complainant highlights that it has been recognized by many major publications, including the New York Times, CNN, Forbes, Business Insider, and others as being a global leader in data and marketing services and technology. D. Respondent’s Supplemental Filing The Respondent filed its Supplemental Filing in reply to the Panel Order No. 1 on June 12, 2021, in which it provided the following comments. In its response, the Respondent asserts that, when selecting the domain name for its company Acxiom Technologies LLP, of which it is currently director, it found the disputed domain name The Respondent also highlights that the word “Acxiom” was chosen for its inherent definition, as “Axiom” in English means “something that is self evidently true” and points out that the pronunciation of its “Axiom” mark is in any case different from that of the Complainant. Moreover, the Respondent contends that its business activities are primarily focused on India and that it has never come across any customer organization that has mistaken it for the Complainant, implying that the Complainant does not after all, have the global reputation that it claims to have. Lastly, the Respondent requests that the Complainant clarify its allegations with regards to the monetary and commercial losses incurred due to the Respondent and argues that if the Complainant did not want the disputed domain name to be used by third parties, it should have reserved all the corresponding domain name in advance. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark ACXIOM based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint. It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of generic or descriptive terms or even letters or numbers does not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0). The disputed domain name reproduces the trademark ACXIOM in combination with the descriptive term “tech” and the gTLD “.com”, which can be disregarded being a mere technical requirement for registration. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: “(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.” In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy that it has, on balance of probabilities, rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. As mentioned above, the disputed domain name has been pointed to a website which promotes the services of a software solutions company in India, specialized in data management. The Panel notes that the Respondent has failed to submit any evidence of use of the sign ACXIOM as a company name or business identifier. The Respondent also failed to provide any reasonable explanation as to the reason why it selected the disputed domain name to promote its services, which are substantially identical to the ones provided by the Complainant. Moreover, the Panel also notes that, while the term “tech” encompassed in the disputed domain name might (as stated by the Respondent) refer to the technological services provided by the Respondent’s company, there appears to be no reasonable explanation for adopting the acronym “acxiom” in the disputed domain name other than to refer to the Complainant’s trademark. The Respondent argued that the disputed domain name was registered because of the dictionary term “axiom”. However, the Panel notes that the core of the disputed domain name is clearly constituted by the Complainant’s prior registered trademark ACXIOM. The fact that the disputed domain name was available for registration is not sufficient in itself to give rise to rights or legitimate interests under the Policy. In view of the above-described use of the disputed domain name, the Panel finds that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. In light of the prior registration and use of the Complainant’s trademark ACXIOM in connection with the data, marketing and technology services provided by the Complainant, and considering that, based on the records and to the best of the Panel’s knowledge, ACXIOM is a coined mark, with no meaning in any language, the Panel finds that the Respondent’s registration of the disputed domain name, confusingly similar to the Complainant’s trademark, cannot amount to a mere coincidence. Indeed, in view of the Respondent’s lack of any plausible explanation as to the reason why it selected the disputed domain name, incorporating the Complainant’s trademark with the addition of the term “tech”, which is also descriptive of the Complainant’s products and services provided under the trademark ACXIOM, and in light of the identical data management services that the Respondent is providing at the disputed domain name, the Respondent very likely registered the disputed domain name with the Complainant’s trademark in mind. In view of the above-described use of the disputed domain name, the Panel also finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the products and services promoted therein according to paragraph 4(b)(iv) of the Policy. The fact that the Complaint was filed seven years after the registration of the disputed domain name does not alter the Panel’s finding under the Policy. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy. 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 Luca Barbero
- United Kingdom Trademark No. 1553955 for ACXIOM (figurative mark), filed on November 16, 1993, an registered on March 24, 2000, in international classes 35, 39, 40 and 42;
- United States Trademark Registration No. 3108579 for ACXIOM (word mark), filed on October 14, 2002, and registered on June 27, 2006, in international classes 35 and 42;
- Indian Trademark No. 3604014 for ACXIOM (word mark), filed on August 1, 2017, and registered on August 1, 2017, in classes 9, 35 and 42;
Sole Panelist
Date: June 22, 2021
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