WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. VistaPrint Technologies Ltd
Case No. D2015-1922
1. The Parties
The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America ("United States").
The Respondent is VistaPrint Technologies Ltd of Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <accentture.net> is registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2015. On October 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.
The Center verified that 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 11, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 1, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 2, 2015.
The Center appointed William P. Knight as the sole panelist in this matter on December 28, 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 and its related corporations commenced trading under the name "ACCENTURE" on January 1, 2001 and is the registered proprietor, inter alia, of the following United States Trademarks:
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42
May 16, 2006
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42
December 24, 2002
Various goods in Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28
November 20, 2007
Various goods in Classes, 18, 25 and 28
September 14, 2004
ACCENTURE & Design
Various services in Classes 35 and 36
October 19, 2010
The Complainant also has numerous registrations of trademarks being or incorporating ACCENTURE in many countries in the world. Among the services in respect of which the Complainant's trademark ACCENTURE is registered are services relating to website design and hosting and related business consulting services.
The Complainant's related corporations trade in numerous countries and its brand ACCENTURE has a global reputation and goodwill.
The Complainant also owns and operates a website at "www.accenture.com" to which another of its domain names, <accenture.net>, resolves.
The disputed domain name <accentture.net> was registered on July 23, 2015 and is directed to a single page which, in addition to the words "Vistaprint" and "Make an impression", states only:
"Websites are FREE at vistaprint.com/websites.
Create Your Website in Minutes
Grow your business with an online presence
Coordinate your brand-online and offline
No programming skills needed."
The Respondent has been the recipient of numerous complaints under the Policy and other domain name dispute resolution policies, to date some 24 complaints determined through the Center, over half of which were lodged and decided in 2015, and some 21 through the National Arbitration Forum, in respect of domain names incorporating well-known trademarks of a wide variety of enterprises, from a major automobile manufacturer to financial institutions and even a university. In all cases, bad faith registration and use has been found and the disputed domain names transferred.
5. Parties' Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the disputed domain name is confusingly similar to the Complainant's trademark ACCENTURE;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) that the disputed domain name has been registered and is being used in bad faith.
In respect of paragraph 4(a)(i), the Complainant dilates upon the matters referred to above and provides substantial supporting evidence to establish that the ACCENTURE mark has become distinctive and well-known globally and has enjoyed such distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name. The Complainant further asserts that the disputed domain name is confusingly similar to the Complainant's ACCENTURE mark in that it differs only in the addition of an extra letter "t" in such a way that is insufficient to distinguish the disputed domain name materially from the Complainant's trademark. The Complainant says this is just "typosquatting", the use of a common mis‑spelling of a trademark by those using the Internet in search of the Complainant in order to divert such Internet users to competing services.
In support of paragraph 4(a)(ii), the Complainant contends that:
(a) the disputed domain name is not being used for any purpose other than to direct inquiries to the Respondent's business;
(b) the great number of domain name complaints against the Respondent would indicate that it has no more connection to the name "accentture" than it does to the Ford Motor Company or Bloomberg; and
(c) there is nothing in the name or other details of the Respondent to indicate that it is known by or uses "Accentture" as a trademark or otherwise for any purpose.
The Complainant also notes that the Respondent is not licensed or authorized by the Complainant to use the disputed domain name.
In support of paragraph 4(a)(iii), the Complainant asserts that bad faith is evidenced by the Respondent's use of the disputed domain name with the intention of attempting to attract, for commercial gain, Internet users to the Respondent's website or other on-line location, by creating a likelihood of confusion with the Complainant's globally well-known trademark, of which there could be no doubt that the Respondent was aware, as to the source, sponsorship, affiliation or endorsement of the Respondent's website or location or of a product on the Respondent's website or location (see paragraph 4(b)(iv) of the Policy).
The Complainant cites Tumblr, Inc. v. Jingsheng Feng, WIPO Case No. D2013-0454 in support of the contention that blatant "typosquatting" may act as strong evidence of bad faith and says that this is such a case.
The Complainant also relies on the Respondent's long history of bad faith use and registration of domain names, as shown by the decisions against it referred to above.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to it, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established its trademark rights in its mark ACCENTURE.
The determination of confusing similarity is a factual one which must be satisfied by the Panel making a side-by-side comparison of the Complainant's trademark and the disputed domain name, taking into account the degree of aural, visual, or conceptual similarity between the two, the similarity of the goods and services for which they are used and the inherent or acquired distinctiveness of the Complainant's trademark. The Policy does not call for proof of actual confusion.
Placed side-by-side, the confusing similarity between the Complainant's trademark and the disputed domain name is self-evident. The common experience of mis-typing an entry using a keyboard, especially when trying to type from memory a word which is invented, leads the Panel inexorably to the conclusion that it would be an easy and very likely mistake for users of browser software to type in a similar but incorrect address, such as the disputed domain name, if seeking <accenture.net>, which is one of the Complainant's domain names. Given the notoriety of the Complainant's name, many Internet users may well enter a domain name they believe the Complainant may have and by-pass use of a search engine.
B. Rights or Legitimate Interests
The Respondent clearly has no legitimate interests in disputed domain name, any more than it had in the dozens of other trademarks of third parties it has appropriated for its own purposes, in order to attract Internet users to itself and to the services it supposedly offers, in this case services which directly compete with services offered by the Complainant.
C. Registered and Used in Bad Faith
There can be no doubt that the Respondent registered the disputed domain name and is using it to attract, for commercial gain, Internet users to its website. The evidence also establishes the Respondent must have been aware of the Complainant's rights at the time of registration; indeed, those rights are the reason for having chosen the disputed domain name for typosquatting purposes.
Such conduct qualifies as "bad faith" within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel therefore concludes that the Respondent registered and is using the disputed domain name in bad faith.
In the light of the findings in Section 6 above, the Panel concludes that:
- the disputed domain name <accentture.net> is confusingly similar to the trademark ACCENTURE of the Complainant;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the disputed domain name <accentture.net> be transferred to the Complainant, Accenture Global Services Limited, in accordance with paragraph 4(i) of the Policy.
William P. Knight
Date: December 30, 2015