WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Chaoyong Shen, Shen Chaoyong

Case No. D2015-1103

1. The Parties

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

The Respondent is Chaoyong Shen, Shen Chaoyong of Shishi, Fujian, China.

2. The Domain Names and Registrar

The disputed domain names <accentureoraclebusinessgroup.com>, <accenture-oracle.com>, and <accentureoracle.com> are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2015. On June 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2015, 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 July 1, 2015, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On July 2, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2015.

The Center appointed Sok Ling MOI as the sole panelist in this matter on August 17, 2015. 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 management consulting, technology services and outsourcing services company with offices and operations in more than 50 countries worldwide. It claims to have continuously used the mark ACCENTURE in connection with various services since January 2001.

The Complainant is the owner of numerous trade mark registrations for the mark ACCENTURE worldwide, including the following:

The Complainant owns and operates the website “www.accenture.com” which it registered on August 30, 2000. At this website, Internet users can find information about the Complainant’s services offered in connection with the ACCENTURE mark.

Oracle Corporation is an international hardware and software technology and cloud solutions company. It is the owner of numerous trade mark registrations for the mark ORACLE worldwide, including the following:

The Complainant enjoys a long time business relationship and alliance with Oracle Corporation. For over 20 years, the Complainant has delivered Oracle-based IT solutions. On April 27, 2015, the Complainant and Oracle Corporation formed a new business group named “Accenture Oracle Business Group”.

The disputed domain names <accentureoracle.com>, <accenture-oracle.com> and <accentureoraclebusinessgroup.com> were all registered on April 27, 2015, which was the same date on which the Complainant and Oracle Corporation announced their new partnership under “Accenture Oracle Business Group”. According to the evidence provided by the Complainant and as at the date of this decision, none of the disputed domain names resolves to an active website.

Oracle Corporation has confirmed by letter annexed to the Complaint that it consents to the Complainant’s filing of the Complaint in this matter and to the Complainant’s obtaining registration of the disputed domain names.

5. Parties’ Contentions

A. Complainant

Since January 2001, the Complainant has extensively and continually used the ACCENTURE mark in connection with various services. In the fiscal year 2014, it spent more than USD 70 million on global advertising through various media. The ACCENTURE mark has been recognised as a leading global brand by reputable brand consulting companies in the industry, and has become well-known globally.

A1. The disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights:

The disputed domain names <accenture-oracle.com> and <accentureoracle.com> are confusingly similar to the Complainant’s ACCENTURE mark because they fully and exactly incorporate the Complainant’s ACCENTURE mark. They simply combine the Complainant’s ACCENTURE mark and the ORACLE mark.

The disputed domain name <accentureoraclebusinessgroup.com> is confusingly similar to the Complainant’s ACCENTURE mark because it fully and exactly incorporates the Complainant’s ACCENTURE mark and is identical to the name of the Complainant’s and Oracle Corporation’s business partnership, “Accenture Oracle Business Group”.

A2. The Respondent has no rights or legitimate interests in respect of the disputed domain names:

Neither the Complainant nor Oracle Corporation has given any license or authorization to the Respondent to use or apply for registration of the disputed domain name. Neither the Complainant nor Oracle Corporation maintains any licensing relationship with the Respondent.

A3. The disputed domain names were registered and are being used in bad faith:

Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE mark on the Internet, the Respondent was or should have been aware of the ACCENTURE mark, the ORACLE mark and the ACCENTURE ORACLE BUSINESS GROUP business partnership at the time it obtained the registrations for the disputed domain names.

The Respondent had intentionally sought registrations for domain names that are confusingly similar to the ACCENTURE mark and the ACCENTURE ORACLE BUSINESS GROUP name, in order to create a likelihood of confusion and to sell the disputed domain names to the Complainant for a profit. The Respondent did in fact make an unsolicited offer to sell the disputed domain names to the Complainant, with a threat to sell them to another party if the offer was not accepted. It had also refused to provide supporting documentation to demonstrate its out-of-pocket costs incurred for the registration of the disputed domain names. These actions demonstrate bad faith intention.

For all of the above reasons, the Complainant requests the transfer of the disputed domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated fairly and given a fair opportunity to present their respective case.

The language of the Registration Agreement for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

On the record, the Respondent appears to be a Chinese individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) pre-dispute correspondence between the Complaint and the Respondent furnished as evidence by the Complainant, have been conducted in English;

(b) the three disputed domain names are registered in Latin characters, rather than Chinese script;

Additionally, the Panel notes that:

(a) the Center has notified the Respondent of the proceeding in both Chinese and English;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and

(c) the Center informed the Respondent that it would accept a Response in either English or Chinese.

Considering the above 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. To require the Complaint and all supporting documents to be translated into Chinese would in the circumstances of this case cause an unnecessary cost burden to the Complainant and would unfairly disadvantage the Complainant. The proceeding would be unnecessarily delayed.

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that (i) it shall accept the Complaint and all supporting materials as filed in English; and (ii) English shall be the language of the proceeding and the decision will be rendered in English.

6.2 Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be transferred:

(i) the disputed domain names registered by the Respondent are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

On the basis of the evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in the ACCENTURE mark by virtue of its extensive use and registration worldwide of the same as a trade mark.

According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, the first element of the UDRP serves essentially as a standing requirement. The threshold test for confusing similarity under the UDRP is low, and involves a comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The concept of “confusing similarity” here may differ from the concept as applied under national trade mark laws. The consensus view of previous UDRP panels seems to be that as long as the relevant trade mark is generally recognizable as such within the domain name, the first element would be satisfied, notwithstanding the addition of other elements (generic or otherwise).

In this case, the disputed domain names incorporate the Complainant’s ACCENTURE mark in its entirety. The addition of a hyphen (“-”) or the generic words “business group” is insufficient to obviate any confusing similarity, as is the addition of the ORACLE mark, if one were to apply the consensus view. The addition of the generic Top-Level Domain (“gTLD”) “.com” is disregarded for the purpose of the similarity assessment in this case.

Consequently, applying the consensus view, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s ACCENTURE mark, for purpose of the UDRP.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant bears the burden of establishing that the Respondent lacks rights or legitimate interests in the disputed domain names. However, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the disputed domain names, even if it has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or Oracle Corporation, or otherwise authorized or licensed to use the ACCENTURE mark or the ORACLE mark, or to seek registration of any domain name incorporating the said marks.

The disputed domain names do not resolve to any active websites or other online presence. There is no evidence of the Respondent conducting any legitimate commercial or noncommercial business activity, or offering any products or services, using the disputed domain names.

The Panel is therefore satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Respondent has however failed to respond.

Accordingly, the Complainant has satisfied the requirements of the second element under 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 names in bad faith, namely:

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

(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

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

(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites 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 the Respondent’s websites or location or of a product.

The disputed domain names do not resolve to any active websites or other online presence. Nevertheless, the consensus view of previous UDRP panels is that passive holding in itself does not preclude a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see WIPO Overview 2.0, paragraph 3.2).

The Complainant’s ACCENTURE mark and the ORACLE mark are distinctive and well known throughout the world. A cursory Internet search would have disclosed the marks and their extensive use by the Complainant and Oracle Corporation. Thus a presumption arises that the Respondent was aware of the Complainant’s ACCENTURE mark and Oracle Corporation’s ORACLE mark and related domain names when it registered the disputed domain names. It is also too much of a coincidence that the registration of the disputed domain names, especially <accentureoraclebusinessgroup.com>, took place on the same date as the announcement of the business partnership between the Complainant and Oracle Corporation under an identical name “Accenture Oracle Business Group”. The Panel therefore determines that the Respondent had registered the disputed domain names in bad faith, and that the circumstances referred to in paragraph 4(b)(ii) of the Policy are applicable to the present case.

The Respondent has provided no evidence whatsoever of actual or contemplated bona fide use of the disputed domain names. Instead, the Respondent had offered to sell the disputed domain names to the Complainant with a veiled threat to sell them to others if the offer was not accepted by the Complainant, according to email evidence furnished by the Complainant. It is clear from the evidence furnished that the Respondent had attempted to profit from the sale. The Panel finds that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case.

The Panel determines that 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 as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. A such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

The Panel also notes that efforts to contact the Respondent at the physical address provided to the Registrar failed which suggests that the Respondent had provided false contact details.

Taking into account all the circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <accentureoraclebusinessgroup.com>, <accenture-oracle.com> and <accentureoracle.com> be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: September 15, 2015