WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Nexperian Holding Limited / Zhou Zi Kang

Case No. D2017-2478

1. The Parties

Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America (“United States” or “US”), represented by DLA Piper US LLP, United States.

Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Zhou Zi Kang of Shantou, Guangdong, China.

2. The Domain Name and Registrar

The disputed domain name <accenture-staff.com> is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2017. On December 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 19, 2017, 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 January 2, 2018, 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 in English on the same day.

On January 2, 2018, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. Complainant requested that English be the language of the proceeding on the same day. Respondent did not reply by the specified due date.

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 in both English and Chinese of the Complaint, and the proceedings commenced on January 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2018.

The Center appointed Yijun Tian as the sole panelist in this matter on February 20, 2018. 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 March 14, 2018, the Center received an email communication in English from the Registrar-confirmed email address of the Respondent which simply stated “please call me […] (name: mao lee).” in English.

4. Factual Background

A. Complainant

Complainant, Accenture Global Services Limited, is a company incorporated in Chicago, Illinois, United States. It is a leading international business that provides management consulting, technology services and outsourcing services. Complainant has offices and operations in more than 200 cities in 56 countries.

Complainant has exclusive rights in ACCENTURE and ACCENTURE related marks (hereinafter “ACCENTURE marks”). Complainant is the exclusive owner of more than 1,000 ACCENTURE marks in more than 140 jurisdictions, including the US trademark registration for ACCENTURE registered since September 14, 2004 (registration no. 2,884,125) (Annex D to the Complaint) and the Chinese trademark registration for 埃森哲实现卓越 (“埃森哲”phonetic mark is ACCENTURE, “实现卓越” means “achieve excellence”) registered since August 7, 2007 (registration no. 4118142) (Annex F to the Complaint). Complainant also owns and operates several domain names which contain the ACCENTURE mark in its entirety, such as <accenture.com> (registered on August 29, 2000).

B. Respondent

Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Zhou Zi Kang of Shantou, Guangdong, China. The disputed domain name <accenture-staff.com> was registered on November 27, 2017, long after the ACCENTURE marks were registered. The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain name is confusingly similar to the ACCENTURE marks.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <accenture-staff.com> be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

1) Complainant submitted evidence showing that the registration agreement of the dispute domain name’s registrar is in English (Annex B to the Complaint).

2) The disputed domain name fully incorporates Complainant’s company name, “Accenture”.

3) Complainant has submitted a significant amount of evidence demonstrating that Respondent registered the disputed domain name in bad faith. The website resolved by the disputed domain name fully and exactly incorporates Complainant’s registered trademark, design mark and tagline, and appears to have been created to confuse consumers into believing that Respondent’s website is Complainant’s website, or that Respondent is associated or affiliated with Complainant, when it is not.

4) Allowing the dispute to proceed in Chinese would give Respondent an advantage and would force Complainant to incur additional costs and expenses in seeking local assistance in China for handling the dispute.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case. (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) further states:

“Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

Against this background, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement. Such scenarios include (i) evidence showing that the respondent can understand the language of the complaint, (ii) the language/script of the domain name particularly where the same as that of the complainant’s mark, (iii) any content on the webpage under the disputed domain name, (iv) prior cases involving the respondent in a particular language, (v) prior correspondence between the parties, (vi) potential unfairness or unwarranted delay in ordering the complainant to translate the complaint, (vii) evidence of other respondent-controlled domain names registered, used, or corresponding to a particular language, (viii) in cases involving multiple domain names, the use of a particular language agreement for some (but not all) of the disputed domain names, (ix) currencies accepted on the webpage under the disputed domain name, or (x) other indicia tending to show that it would not be unfair to proceed in a language other than that of the registration agreement.”

(WIPO Overview 3.0, section 4.5.1; see also L’Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the facts that Complainant is a company from the US, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the disputed domain name includes Latin characters (“accenture”) and English word (“staff”) (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese company or a Chinese individual and is thus presumably not a native English speaker, but the Panel finds that persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name includes Latin characters “accenture” and English word “staff” rather than Chinese script; (b) the generic Top-Level Domain (“gTLD”) of the disputed domain name is “.com”. So the disputed domain name seems to be prepared for users worldwide, particularly English speaking countries; (c) Respondent sent an informal email to the Center regarding the dispute on March 14, 2018, and the email was written in English; (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Substantive Issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:

(i) The disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) 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.

On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a) - (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel finds that Complainant has rights in the ACCENTURE marks acquired through registration. The ACCENTURE marks have been registered internationally including the US (since at least 2004) and China (since 2007).

The disputed domain name <accenture-staff.com> comprises the ACCENTURE mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the suffix “-staff”, and the gTLD suffix “.com” to the ACCENTURE marks. This does not eliminate the identity or confusing similarity between Complainant’s registered trademarks and the disputed domain name.

Previous UDRP panels have consistently held that a domain name is identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it”. (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610 citing General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

Further WIPO Overview 3.0 states:

“The applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” (WIPO Overview 3.0, section 1.11).

Thus, the Panel finds that the suffix “-staff”, and the gTLD suffix “.com” are not sufficient to negate the confusing similarity between the disputed domain name and the ACCENTURE marks. .

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) before any notice to Respondent of the dispute, the use by Respondent 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 Respondent 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 Complainant’s trademarks.

The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to respondent to rebut complainant’s contentions. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 3.0, paragraph 2.1 and cases cited therein).

According to the Complaint, Complainant is a leading international business that provides management consulting, technology services and outsourcing services. Moreover, it has offices and operations in more than 200 cities in 56 countries. Complainant has rights in the ACCENTURE trademarks worldwide, including the US (since at least 2004) and China (since 2007), which long precede Respondent’s registration of the disputed domain name (2017).

Moreover, Respondent is not an authorized dealer of Accenture-branded products or services. The Panel finds that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifts the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; 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).

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the term “accenture” in its business operation. There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the ACCENTURE marks or to apply for or use any domain name incorporating the ACCENTURE marks.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. Respondent registered the disputed domain name <accenture-staff.com> in 2017, long after the ACCENTURE marks became internationally known. The disputed domain name is identical or confusingly similar to Complainant’s ACCENTURE marks.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed domain name is currently inactive. According to the evidence submitted in the Complaint, the disputed domain name previously resolved to a website which fully and exactly incorporates Complainant’s registered trademark, design mark and tagline, and appears to have been created to confuse consumers into believing that Respondent’s website is Complainant’s website, or that Respondent is associated or affiliated with Complainant, when it is not.

The Panel finds that Respondent has failed to produce any evidence to rebut Complainant’s prima facie showing on Respondent lack of rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.

Upon the evidence of the circumstances in this case, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.

(i) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the ACCENTURE marks with regard to its products and services. Complainant has registered its ACCENTURE marks internationally, including the US (since at least 2004) and China (since 2007). The ACCENTURE mark ranked 37th in the 2017 Interbrand’s Best Global Brands Report, its highest ranking ever in the report (Annex J to the Complaint). It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2017). The Panel therefore finds that the ACCENTURE mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant. The Argento Wine Company Limited v. Argento Beijing Trading Company, supra.

Moreover, Respondent has chosen not to respond to Complainant’s allegations. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. See also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787.

Thus, the Panel concludes that the disputed domain name was registered in bad faith.

(ii) Used in Bad Faith

The disputed domain name previously resolved to a website which fully and exactly incorporates Complainant’s registered trademark, design mark and tagline, and appears to have been created to confuse consumers into believing that Respondent’s website is Complainant’s website, or that Respondent is associated or affiliated with Complainant, when it is not. The Panel finds this is evidence of bad faith in accordance with paragraph 4(b)(iv) of the Policy.

The disputed domain name <accenture-staff.com> is currently inactive. In terms of inactive domain name, the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.” (Section 3.3, WIPO Overview 3.0).

The WIPO Overview 3.0 further states:

“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

As discussed above, Complainant’s ACCENTURE marks, arguably, are widely known. Taking into account all the circumstances of this case, the Panel concludes that the current inactive use of the disputed domain name by Respondent is in bad faith also.

In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to disrupt Complainant’s business. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <accenture-staff.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: March 19, 2018