WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services GmbH v. Alok Mishra
Case No. D2007-0559
1. The Parties
The Complainant is Accenture Global Services GmbH, Schaffhausen, Switzerland, represented by Baker & McKenzie, United States of America.
The Respondent is Alok Mishra, Kolkata, India.
2. The Domain Name and Registrar
The disputed domain name <accentureconsultants.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2007. On April 13, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. That same day eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit a timely response. Accordingly, the Center notified the Respondent’s default on May 10, 2007. However on May 14, 2007, the Respondent submitted an out of time Response along with submissions asking for its admission. This is discussed below.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on May 24, 2007. 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. Admissibility of the Response
Paragraph 5 of the Rules states that:
(a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.
(b) The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall
(c) Annex any documentary or other evidence upon which the Respondent relies, together with a schedule indexing such documents.
(d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.
(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.
Paragraph 10(d) of the Rules places it within the discretion of the Panel whether or not to accept supplemental or late submissions from the parties.
In this case the Response was due to be filed by May 9, 2007. The Response was filed on May 14, 2007, some five days late.
In the Response, the Respondent states that “in India it is very difficult for the respondent to contact a Lawyer capable and experienced in dealing with such complaint lodged with ICANN. Under such circumstances the respondent had failed to avail a lawyer and required considerable time to do so. However the lawyer appointed had made ready the present response within May 9, 2007, but certain excess time is required to file the present response for getting the Annexures ready and to complete service of the response. Under such circumstances the respondent seeks extension of time for filing the response from this Panel under the Rules and the default/delay in filing the response be condoned”.
Notwithstanding those submissions, the Response is not accompanied by the promised annexures. Moreover, there is no evidence that the Response has been prepared by a third party and there is no statement of representation in the Response.
Nevertheless, there is evidence in both the Complaint and the Response of earlier communications between the parties which point in favour of allowing the Response onto the record. Bearing in mind the relatively short period by which the Response was overdue and that the balance of prior UDRP decisions has been to show procedural fairness whenever possible, the Panel holds that the Response should be admitted and considered. That said, the Panel makes no additional allowance for the fact that the annexures to the Response are omitted and makes this decision based on the evidence on record as it now stands.
5. Factual Background
The Complainant has an international business providing management consulting, technology services and outsourcing services. The Complainant was previously known as Andersen Consulting.
It announced its intention to change its name to “Accenture” on October 26, 2000. The announcement of the name change was very public. The name change became effective on January 1, 2001.
The Respondent gives an address in India and owns and controls a company incorporated in India. The Respondent provides consultancy services through that company. There is no evidence on record as to when that company was incorporated. The Respondent registered the disputed domain name on September 4, 2004.
The Complainant has 110 offices in 49 countries, including India. In India, it maintains 13 offices in the following cities: Bangalore (4 offices); Mumbai (4 offices); Pune; Hyderabad; Chennai; New Delhi and Haryana.
The Complainant’s net revenue in the year ending August 31, 2006, was US$16.65 billion.
The Complainant has four trademark registrations in India. They are registration Nos. 967047, 12240311, 1271049 and 1241412 for the marks ACCENTURE, ACCENTURE and Design, ACCENTURE HIGH PERFORMANCE DELIVERED and ACCENTURE INNOVATION DELIVERED. The registrations are for a variety of goods and services related to its business.
For the purpose of these proceedings, the most relevant registration is No. 967047 for the word mark, ACCENTURE. The priority date for the ACCENTURE mark in India is October 30, 2000. The mark is registered in class 16 for the following goods: Pamphlets, books, newsletters, brochures, magazines, reports, journals, manuals and guides in the field of business management, information technology and computerized information processing. The other registrations are later and are variously in classes 9, 16, 35, 36, 37, 41 and 42 as would be expected. In addition, the Complainant has nine pending applications for the marks ACCENTURE, ACCENTURE and Design, and ACCENTURE INNOVATION DELIVERED in India for a variety of goods and services filed under Indian Application Nos. 01240312, 967046, 01008458, 01008459, 1520281, 1521351, 1092282, 1092284 and 1535813.
The Complainant owns four registrations in the United States of America for the marks ACCENTURE, ACCENTURE and Design, and ACCENTURE INNOVATION DELIVERED for a variety of goods and services. They are US Reg. Nos. 3091811, 2665373, 2884125 and 2788134.
The Complainant owns more than 1,000 registrations for the marks ACCENTURE, ACCENTURE and Design, ACCENTURE INNOVATION DELIVERED, and ACCENTURE HIGH PERFORMANCE DELIVERED throughout the world.
The Complainant registered the domain name <accenture.com> on August 29, 2000, through its subsidiary Accenture, Ltd. The ACCENTURE trademark is prominently featured at the website “www.accenture.com”.
The Complainant also registered the <accenture.co.in> domain name on January 31, 2004, through its subsidiary, Accenture India Pvt Ltd and uses the ACCENTURE trademark at the website “www.accenture.co.in”.
6. Parties’ Contentions
The Complainant submits that (i) the disputed domain name is confusingly similar to its trademark ACCENTURE in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in the disputed domain name, and (iii) the disputed domain name was registered and is being used in bad faith by the Respondent.
In particular, the Complainant argues that the disputed domain name incorporates the ACCENTURE mark and uses it in conjunction with the word “consulting”, one of the key services offered by the Complainant. The addition of the generic term “consulting” is not a distinguishing feature, and in this case increases the likelihood of confusion because it applies to the Complainant's business. It cites in support of that argument the prior UDRP case of PwC Business Trust v. Mukesh Patel and Comxsys Consulting, Inc., WIPO Case No. D2000-1666, where the domain name <pwc-consulting.com> was found to be confusingly similar to the complainant's PWC mark because “consulting” was related to the complainant's business. The Complainant submits therefore that the Respondent has registered a domain name that is identical or confusingly similar to a mark in which the Complainant has rights.
The Complainant goes on to argue that there is no evidence that the Respondent is making legitimate noncommercial or fair use of the domain name. In letters dated March 17, 2005 and April 14, 2005, the Complainant, through its U.S. attorneys, notified the Respondent of its rights in the ACCENTURE mark, and requested that the Respondent transfer the name to the Complainant. The Respondent refused to do so and the demand was repeated in a letter from the Complainant’s Indian attorneys on May 13, 2005. In an email message dated June 21, 2005, to the Complainant's U.S. attorneys, the Respondent offered to transfer the name to the Complainant and provided a user name and password. However, the user name and password were not sufficient to effect transfer of the name. There is no evidence of the matter however the Complainant states that in subsequent telephone conversations with the Complainant's Indian attorneys, the Respondent withdrew his offer to transfer the name and on November 15, 2006, the Respondent renewed registration of the disputed domain name through to September 4, 2007. The Complainant then baldly asserts that “as a result of the foregoing, the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name”.
Finally, the Complainant points to the fact that the Respondent registered the domain name four years after the priority date of Indian trademark registration No. 967047 for the mark, ACCENTURE. The Respondent incorporated the word “consulting” in the domain name. The Complainant plainly and actively advertises its consulting services on its “www.accenture.com” website and by other means. The Respondent's use of “consulting” in conjunction with the ACCENTURE name strongly indicates, says the Complainant, that the Respondent was aware of the Complainant, its trademark, its services and its reputation at the time of registration of the domain name. The Complainant concludes that the Respondent was attempting to trade off the Complainant's name and reputation. The Complainant argues that since the user name and password provided to the Complainant did not in fact allow the Complainant to transfer the name, there was bad faith. Additionally, the Complainant submits that the Respondent's demands for unreasonable money in order to effect the transfer, are also evidence of the Respondent's bad faith. Moreover, the Respondent renewed registration of the domain name after correspondence with the Complainant's attorneys and so had actual knowledge of the Complainant's rights in the ACCENTURE mark when he renewed the registration. By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of his website and of services similar to those provided by the Complainant. Therefore, the Complainant concludes, it is clear the Respondent has registered and used the Disputed Domain Name in bad faith.
The Response is poorly assembled and repetitive however what can be distilled from it follows.
The Respondent is a director of Accenture Consultants Pvt. Ltd., having its registered office in West Bengal (the “company”). The domain name was registered by the respondent for use by the company. The company offers consultancy services and it’s business is independent of the business carried on by the Complainant.
The Respondent expresses his surprise when he received the demand letter from the Complainant’s attorneys. The Respondent submits that he uses the word “Accenture” in a “different, independent manner using different font, style and also a trademark clearly distinguishable from the complainant. The Web page relating to the domain name under challenge contain the word ‘Accenture’ in a manner clearly distinguishable and different from that of the complainant. The said Domain name has been registered by using the name of the company which is Accenture Consultants Pvt. Ltd. as such the use of the name Accenture Consultants as a domain name is in legitimate interest of the respondent and the respondent has right to use the said domain name”.
The thrust of the Respondent’s argument is that since the disputed domain name reflects the Respondent’s company name and business (consulting) and is simply the conduit by which that company might conduct its online business, it therefore has a legitimate right to the domain name. Moreover, it points out that the business is small and restricted to the State of West Bengal, India.
The Respondent states that it has never acted in bad faith as evidenced by the fact that the Respondent gave the username and password of the domain name to the Complainant so that it might obtain transfer of the name.
The Respondent states that the domain name is not identical or confusingly similar to the Complainant trademark “since it has not established any rights in the words accenture consultants”.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith.
Having considered the evidence and submissions, the Panel finds the following:
A. Identical or Confusingly Similar
The Panel has no hesitation in finding that the disputed domain name is confusingly similar to a mark in which the Complainant has rights. The Complainant’s rights in the trademark ACCENTURE are established by trademark registrations in India and around the world.
The domain name and the trademark are confusingly similar. It is well established that the gTLD can be ignored for the purpose of this comparison, after which the only difference between the domain name and the trademark is the word “consultants” which is utterly descriptive of the Complainant’s principal business offering (see PwC Business Trust v. Mukesh Patel and Comxsys Consulting, Inc., WIPO Case No. D2000-1666).
The Panel accordingly holds that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainant has not given the Respondent permission to use its trademark or any quasi-identical mark. The Complainant has in the Panel’s view made a prima facie showing of the Respondent’s lack of rights or legitimate interests in the disputed domain name. In these circumstances the burden of proof passes from the Complainant to the Respondent: See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Respondent’s belief in its right to the domain name because it reproduces the company name rests on a false foundation. Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(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 in this case could not rely in (iii) above since, by its own admission, the company provides commercial consultancy services. For a respondent to bring itself with (i), the key issue is the bona fides of the offering. That would mean for example that the offering is not token or a sham. There is no suggestion of that in the evidence here, however the essence of the matter is that the offering be legitimate and that cannot be so if the offering is made under the trademark of another party but without their permission. Likewise, in case (ii), although there might be room for saying that the Respondent’s business had been commonly known by the disputed domain name, the issue of legitimacy is critical and again there can be no legitimacy in being known by a name which rightly is the mark of the Complainant. It makes no difference in this respect that the Respondent’s business is small and limited to West Bengal. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
The Panel finds that the Complainant has satisfied the second limb of the Policy.
C. Registered and Used in Bad Faith
The apparent naivety of the Respondent is noteworthy in this case. The Respondent cannot be characterized as a serial cybersquatter. Nevertheless, the UDRP is concerned more generally with abusive domain name registration and, largely, decisions applying the Policy have favoured the application of objective standards.
The Complainant must establish that the Respondent both registered and then used the disputed domain name in bad faith. It is unclear from the Response whether or not the Respondent was actually aware of the Complainant and its trademark at the time it registered the domain name (or, for that matter, the company name). As a general rule, panelists have insisted on proof of actual knowledge of a complainant’s trademark rights. There are cases under the Policy involving very well-known marks where panelists have seemingly imputed a respondent with knowledge of the mark but the better understanding of those cases is that the panels have in fact applied a test of actual knowledge which, based on the balance of probability, so overwhelming favoured the complainant that it merely appears as is their decisions rest on constructive knowledge of the complainant’s rights (See International Organization for Standardization v. International Supplier Operations Audit Services, WIPO Case No. D2002-0460 finding that use of “quality”, “audit” and “consultant” in conjunction with the complainant's mark was evidence of bad faith; The Boston Consulting Group, Inc. v. Rodney Thomas, WIPO Case No. D2005-0259, finding bad faith evidenced by the respondent's constructive notice of the complainant's rights in BOSTON CONSULTING for consulting services).
The Panel here accepts the Complainant’s overwhelming evidence of both the highly visible publicity campaign when the Complainant changed its name, and of the international repute in the new name by the time the disputed domain name was registered. The Panel is mindful, too, that the Complainant’s mark is a coined word with no obvious dictionary meaning. Accordingly, the vast weight of the evidence is that there is a strong likelihood that the Respondent knew of the Complainant’s mark at the time it registered the disputed domain name.
Nonetheless, that finding is not of itself determinative of whether the Respondent had a bad faith intent when it registered the name. The Complainant seeks to show that intention when it states that the Respondent asked for a large amount of money. The Panel is not persuaded by that claim. There is no evidence that the Respondent made financial statements until after it received demand letters from the Complainant’s Indian attorneys calling for transfer of the domain name, cessation of use of the words, and change of the company name. The Panel reads the Respondent statement as an over-reaction to the larger demand that it change the name of its trading company, and not as an underhand call for payment to transfer the disputed domain name.
The Panel finds it more instructive to turn to the wording of the Policy. For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances are listed as evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
There is simply no evidence of the Respondent behaving in any of the ways described in (i), (ii) or (iii) above. The bad faith circumstances described in (iv) however requires closer examination.
There are several issues which arise. The Panel has already said something of both the character of the Respondent and of the approach which has been taken to how the Policy should be applied. In Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453 the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test:
“… how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.”
The second issue which calls for examination is whether the Respondent is using the domain name at all, or whether this is a case of so-called, passive holding as was considered in the case of Telstra Corporation Limited v. Nuclear Marshmallows WIPO Case No. D2000-0003. In that case, a critical question the panel considered might apply to an unused domain name was whether “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law”.
The present case might be analyzed in the same way with the conclusion that the disputed domain name was used in bad faith but that would leave unresolved the question of whether the name was registered in bad faith and it is for that reason that the Panel returns to paragraph 4(b)(iv) of the Policy.
The Respondent’s “use” of the domain name is minimal. It has a holding page at “www.accentureconsultants.com” that merely re-states the words “ Accenture Consultants” and provides an email contact point for the Respondent. Nonetheless, paragraph 4(b)(iv) says nothing of the magnitude of the use, only that it has the effect of drawing Internet users to the Respondent’s online location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or of services promised there.
The Respondent’s website does that very thing regardless of its marginal content. The Panel decides therefore that the Respondent’s conduct falls squarely with paragraph 4(b)(iv). That finding has additional consequences. It was said in the case of Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241:
“The Panel’s finding that the Respondent was unaware of the Complainant or its mark when he acquired the domain name is fatal to any finding of bad faith under any of sub-paragraphs 4(b)(i)-(iii) of the Policy.
A finding of bad faith registration may nevertheless be made where bad faith use within 4(b)(iv) is the only evidence tending to show the purpose for which a domain name was registered. … See Passion Group Inc. v.Usearch, Inc., eResolution Case No. AF-0250; Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905, and Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085.”
This interpretation of paragraph 4(b)(iv) of the Policy has also found recent support in FabJob Inc. v. Compana LLC, WIPO Case No. D2006-0610.
Based on this reading of the Policy, the Panel decides finally that the Complainant has brought the Respondent’s conduct within the understanding of one of the specifically described indications of both bad faith registration and bad faith use and so has established the third and final element required to be shown.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <accentureconsultants.com> be transferred to the Complainant.
Debrett G. Lyons
Dated: June 7, 2007