WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xerox Corporation v. WHOISGuard Protected, WHOISGuard Inc. / Pascal Pengs
Case No. D2015-1912
1. The Parties
The Complainant is Xerox Corporation of Norwalk, Connecticut, United States of America ("U.S."), represented by Redd Solicitors, LLP of London, United Kingdom ("U.K.").
The Respondent is WHOISGUARD Protected, WHOISGuard Inc. of Panama / Pascal Pengs of New York, New York, U.S.
2. The Domain Name and Registrar
The disputed domain name <acsworldwideltd.com> ("Domain Name") is registered with Enom, Inc. d/b/a enom.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2015 listing WHOISGUARD Protected, WHOISGuard Inc. of Panama, as the Respondent. On October 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2015, the Registrar transmitted by email to the Center its verification response stating that the WhoIs record for the Domain Name indicates that Pascal Pengs of New York, New York, U.S., is the Respondent, and further confirmed that it had placed the Domain Name in Registrar Hold and Lock status per section 188.8.131.52 of ICANN's Registrar Accreditation Agreement (the "RAA") for the remainder of this proceeding. On October 30, 2015, the Center sent an email communication to the Complainant providing the registrant and contact information for the Domain Name and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 3, 2015, which identified Pascal Pengs as the Respondent.
Based on the above, the Center then 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint and the proceeding commenced on November 9, 2015. In accordance with paragraph 5(a) of the Rules, the due date for the Respondent to file a Response was November 29, 2015. The Respondent did not submit any response with respect to this proceeding. The Center notified the parties of the Respondent's default on November 30, 2015.
The Center appointed Marylee Jenkins as the sole panelist in this matter on December 15, 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 paragraph 7 of the Rules.
4. Factual Background
Based on the review of the uncontested evidence submitted along with searches of the trademark database provided by the U.K. Intellectual Property Office, the Panel determines that the Complainant is the owner of U.K. Trademark Registration No. 2,444,244 for the mark ACS registered on February 29, 2008, which covers services in international classes 35, 38, 41, and 42 ("Complainant's Mark"). The Complainant acquired the Complainant's Mark through its acquisition of Affiliated Computer Services, which had traded as "ACS" prior to the acquisition. ACS was a world leader in business process and document management and had been operating in the U.K. since 2005. One of ACS group companies is known by the trade name ACS Worldwide Lending Ltd., a company incorporated in England and Wales, with registration number 05,470,127 and a registered office in […] London, U.K. After the Complainant's acquisition of ACS, ACS Worldwide Lending Ltd., became a wholly owned subsidiary of the Complainant and was maintained as a "treasury" entity used to manage internal financial transactions between the Complainant's separate business entities.
The Domain Name was created on April 9, 2015. The Domain Name currently directs to a parked web page containing commercial advertising links related to business loans. The Complainant has provided uncontested evidence indicating that the Doman Name was previously used to host a website that purported to offer consumer and business loans through an entity identified as "ACS Worldwide Lending Limited".
5. Parties' Contentions
The Complainant states that it is a leader in the business world and is currently the world's leading enterprise for business process and document management offering global services from claims reimbursement and automated toll transaction to customer care centers and HR benefits management. The Complainant alleges that it acquired Affiliated Computer Services, which previously operated as "ACS," through an acquisition completed in 2010. As part of this acquisition of the ACS group of companies, the Complainant alleges that it received ownership of U.K. Trademark Registration No. 2,444,244 for the Complainant's Mark and any goodwill associated with the Complainant's Mark and the ACS brand. Prior to its acquisition, ACS had operated in the U.K. since at least as early as 2005 and is alleged to have built up substantial goodwill in the ACS brand during this time period. ACS's business activities are said to have included, among other things, back office document processing (i.e., mailroom, scanning of documents, extracting information from the documents to perform further tasks such as processing insurance claims, originate loans or service loan payments, etc.), and financial services (i.e., finance and accounting, accounts payable, collections). The Complainant alleges that ACS was structured as a group of companies, including ACS Worldwide Lending Ltd., a company incorporated in England and Wales, with registration number 05,470,127 and a registered office in […] London, U.K.
The Complainant has stated that following the acquisition, ACS Worldwide Lending Ltd., was reorganized as a wholly owned "treasury" entity used to conduct internal financial transactions between the Complainant's business entities, with no public-facing business. The Complainant asserts that it has generally phased out use of the ACS brand since the acquisition. However, the Complainant has indicated that it maintains at least one local subsidiary that continues to operate under the ACS brand, ACS Business Process Solutions Ltd., which has continuously operated in the U.K. since at least as early as 2009. The Complainant has provided evidence that this subsidiary has enjoyed a substantial annual turnover with revenues increasing each year since 2009. The most recent data provided by the Complainant indicates that this firm had annual gross revenue of GBP 43,674,000 in 2014. The Complainant alleges that this commercial success illustrates the valuable goodwill associated with the Complainant's Mark and family of companies, which are now wholly owned by the Complainant.
In addition to its ownership of U.K. Trademark Registration No. 2,444,244 for the Complainant's Mark, the Complainant asserts that it also possesses unregistered rights in the name ACS; the ACS Logo; and in the trading names of the ACS business entities, including ACS Business Process Solutions Limited, as part of its business activities in the U.K. Such rights are alleged to give the Complainant the right to prohibit the use of a subsequent mark or sign confusingly similar thereto, where the use thereof would give rise to a misrepresentation that the offering was from or was connected with the Complainant (i.e., to prevent passing off).
The Complainant alleges that the Respondent registered the Domain Name on or about April 9, 2015, which was well after the Complainant's registration and first use of the Complainant's Mark. The Complainant further alleges that the Domain Name wholly incorporates the Complainant's Mark and that the Respondent cannot defend against a finding of confusing similarity merely by adding generic or other non-distinctive terms to the Domain Name. The Complainant therefore alleges that the Respondent's Domain Name is confusingly similar to the Complainant's Mark in which the Complainant has rights.
The Complainant further alleges that the Respondent should be considered as having no rights or legitimate interests in respect to the Domain Name based on the Respondent not: (i) being commonly known by the Domain Name; (ii) having used or made demonstrable preparations to use the Domain Name for a bona fide purpose; (iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain; or (iv) having acquired any trademark or service mark rights therein by a way of a license to use the Complainant's Mark. Additionally, the Complainant has never authorized the Respondent to register or use the Domain Name or to manufacture or distribute goods or services for the Complainant. Thus, the Complainant alleges that there is no bona fide use of the Domain Name by the Respondent.
Additionally, the Complainant alleges that the Respondent has registered and is using the Domain Name in an intentional attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant's Mark and unregistered rights as to source, sponsorship, affiliation, or endorsement. In particular, the Complainant alleges that the Respondent has made available content at the Domain Name that fraudulently represents its activities as being provided by the wholly owned subsidiary of the Complainant, ACS Worldwide Lending Ltd, including the company name, the company registration number and registered office. In support, the Complainant has provided snapshots that allegedly show a website that was previously located at the Domain Name, which purported to offer consumer and business loans. This evidence indicates that the website contained multiple references to ACS Worldwide Lending Ltd., and listed contact information and a U.K. Company Registration Number associated with the Complainant's subsidiary. As further evidence of the alleged fraud, the Complainant has provided a letter received from the Financial Conduct Authority of the United Kingdom (the "FCA"), a governmental agency tasked with regulating consumer credit. This letter indicates that the FCA believed that the website previously located at the Domain Name was affiliated with or run by the Complainant's subsidiary, ACS Worldwide Lending Ltd. The Complainant has also provided evidence that at least one reputable third party financial news service had incorrectly reported that the Domain Name was affiliated with the Complainant, citing to a business profile published by Bloomberg News.
The Complainant further alleges that the Respondent is using the Domain Name in order to perpetrate "419" scams and other fraudulent activities for financial gain. For example, the Complainant has presented evidence that: (i) the Respondent's email address is listed in an online database that tracks addresses associated with 419 scams; and (2) the content, layout and WhoIs data associated with the Domain Name are substantially similar to content, layout and WhoIs data associated with several purportedly fraudulent finance and loan-related websites identified by the Complainant. The Complainant thus argues that the Respondent has registered and is using the Domain Name in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider 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 domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent's default as the Panel considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's Mark.
A review of the second-level domain "acsworldwideltd" of the Domain Name shows that it comprises the Complainant's Mark (i.e., the U.K. registered mark ACS) in its entirety followed by the term "worldwide" and the abbreviation for the word "limited" of "ltd". The second-level domain "acsworldwideltd" also consists of: (i) in whole, one of the Complainant's trade names, "ACS Worldwide Ltd."; and (ii) in part, one of the Complainant's subsidiaries' trade names, "ACS Worldwide Lending Ltd". Based on this review, it is apparent that the Respondent was aware of the Complainant's Mark along with its trade names when registering the Domain Name. Based on the presented evidence, the Panel finds that the Domain Name is at least confusingly similar to the Complainant's Mark, without requiring further analysis regarding the Complainant's trade names. Paragraph 4(a)(i) has therefore been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panel to be proven based on her evaluation of all of the evidence presented, can demonstrate the holder's rights to or legitimate interests in a domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent was using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services or that the Respondent has been commonly known, as an individual, business or otherwise by the Domain Name.
The uncontested evidence shows that the Complainant had well established rights in the Complainant's Mark and its trade names at the time of the Respondent's registration of the Domain Name and that the Respondent nevertheless registered the Domain Name. The prominent uses of the Complainant's Mark and trade names in the Domain Name as well as on the corresponding website at the Domain Name demonstrate attempts by the Respondent to mislead consumers for apparent financial gain. Coupled with the Complainant's uncontested evidence of the Respondent's fraudulent activities, fraudulent business registration number and contact information, the Panel does not find any rights or legitimate interests in the Domain Name by the Respondent. The Panel, therefore, concludes that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder's website 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 website or location or of a product or service on the holder's website or location.
Based upon the Complainant's submitted evidence, the Panel finds that the Respondent had knowledge of the Complainant's Mark and trade names when registering the Domain Name. This finding is clearly supported by the uncontested evidence showing that the Domain Name was registered well after the Complainant began uses of the Complainant's Mark and trade names. Furthermore, it is apparent that the Respondent had been using the Complainant's trade name, business registration number and address in furtherance of 419 scams as well as other fraudulent activities (e.g., purporting to offer illegal, unregulated loans). The Respondent was thus well aware of the Complainant's business, the Complainant's Mark, its trade names and its domain name.
The Panel therefore determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its online presence via the Domain Name thereby creating a likelihood of confusion with the Complainant's Mark and trade names as to the source, sponsorship, affiliation or endorsement thereof. Additionally, the Complainant has submitted evidence of the Respondent's bad faith by showing the Respondent's use of false contact information in the Domain Name registration. The Panel agrees that the Respondent's use of false contact information to conceal its identity so as to engage in fraudulent activities is additional proof of the Respondent's bad faith registration and use of the Domain Name. The Panel accordingly concludes that the Respondent registered and has been and is using the Domain Name in bad faith and that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <acsworldwideltd.com> be transferred to the Complainant.
Date: January 11, 2016