Complainant is Accela, Inc., United States of America (“United States”), represented by Hanson Bridgett LLP, United States.
Respondent is Redacted for Privacy, Withheld for Privacy ehf, Iceland/ alfred williams, 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 November 11, 2021. On November 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 12, 2021.
The Center verified that the Complaint together with the amendment to 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 November 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2021.
The Center appointed Timothy D. Casey as the sole panelist in this matter on December 15, 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 more than 20-year-old software company based in San Ramon, California, in the United States that provides automated software, cloud-based platforms, and related technology for state and local governments. Complainant works with numerous governments in the United States and has over 1,500 active developers. Complainant has numerous trademark registrations, including the following United States registered trademarks that wholly incorporate ACCELA (the “ACCELA Mark”):
Mark
International Class(es)
Registration No.
Registration Date
ACCELA
35
2,875,166
August 17, 2004
ACCELA AUTOMATION
35
2,940,668
April 12, 2005
ACCELA
9, 42
4,050,156
November 1, 2011
ACCELA (DESIGN)
9, 42, 45
4,689,296
February 17, 2015
ACCELA CIVIC PLATFORM
9, 42
5,069,024
October 25, 2016
Complainant owns the
The disputed domain name was registered on October 28, 2021. The disputed domain name has been used for email representing Respondent or someone associated with Respondent as an employee or otherwise associated with Complainant. The disputed domain name has also been used in conjunction with a website that mimics Complainant’s website, utilizes one or more of the ACCELA Marks, and promotes a number of job openings allegedly for positions with Complainant.
5. Parties’ Contentions A. ComplainantComplainant contends that the disputed domain name, which includes one or more of the ACCELA Marks in their entirety, is confusingly similar to the ACCELA Marks, and that the addition of the descriptive word “jobs” after “accela” was selected to trick innocent third parties into believing that Respondent is associated with Complainant.
Complainant provided a copy of an email using the disputed domain name that was sent on November 3, 2021 to a potential job applicant in which Respondent or someone associated with Respondent impersonated an employee of Complainant, offered a job with Complainant to the potential job applicant, and phished for information from the potential job applicant.
Complainant further contends that Complainant has not authorized Respondent to use the ACCELA Marks, or to register the disputed domain name, and Respondent has no rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent is not commonly known by or as the ACCELA Marks. Complainant contends that Respondent’s scheme to trick third parties into believing Respondent is Complainant by mimicking Complainant’s website and using the disputed domain name in emails soliciting confidential information and money from third parties is fraudulent and is therefore not a bona fide offering of goods and services nor a noncommercial or fair use of the ACCELA Marks.
Complainant believes Respondent is using the disputed domain name in a deliberate attempt to deceive third parties by copying Complainant’s website and posing as an employee of Complainant’s organization. Complainant further contends that Respondent intentionally registered the disputed domain name as part of a fraudulent scheme, namely to fraudulently obtain information and money by deceiving Complainant’s potential job applicants.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant’s use of the ACCELA Marks as early as 2001, more than 20 years prior to registration of the disputed domain name, and Complainant’s registration of many ACCELA Marks since 2004, are more than sufficient to establish that Complainant has trademark rights in the ACCELA Marks.
Complainant contends that the disputed domain name incorporates the entirety of the ACCELA Marks and is confusingly similar to the ACCELA Marks. Complainant contends that the addition of the word “jobs” after “accela” does not prevent a finding of confusing similarity to Complainant’s ACCELA Marks.
The Panel agrees and finds that the disputed domain name is confusingly similar to the ACCELA Marks.
B. Rights or Legitimate InterestsThe Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Respondent does not appear to be commonly known by the disputed domain name or the ACCELA Marks. Complainant has not licensed or authorized Respondent to use or register the disputed domain name. Regardless of what Respondent’s true intention may have been in contacting the potential job applicants of Complainant under false pretenses using the disputed domain name, that impersonating use alone is sufficient to support the Panel’s conclusion that Respondent’s use was not a legitimate noncommercial or fair use and does not constitute a bona fide offering of goods or services. Respondent’s fake website associated with the disputed domain name only further supports this finding. Respondent has not rebutted Complainant’s prima facie case and has provided no arguments or evidence showing potential rights or legitimate interests in the disputed domain name.
Furthermore, the nature of the disputed domain name, comprising the ACCELA Marks and an additional word that is within Complainant’s field of commerce or indicating services (i.e., employment) related to the ACCELA Marks, or which is not obviously critical, carries a risk of implied affiliation with the Complainant as it effectively impersonates or suggests sponsorship or endorsement by the Complainant, and accordingly cannot constitute a fair use in these circumstances. See section 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Finally, Complainant has provided evidence that the disputed domain name is being used in connection with a fraudulent phishing scheme via emails; such use can never confer rights or legitimate interests on Respondent. See in this regard WIPO Overview 3.0, section 2.13.
For these reasons, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithGiven i) the timing of Complainant’s first use and first registration of the ACCELA Marks and Complainant’s use of the ACCELA Marks in association with the noted goods and services, ii) the nature of the disputed domain name, wherein the use of “jobs” with “accela” in combination with a fake website and fraudulent emails appears designed to trick potential job applicants, iii) the subsequent timing of the registration of the disputed domain name, iv) Complainant’s prior trademark rights in the United States, and v) evidence of Respondent’s subsequent usage, the Panel finds that Respondent clearly knew of the ACCELA Marks at the time of registration of the disputed domain name. Respondent’s registration of the disputed domain name was therefore in bad faith.
In addition, the Panel finds the subsequent usage of the disputed domain name, the fake website, and the sending of email communications impersonating an employee of the Complainant, to constitute use in bad faith consistent with paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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
Timothy D. Casey
Sole Panelist
Date: December 31, 2021