WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intacct Corporation v. Mark John
Case No. D2018-1134
1. The Parties
Complainant is Intacct Corporation of San Jose, California, United States of America (“United States”), represented by SILKA Law AB, Sweden.
Respondent is Mark John of Key West, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <intaacct.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 May 19, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the registrant’s contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 29, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 18, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 20, 2018.
The Center appointed Michael A. Albert as the sole panelist in this matter on July 6, 2018. 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
Complainant is headquartered in San Jose, California and serves thousands of businesses in North America. Complainant develops accounting and financial management software solutions and provides general ledger, cash management, revenue recognition, inventory, purchasing, vendor management, financial consolidation, and financial reporting systems services.
Complainant owns two United States federal registrations for the mark INTACCT. The first registration issued on July 17, 2001 and is for a service mark for “electronically updating and organizing the accounting records of businesses and individuals” and “electronic storage of the accounting records of businesses and individuals.” The second registration issued on October 2, 2012 and is for a service mark for “business consulting services in the field of financial management” and “providing temporary use of on-line nondownloadable computer software for financial management and accounting to store, manage, track, analyze and report financial information in order to streamline financial processes, gain greater financial visibility and establish strong financial controls.” Complainant, although currently operating under the name Sage Intacct, owns such trademarks under its initial name, the Intacct Corporation.
The disputed domain name <intaacct.com> was initially registered under the privacy service VistaPrint Technologies Ltd and expired in 2016. Since January 25, 2018, Respondent has held the disputed domain name. The disputed domain name does not resolve to an active website.
5. Parties’ Contentions
First, Complainant contends that the disputed domain name is confusingly similar to its registered trademarks, INTACCT. More specifically, Complainant argues that the disputed domain name is a “typovariation” of Complainant’s INTACCT marks, created “merely by adding the letter a.” Complainant adds that the inclusion of the generic Top-Level Domain (“gTLD”) “.com” does not add distinctiveness to the disputed domain name.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name. Nor has Respondent demonstrated that it uses, or has prepared to use, the disputed domain name in connection with a bona fide offering of goods and services. Complainant also points out that an Internet search for “INTACCT” results in links to Complainant’s official website. Had Respondent completed a simple search of the term, Complainant argues, he would have quickly learned that the term is owned by Complainant (and has been owned by Complainant for a significant period). Respondent, Complainant argues, has frequently and knowingly incorporated prominent trademarks into domain names for his commercial benefit. Complainant cites as evidence the following domain names registered to Respondent that incorporate wellknown trademarks: <akzonobbel.com> (AKZO NOBEL), <adeccoogroup.com> (ADECCO), <mcllaren.com> (MACLAREN), and <hyaytt.com> (HYATT). Respondent has targeted such brands, Complainant explains, because “traffic capture, phishing,” or his sale of such domain names would benefit him financially.
Lastly, Complainant contends that Respondent registered and has used the disputed domain name in bad faith. Complainant argues that Respondent was aware that Complainant holds rights in the trademark INTACCT. Respondent was also aware, Complainant adds, that the similarity of the disputed domain name to that of Complainant’s name and trademarks would lead Internet users to mistakenly associate Respondent’s disputed domain name and website with Complainant. In essence, Complainant argues that the disputed domain name is passively held by Respondent in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in the INTACCT mark through its registration and continued use.
The disputed domain name is confusingly similar to Complainant’s marks. It is visually and phonetically similar and almost identical to Complainant’s INTACCT marks. Respondent merely added the letter “a” to Complainant’s mark. A domain name that contains a common or obvious misspelling of a trademark (often termed “typosquatting”) is confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. See Hogan Lovells International LLP v. Proxy Protection LLC, WIPO Case No. D2017-0921. Moreover, domain names that incorporate the entirety of a trademark are typically considered confusingly similar for the purposes of UDRP standing. See Covance, Inc. and Covance Laboratories Ltd. v. The Covance Campaign, WIPO Case No. D2004-0206 (holding that adding a descriptive word to the end of the complainant’s trademark did not avoid confusing similarity); SoftCom Technology Consulting Inc. v. Olariu Romeo/Orv Fin Group S.L., WIPO Case No. D2008-0792 (finding that adding a descriptive word to the end of the complainant’s mark did not avoid confusing similarity, and holding that when a disputed domain name incorporates a distinctive mark in its entirety, there is sufficient similarity to render it confusingly similar).
Furthermore, the addition of the gTLD extension “.com” may be disregarded for the purpose of comparison under the first element.
Accordingly, the Panel finds Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
As noted above, Complainant’s rights in its INTACCT marks are clearly established by their registration and continued use. Respondent’s registration of the disputed domain name was several years after Complainant registered the INTACCT marks and became well-known. Complainant has alleged that Respondent has not been and is not commonly known by the disputed domain name, that Respondent has not used the disputed domain name in connection with a bona fide offering of goods or a legitimate noncommercial use, and that there is no relationship between the Parties that would grant Respondent rights in the disputed domain name. Respondent has not replied, thus failing to point to any evidence demonstrating otherwise and not meeting his burden of production. See Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203 (holding that once a complainant has made a prima facie case that the respondent lacks rights or legitimate interests through allegations or evidence, the respondent’s failure to respond is generally considered a failure to meet its burden of production).
Accordingly, the Panel finds Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Complainant’s INTACCT marks are well known. Complainant has built a prominent online presence by maintaining an active website and various social media accounts, all of which display the INTACCT name and are easily found by a simple Internet for the term “intacct”. Complainant’s company name is also featured on popular websites such as “www.glassdoor.com” and “www.pcmag.com”.
The Panel finds it highly implausible that Respondent registered the disputed domain name unaware of Complainant’s rights and reputation. The similarity between the disputed domain name and Complainant’s well-known marks makes it unlikely that Respondent’s registration of a confusingly similar disputed domain name was anything other than an intentional effort to capitalize on, or otherwise take advantage of, the likely confusion with Complainant’s trademark rights. Respondent’s documented history of registering domain names which bear striking similarity to popular trademarks further eliminates any doubt as to his bad faith registration and use of the disputed domain name. See Rolls-Royce PLC v. Ragnar Kallaste, WIPO Case No. D2014-2218 (holding that where respondent engaged in a pattern of registering domain names corresponding to well-known marks, there was evidence of bad faith under paragraph 4(b) of the Policy); Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (finding bad faith where respondent engaged in a pattern of depriving trademark owners of the ability to register domain names reflecting their marks).
Noting that the disputed domain name does not resolve to any active website, the Panel accepts Complainant’s argument that the disputed domain name is passively held in bad faith. The Panel cannot conceive of any good faith use to which the disputed domain name could be put by Respondent, who, as noted above, appears to be engaged in a trademark-abusive pattern of domain name registration.
Accordingly, based on the record, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Panel also finds that Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 name <intaacct.com> be transferred to Complainant.
Michael A. Albert
Date: July 18, 2018