WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Accenture Automotives Garage LLC / K.V. Binuraj / NetSonic Computers
Case No. D2014-1328
1. The Parties
The Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is Accenture Automotives Garage LLC / K.V. Binuraj / NetSonic Computers of Dubai, UAE, United Arab Emirates, represented internally.
2. The Domain Name and Registrar
The disputed domain name <accentureauto.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2014. On August 6, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On August 8, 2014, the Center notified the Complainant an administrative deficiency. On August 12, 2014, the Complainant submitted an amended Complaint to the Center by email.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014. The Response was filed with the Center on August 28, 2014.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on September 9, 2014. 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 Background
The Complainant is an international business that provides management consulting, technology services and outsourcing services under the name ACCENTURE. The Complainant has proved that the trademark ACCENTURE enjoys thorough protection through numerous registrations worldwide. The Complainant has proved to be also the owner of ACCENTURE trademarks validly registered in the United Arab Emirates.
The Complainant appears to be the holder amongst others of the domain name <accenture.com> registered on August 30, 2000.
The ACCENTURE mark has been recognized as a leading global brand by reputable brand consulting companies in the industry. The ACCENTURE mark has been recognized in Interbrand’s Best Global Brands Report since 2002, when it ranked 53rd.
The listed registrant of the disputed domain name in the WhoIs register appears to be KV Binuraj / NetSoniC Computers , however in the Response it is clearly expressed and documented that the holder of the disputed domain name is Accenture Automotives Garage LLC.
Whereas, KV Binuraj / NetSoniC Computers is the IT Service managing all IT resources of Accenture Automotives Garage LLC. KV Binuraj / NetSoniC Computers is then representing Accenture Automotives Garage LLC in the present proceeding by virtue of a documented authorization.
The Respondent, Accenture Automotives Garage LLC, is a garage involved in repairs and maintenance of all types of motor vehicles.
The website at the disputed domain name promotes Respondent’s services in the field of motor vehicle repairing.
The Respondent has documented to be a company offering services of motor vehicle repairing under the company name Accenture Automotives Garage LLC, by means of a Professional Licence issued by the Government of Dubai on October 19, 2011 and a No Objection Certificate issued by the Dubai Investments Park.
The disputed domain name <accentureauto.com> was registered on September 12, 2012.
The Complainant’s trademark registrations predate the registration of the disputed domain name.
5. Parties’ Contentions
The Complainant claims that the ACCENTURE trademark is a well known trademark with strong reputation, that the disputed domain name is confusingly similar to the Complainant’s renowned ACCENTURE registered trademark; that the Respondent has no rights or legitimate interests whatsoever with respect to the disputed domain name; and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent refutes all the allegations made by the Complainant and claims that:
Accenture Automotives Garage LLC is a registered Limited Liability Company under the Department of the Economic Development, Government of Dubai, United Arab Emirates. (Trade license copy attached to the Response);
Accenture Automotives Garage LLC is setup under Dubai Investments Park. (No Objection Certificate Copy attached to the Response)
Accenture Automotives Garage LLC was setup on October 19, 2011.
<Accentureauto.com> was registered on September 12, 2012 and in use hence forth.
<Accentureauto.com> was chosen owing to the fact that it perfectly matched Respondent’s organization name (Accenture Automotives Garage LLC), and “auto” is short form for automotive.
The website to the <accentureauto.com> and email ids under the same disputed domain name have been used by the Respondent for nearly two years.
All the Respondent’s clients and prospective clients know and use the same email and website.
Registrations in all governmental and semi-governmental organizations (like electricity department, water department, post office, banks, telephone department, Internet providers etc.) are made using same disputed domain name and email.
6. Discussion and Findings
In order for the Complainant to obtain a transfer of the disputed domain name, the Policy paragraph 4(a) requires that the Complainant must demonstrate to the Panel that:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established to have rights to the ACCENTURE trademark.
The Complainant has argued that ACCENTURE is an extremely well known trademark and forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional word “auto” in the disputed domain name is not dominant, being merely generic and descriptive.
This Panel agrees with the Complainant’s contention that “accenture” is the only distinctive part within the disputed domain name and that the addition of the generic term “auto” does not avoid the confusing similarity between the disputed domain name and Complainant’s trademark ACCENTURE. Indeed, it is now well established by many previous UDRP decisions that the addition of a generic term (i.e., “auto” here) to a trademark is generally not sufficient to avoid confusing similarity.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark ACCENTURE in which the Complainant has rights.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate non-commercial 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 fact that on October 19, 2011, the Respondent registered the business name “Accenture Automotives Garage LLC” with the Department of the Economic Development, Government of Dubai, United Arab Emirates indicates that the Respondent was using the disputed domain name in connection with an offering of its services of motor vehicle repairing prior to any knowledge of this dispute.
As well explained in FINAXA Société Anonyme v. Vitalie Popa, WIPO Case No. D2004-0873, once the prior use of the disputed domain name has being established, the question becomes whether the Respondent was also acting in good faith (“bona fide”). In fact, not every use prior to a notice of the dispute qualifies as bona fide use. As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, “use which intentionally trades on the fame of another cannot constitute a bona fide offering or service” and “to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy”.
In the case at hand, the design of the Respondent’s website and the presentation of its services is completely different from the several websites used and services offered by the Complainant. A comparison of the websites does not support Complainant’s contention that the Respondent banks on the ACCENTURE trademark and/or provokes confusion between its own services and those of Complainant.
The same can be said regarding the logo used by the Respondent, the design of which is clearly distinguishable from Complainant’s logo as shown hereunder.
Additionally, Respondent’s business, owing to its specific activity, i.e., a garage where car reparations are offered, is not only limited to a local market but also offers products and services different from those of the Complainant.
In fact, the “Accenture” services in the automotive sector appear to be specifically related to connection systems and mainly directed to car producers and telecommunication companies.
Consequently, though the ACCENTURE trademark is definitely renowned regarding many products and services in the field of management consulting, technology services and outsourcing services, the connection of the ACCENTURE trademark with the automotive field seems to this Panel less well-known.
The Respondent on the contrary is targeting the end consumers, i.e., drivers/owners of vehicles mainly looking for car reparations. Moreover, there is nothing in the evidence to suggest that this service was not a genuine service.
In addition this Panel considers that the chronology of events is an important factor in determining whether the application is bona fide or merely a way of bolstering the Respondent’s disputed domain name registration. A trade name application made subsequent to notice of a dispute of the domain name registration may indicate a lack of legitimate interest. Whereas the registration of a domain name corresponding to the Respondent’s already existing company name may indicate a legitimate interest.
Here the disputed domain name was registered on September 12, 2012, i.e., almost one year after the establishment of Respondent’s company, Accenture Automotives Garage and apparently has been used since its registration to promote the activity (namely the garage) of the Respondent.
It is still possible that the Respondent had the Complainant’s mark in mind when acquiring the disputed domain name and intended to trade off the Complainant’s reputation. However, on the balance of probability, it appears that the disputed domain name was chosen to reflect Respondent’s company name on the web rather than to trade off the Complainant’s reputation.
As previously found by the panel in BECA Inc. v. CanAm Health Source, Inc., WIPO Case No. D2004-0298: The knowledge and intention of the respondent at the time the disputed domain name is registered is highly relevant, but knowledge of the complainant’s rights does not, in itself, preclude the respondent from having a right or legitimate interest in the domain name.
In addition, according to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing that (as an individual, business, or other organization) have been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights.
In this regard, it appears that the Respondent has been using the disputed domain name since its registration to promote its garage and the services offered. The Respondent has claimed and partially documented to have used the Accenture Automotives name in correspondence with governmental and semi-governmental organizations.
In addition, the Respondent has been using the “Accenture Automotive Garage” (and device) logo, as a trade name and as the sign for its garage, apparently for at least 3 years. Thus considering the field of activity and the locally limited market, it is reasonable to consider that the Respondent has been commonly known by the disputed domain name or at least by a name almost corresponding to it.
All the above circumstances are insufficient in this case to give rise to a finding of absence of rights or legitimate interests on the part of the Respondent.
The Panel is therefore not satisfied that the Respondent lacks a legitimate interest in respect of the disputed domain name.
The Complainant has failed to establish this element of its case.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
i) circumstances indicating that the holder has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder 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 the holder has engaged in a pattern of such conduct; or
iii) the holder 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, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
To be successful, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
Owing to the conclusion reached in the previous paragraph, there should be no need to evaluate the eventual existence of Respondent’s bad faith registration and use of the disputed domain name. However, for the sake of completeness, the Panel notes that comparing the elements from which it is possible to infer the bona fide use of the disputed domain name with those claimed by the Complainant to show Respondent’s bad faith, on the balance of probability the results are favorable to the Respondent.
This conclusion is strongly influenced by the fact that the disputed domain name (partially) corresponds to the Respondent’s registered company name and that it was registered almost one year after the establishment of the Respondent’s company.
Owing to the fame of Complainant’s trademark ACCENTURE, it is not possible to exclude that the Respondent had the Complainant’s mark in mind when acquiring the disputed domain name and intended to trade off the Complainant’s reputation. However, on the balance of probability, the use of the disputed domain name to promote an activity that is unlikely to be mistaken with that of the Complainant, together with the partial correspondence with Respondent’s company name, is not considered use of the disputed domain name in bad faith.
If the Respondent did have the Complainant in mind, in the Panel’s view, examination of such intent would require more significant evidentiary investigation such as a court could undertake.
For the foregoing reasons, the Complaint is denied.
Date: September 22, 2014