The Complainant is Sandbox Studio, LLC, United States of America (“United States”), represented by McDermott Will & Emery LLP, United States.
The Respondent is Robert carpi, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2021. On November 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 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 Complainant on November 2, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 4, 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 Respondent of the Complaint, and the proceedings commenced on November 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 24, 2021. Respondent did not submit any
response. Accordingly, the Center notified the Parties of Respondent’s default on November 25, 2021.
The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 30, 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.
4. Factual BackgroundComplainant is a United States-based company producing digital marketing content to customers internationally. Since 2020, Complainant has been wholly owned by Accenture Global Solutions Limited (“Accenture”), a major global business consultancy established in 2001. Complainant is the proprietor of United States Trademark No. 5530640 for CREATIVEDRIVE (word mark), registered on July 31, 2018 for services in classes 35, 40, 41 and 42. Complainant operates its primary business website at the domain name
The disputed domain name was registered on August 10, 2021. It does not resolve to an active website.
5. Parties’ Contentions A. ComplainantComplainant’s contentions may be summarized as follows:
Under the first element, Complainant states that it is a global, tech-driven content production company that simplifies, automates and scales the creative asset production process. Founded in 2015, CreativeDrive has built a global network of on-premise content studios designed for fast and flexible creative asset production across all format types, including motion, photography, CGI and augmented reality. It has used the CREATIVEDRIVE mark in connection to media and content production and related services since 2015. In August 2021, Complainant was acquired by Accenture, which has offices and operations in more than 318 locations in 51 countries and employs over 506,000 employees worldwide. Through this acquisition and extensive use and promotion of the mark, the CREATIVEDRIVE mark has become distinctive and enjoys a strong reputation. The disputed domain name wholly incorporates Complainant’s mark. The generic
Top-Level Domain (“gTLD”) “.careers” strengthens the association with Complainant.
Under the second element, Complainant states that its CREATIVEDRIVE mark has acquired secondary meaning through substantial, continuous and exclusive use of the mark by Complainant. Respondent is not affiliated with, nor has it been licensed by Complainant, to use the CREATIVEDRIVE mark. Respondent is not commonly known by the disputed domain name. Respondent is inactively holding the disputed domain name and is therefore not making a bona fide offering of goods or services nor a legitimate noncommercial or faire use thereof.
Under the third element, Complainant states that, given Accenture’s worldwide reputation and the well-publicized acquisition of Complainant’s business, it is clear that Respondent was aware of the CREATIVEDRIVE and ACCENTURE marks prior to registering the disputed domain name. Complainant has not used the disputed domain name. There is no reason for Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of Complainant’s marks.
Complainant believes that the underlying registrant and Respondent is the named respondent identified in a previous UDRP decision, Sandbox Studio, LLC v. Privacy service provided by Withheld for Privacy eff / Daniel Matthew, Deckers Brands,
WIPO Case No. D2021-2654, wherein respondent was found to have registered the
Respondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the UDRP requires Complainant to make out all three of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) Respondent has registered and is using the disputed domain name in bad faith.
Under 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.”
A. Identical or Confusingly SimilarComplainant has provided evidence establishing that it has trademark rights in the CREATIVEDRIVE mark through registration in the United States. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1.
In comparing Complainant’s CREATIVEDRIVE mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark, as it comprises Complainant’s mark followed by the letter “s.” It is the consensus view of UDRP panels that the addition of letters or symbols does not prevent a finding of confusing similarity because Complainant’s mark is clearly recognizable within the disputed domain name. See, for example, WIPO Overview 3.0, section 1.8, and cases cited thereunder.
It is the well-established view of UDRP panels that the addition of the gTLD, in this case, “.careers,” to a disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder).
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The circumstances stated in the Complaint and evidence in support set forth in the annexes thereto indicate that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not authorized by Complainant and is not commonly known by the disputed domain name. Furthermore, the disputed domain name is nearly identical to Complainant’s mark and domain name (except for the added “s”, and the gTLD), thereby creating a likely risk of connection with the trademark owner. Such holding of the disputed domain name cannot confer rights or legitimate interests
Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.
Respondent has not rebutted Complainant’s prima facie case, and has not proved rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain name, or that there are any circumstances or activities that would establish Respondent’s rights therein. Rather, the disputed domain name is inactive.
Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain name. Complainant provides uncontroverted evidence that the CREATIVEDRIVE mark has been in continuous use since 2015, and that the mark is used in connection to the well-known ACCENTURE mark. These rights predate the registration of the disputed domain name, which contains Complainant’s CREATIVEDRIVE mark together with the letter “s.” The Panel also notes that Complainant operates the domain name
The Panel finds that Respondent has demonstrated bad faith by passive holding of the disputed domain name. Such a finding is consistent with previous UDRP decisions, such as Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. See also WIPO Overview 3.0, section 3.3. Complainant has provided sufficient evidence that its CREATIVEDRIVE mark has acquired distinctiveness, and Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name. Respondent has not presented any rational basis for registering and using the disputed domain name. Such circumstances indicate bad faith in registration and use of the disputed domain name.
Furthermore, the Panel notes Complainant’s unrebutted allegation that the disputed domain name was registered only four days after the Registrar suspended the domain name
WIPO Case No. D2021-2654, wherein respondent was found to have registered the
The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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,
Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: December 14, 2021
1 The Panel notes that the Complaint was originally filed against a privacy service “Redacted for privacy, Withheld for Privacy ehf”, and that Complainant filed an Amended Complaint to add the registrant information disclosed by the Registrar.