WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services GmbH v. Accentics Corporation DMS AB, Dialogue Marketing Strategy AB
Case No. D2008-0468
1. The Parties
The Complainant is Accenture Global Services GmbH of Switzerland, represented by Baker & McKenzie, United States of America.
The Respondents are Accentics Corporation DMS AB and Dialogue Marketing Strategy AB of Sweden.
2. The Domain Name and Registrar
The disputed domain name <accentics.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on March 26, 2008, and in hard copy on March 31, 2008. The Center transmitted its request for registrar verification to the Registrar on March 28, 2008. The Registrar replied on March 28, 2008, confirming that it was the Registrar of the Domain Name, that the first Respondent was the registrant, that the registration agreement was in English, that the registrant had submitted in that agreement to the jurisdiction at the location of the Registrar’s principal office for court adjudication of disputes concerning or arising from the use of the Domain Name, and that it would not change the status of the registration. The Registrar also provided the contact details for the registration held on its database.
The Complainant filed an amendment to the Complaint on April 10, 2008. 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”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2008. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 1, 2008. The Response was filed with the Center by email on April 30, 2008, by fax on May 2, 2008 and in hard copy on May 7, 2008.
By email of May 6, 2008, the Complainant asked to submit a “very brief reply to the respondent’s response” to correct what it said were inaccurate statements therein. By email of May 7, 2008, the Respondent asked for an opportunity to respond if the Complainant’s supplemental submission were taken into consideration by the Panel. On May 8, 2008, the Complainant sent the Center a fairly short “Supplemental Filing and Reply to Respondent’s Response to Complaint”.
The Center appointed Jonathan Turner as the sole panelist in this matter on May 15, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
By a Procedural Order of May 21, 2008, the Panel admitted the Complainant’s Supplemental Filing of May 8, 2008, under paragraph 12 of the Rules and granted the Respondent permission to submit a Supplemental Filing in response thereto by May 29, 2008. The Respondent submitted a Supplemental Filing on May 29, 2008.
4. Factual Background
The Complainant and its affiliated companies carry on a leading global management consulting, technology services and outsourcing business. The group employs about 170,000 people in 49 countries, including Sweden, and had net revenues of US $19.7 billion in fiscal year ended August 31, 2007. It has offices in Sweden in Stockholm, Gothenburg and Malmo. It has websites “www.accenture.com” and “www.accenture.se”.
The adoption of the name “Accenture” by the Complainant’s group on October 26, 2000, was extensively publicized and followed by a high-profile global marketing campaign to establish “Accenture” as its new name.
The Complainant has registered “ACCENTURE” and other marks containing ACCENTURE in Sweden and many other countries for a wide range of goods and services. These include a logo comprising “accenture” in a lower-case font with an accent in the form “>” over the “t”, which has been registered as a Community trademark as of November 16, 2000.
The Respondent registered the Domain Name on May 29, 2002, and is using it for a website which claims that the Respondent is “the leading single-source provider of high quality lead management, one-to-one communication and presale services”. The website summarises the Respondent’s services under the headings “Newsletters and e-marketing”, “Build automated processes” and “Telemarketing”.
The Respondent also registered a trademark in Sweden comprising the word “accentics” in a lower case font preceded by an accent in the form “>” and with a vertical line between the last two letters, “c” and “s”, in respect of advertising, business management, business administration and office functions in class 35.
This registration was opposed by the Complainant, relying on its prior Community registrations of the word mark ACCENTURE and the device mark comprising “accenture” in lower-case font with an accent over the “t”. The opposition was upheld and the Respondent’s registration was revoked on the ground that the Respondent’s mark was confusingly similar to the Complainant’s device mark. However, the decision of the Swedish Patent and Trademark Office of August 17, 2006, specifically held that the Respondent’s mark was not confusingly similar to the Complainant’s ACCENTURE word mark.
The Complainant also asked the Respondent in February and April 2003 to change its company name and to transfer the Domain Name to the Complainant. The Respondent refused to do so and renewed its registration of the Domain Name on June 23, 2006.
5. Parties’ Contentions
The Complainant contends that it has registered rights in the word mark ACCENTURE and the device mark comprising “accenture” in lower case with an accent over the “t”. It submits that the Domain Name is confusingly similar to its marks, relying on the decision of the Swedish Patent and Trademark Office upholding its opposition to the registration of the Respondent’s mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the mark. It states that there is no evidence that the Respondent is making legitimate noncommercial or fair use of the Domain Name and that the Respondent renewed the registration after it informed the Respondent of its rights in its marks and its objections to the registration of the Domain Name.
The Complainant also alleges that the Respondent registered and is using the Domain Name in bad faith. The Complainant points out that the Respondent’s website promotes services which are carried on by the Complainant and reflected in its trademark registrations.
The Complainant draws attention to the Respondent’s adoption of a similar logo as showing a clear intention to trade off the Complainant’s name and reputation and alleges that the Respondent has continued and still continues to use this logo even after the Swedish Patent and Trademark Office found that it was confusingly similar to the Complainant’s mark.
The Complainant submits that the Respondent’ renewal of the registration of the Domain Name after lengthy correspondence with the Complainant’s attorneys was in bad faith since the Respondent clearly had knowledge of the Complainant’s rights. The Complainant concludes that by using the Domain Name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
The Complainant requests a decision that the Domain Name be transferred to it.
The Respondent submits that since it successfully registered its logo as a mark in Sweden, the Swedish Patent and Trademark Office did not regard it as confusingly similar to the Complainant’s mark. However, according to the Respondent, it did not defend the opposition brought by the Complainant since it had no interest in a long and expensive legal case, and changed its logo to a form containing no resemblance to the Complainant’s logo.
The Respondent contends that the parties are not in the same business, since the Respondent provides services in the field of telemarketing and email marketing which are not offered by the Complainant.
The Respondent notes that “accent” is a common word and that the endings of the Domain Name and the Complainant’s name are very different. It also points out that potential clients of the Complainant are not average consumers, but professionals in high positions who would have no problem in seeing the difference between the Complainant’s mark and the Domain Name.
The Respondent states that it has used the Domain Name for everyday business, including its website, emails and extranet, since 2002. It claims that a ruling against it would inflict great damage on its business since many emails would be lost. It also states that it has been commonly known in its market by the Domain Name since 2002 and that it is making fair use of it without intent to misleadingly divert consumers or to tarnish the Complainant’s mark.
The Respondent claims that it registered the Domain Name after browsing the Internet for any similar name and finding no results when the Domain Name was entered in the Google search engine. The Respondent contends that the Domain Name cannot be regarded as registered in order to prevent the Complainant reflecting its mark in a corresponding Domain Name, and that it has not engaged in a pattern of such conduct; that the parties are not competitors; that the Domain Name was not registered in an intentional attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark; and that the Domain Name was not registered primarily for the purpose of sale to the Complainant or a third party.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith.
It is clear from the wording of the Policy that these are cumulative requirements: each must be separately satisfied for the Complaint to succeed.
The Panel is satisfied that the Complainant has rights in the word mark ACCENTURE and the logo comprising “accenture” in lower case with an accent over the “t”, as well as various other marks containing the word ACCENTURE.
It is necessary next to consider whether the Domain Name is confusingly similar to any of these marks within the meaning of paragraph 4(a)(i) of the Policy. It is well-established that for this purpose the comparison must be between the Complainant’s mark and the Domain Name, irrespective of the content of any website of the Respondent accessible by the Domain Name: see paragraph 1.2 of the Center’s “Overview of WIPO Panel Views on Selected UDRP Questions”, the decisions cited there and General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334. Accordingly, the Respondent’s use on its website of a logo similar to the Complainant’s logo must be disregarded, regardless of whether and to what extent such use is continuing.
It is also well-established in this connection that the generic top level domain suffix should be discounted. It is therefore simply necessary to consider whether “ACCENTICS” is confusingly similar to “ACCENTURE”.
Although both start with “ACCENT” the Panel considers that (on a direct comparison between the Complainant’s mark and the Domain Name) Internet users, and particularly those interested in the Complainant’s services, are likely to notice the difference in the endings of “ACCENTICS”, and “ACCENTURE”, and are unlikely to suppose that the former is connected with the latter.
Moreover, contrary to the Complainant’s contention, in this Panel’s view, the decision of the Swedish Patent and Trademark Office does not support its case on this point and indeed contradicts it. The Office regarded only the combination of similarities in the names and their presentation in lower case together with the accent as sufficient to make them confusingly similar. The Office rejected the Complainant’s contention that the Respondent’s logo was confusingly similar to its word mark ACCENTURE and it would seem to follow from this that the word “Accentics” was not regarded as in itself confusingly similar to “Accenture”.
Furthermore, the Complainant has not submitted any evidence of any actual confusion even though the Respondent has apparently used the Domain Name since 2002.
In the circumstances, the Panel is not satisfied on the evidence that the Domain Name is confusingly similar to any of the Complainant’s marks.
It follows that the first requirement of the Policy has not been met and the Complaint must therefore be rejected.
For all the foregoing reasons, the Complaint is denied.
Dated: June 9, 2008