WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sandbox Studio, LLC v. Privacy service provided by Withheld for Privacy ehf / Daniel Matthew, Deckers Brands
Case No. D2021-2654
1. The Parties
Complainant is Sandbox Studio, LLC, United States of America (“United States” or “U.S.”), represented by McDermott Will & Emery LLP, United States.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Daniel Matthew, Deckers Brands, United States.
2. The Domain Name and Registrar
The disputed domain name <creativedrive.careers> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. That same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. Also, on August 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 20, 2021.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2021.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 26, 2021. 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
Founded in 2015, Complainant, operating under the name CreativeDrive, is a global, tech-driven content production company that simplifies, automates, and scales the creative asset production process. In August 2020, Complainant was acquired by Accenture Global Solutions Limited, an international business that, since 2001, provides a broad range of services and solutions in strategy, consulting, digital, technology, and operations.
Complainant owns U.S. Trademark Registration No. 5,530,640 (registered July 31, 2018) for CREATIVEDRIVE (the “CREATIVEDRIVE Mark” or “Mark”). The Mark has been in use in commerce in relation to media and content production, photography, advertising, marketing and promotion, and related services since 2015. Complainant also owns the domain name <creativedrive.com>. That domain name is associated with Complainant’s website that, among other things, features a tab for “Careers”. When one clicks on the “Career” tab they are taken to a webpage with three other links for: “Freelance With Us”, “Join Our Global Team”, and “Internships”. If one clicks on the “Join Our Global Team” link, they are taken to a page with scores of job positions and descriptions and processes for applying for those jobs.
The Domain Name was registered on July 26, 2021. Currently, the Domain Name resolves to a page displaying an Internet browser error message stating “[t]his site can’t be reached.” Although the Domain Name is not used for an active website, the Complainant has provided evidence that Respondent has used the Domain Name to operate an email address, which has been used to impersonate an employee and HR hiring manager of Complainant to perpetuate a financial fraud/phishing scam. Specifically, Respondent solicited an individual with an offer of employment and entered into an exchange of email and “wire.com” correspondence with that individual. In those communications, Respondent fraudulently suggested he was a representative of Complainant, and collected personal and financial information from the applicant, including a payment of over USD 1,000 under the guise that Respondent was hiring the applicant for a job with Complainant. By way of exhibits in the record, those fraudulent communications between Respondent and the unwitting job candidate are shown, as well as copies of invoices for computer hardware sent by Respondent to the job candidate (with one such invoice totaling over USD 8,000), and copies of contracts and other documentation (e.g., a background check authorization form and a banking direct deposit form), bearing the CREATIVEDRIVE Mark and logo.
5. Parties’ Contentions
The Domain Name is comprised of, and is identical and confusingly similar to, the CREATIVEDRIVE Mark as well as the <creativedrive.com> domain name, and is likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Name. The Domain Name was registered on July 26, 2021, over six years after the first use of the CREATIVEDRIVE Mark, and notably, less than one year after Accenture’s August 2020 announcement of its acquisition of Complainant and the CREATIVEDRIVE trademark rights. The Mark is distinctive, consisting of a coined term and, as such, should be afforded a wide scope of protection, particularly in view of its association with the globally famous ACCENTURE brand. Adding a generic Top-Level Domain (“gTLD”) to the Domain Name is without legal significance. Here, because the Domain Name is being used by Respondent for a pay-to-pay employment phishing scam (as set out in more detail in the following sections herein), the use of the “.careers” gTLD is even more likely to suggest an affiliation with Complainant and to cause confusion amongst consumers, since the term “careers” makes reference to Respondent’s fraudulent use of the Domain Name and implies a connection to Complainant’s own careers and hiring department.
The CREATIVEDRIVE Mark is not a generic or descriptive term in which Respondent might have an interest. It has acquired secondary meaning through substantial, continuous, and exclusive use of the mark in connection with tech-enabled production services through use by Complainant. Respondent is neither affiliated with, nor has it been licensed or permitted to use the CREATIVEDRIVE Mark or any domain names incorporating the Mark. The registrant of the Domain Name is (partially) redacted but, according to the registrant information provided by the Registrar, Respondent is identified as Daniel Matthew, Deckers Brands. Thus, Respondent is not commonly known by the Domain Name, nor were they known as such before the date on which Respondent registered the Domain Name. As such, it appears that Respondent has chosen to use Complainant’s CREATIVEDRIVE Mark as its Domain Name to create a direct affiliation with Complainant, Accenture, and their affiliated businesses. Respondent is not using the Domain Name for any purpose at this time. Instead, the Domain Name resolves to a page displaying an Internet browser error message stating “[t]his site can’t be reached”. The inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent’s failure to use the Domain Name to provide a bona fide offering of goods and services confirms that it does not have any rights or legitimate interests in the Domain Name, particularly because Complainant has proven its rights in the Mark.
Furthermore, Respondent is not making a legitimate, noncommercial or fair use of the Domain Name because, as described above, it appears that Respondent has chosen the Domain Name to trade off the reputation and goodwill associated with the Mark, to cause confusion amongst Internet users and job seekers to perpetuate an employment fraud/phishing scam, and to prevent Complainant from owning the Domain Name.
Respondent had constructive notice that the CREATIVEDRIVE Mark was a registered trademark in the United States. Given Accenture’s worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks, the growing reputation of the CREATIVEDRIVE brand in the U.S. and beyond, and Accenture’s well-publicized acquisition of the CREATIVEDRIVE business, as well as Respondent’s use of the CREATIVEDRIVE Mark to perpetuate commercial fraud, it is clear that Respondent was aware of the ACCENTURE and CREATIVEDRIVE trademarks before registering the Domain Name.
Respondent has held the Domain Name for nearly one month, and has not used it for any legitimate purpose. The passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate Internet purpose, may indicate that the domain name is being used in bad faith under the Policy. Here, Complainant has demonstrated that the CREATIVEDRIVE Mark is distinctive and recognizable, and it is highly unlikely that Respondent registered the Domain Name independently for its own purposes, especially given Respondent’s fraudulent use of the Domain Name to trade on the CREATIVEDRIVE Mark and ACCENTURE trademark. A high degree of renown attaches to the Mark as a result of its highly sophisticated service offerings and its acquisition by Accenture, such that it is implausible for Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of the Mark. Furthermore, Respondent’s identity has been obscured via a privacy service. Respondent’s failure to use the Domain Name for a legitimate purpose is evidence of bad faith registration and use of the Domain Name.
More importantly, Respondent’s use of the Domain Name for a corresponding email address to create a false association with Complainant and to perpetuate a phishing scam under the guise of an offer of employment with Complainant constitutes bad faith pursuant to Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the CREATIVEDRIVE Mark by virtue of the aforementioned United States trademark registration.
The Domain Name incorporates in its entirety Complainant’s CREATIVEDRIVE Mark. Where a domain name incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See Berlitz Investment Corporation v. Marcus Santamaria, WIPO Case No. D2006-1082.
Adding the gTLD “.careers” after the Mark does not prevent a finding of confusing similarity. See Medtronic, Inc. v. Rafael Vargas, WIPO Case No. D2019-0203 (finding the domain name <medtronic.care> identical to the MEDTRONIC mark); International Business Machines Corporation v. WhoisGuard Protected / WhoisGuard, Inc. / Theo Nguyen, WIPO Case No. D2018-1129 (finding the domain name <ibm-global.services> identical or confusingly similar to the IBM mark); LPG Systems v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0565 (finding the “.care” extension does not have distinctive character, and the addition of this term “is not sufficient to escape the finding that the disputed domain names [including <lpg.care>] are identical to Complainant’s trademark”).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Complainant maintains: (1) the CREATIVEDRIVE Mark is not a generic or descriptive term in which Respondent might have an interest, noting also that it has acquired secondary meaning through substantial, continuous, and exclusive use; (2) Respondent is not affiliated with Complainant, nor has Complainant licensed or otherwise permitted Respondent to use the CREATIVEDRIVE Mark or any domain names incorporating the Mark; (3) the Registrar has identified Respondent as Daniel Matthew, Deckers Brands, and so Respondent is not commonly known by the Domain Name, nor was he known as such before the date on which Respondent registered the Domain Name; (4) although, as mentioned above, Respondent is not using the Domain Name in conjunction with an active website, the inactive holding of the Domain Name incorporating a mark in which Complainant has established rights is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use; and (5) as described above, it appears that Respondent has chosen the Domain Name to trade off the reputation and goodwill associated with the Mark, to cause confusion amongst Internet users and job seekers to perpetuate an employment fraud/phishing scam, and to prevent Complainant from owning the Domain Name.
Where, as here, Complainant has raised a prime facie case of Respondent’s lack of any rights or legitimate interests in the Domain Name, and Respondent has failed to rebut that presumption, the Panel is satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Respondent registered and has been using a Domain Name that is identical to the CREATIVEDRIVE Mark. When Respondent registered the Domain Name on July 26, 2021, Complainant had been using the Mark since 2015. In press releases made of record, Complainant is described as a “global, tech-driven content production company” that has “built a global network of on-premise content studios designed for fast and flexible creative asset production across all format types”. Complainant is also described in those press releases as “[h]eadquartered in New York City, with additional locations across the U.S., Australia, Brazil, China, Costa Rica, Singapore, South Africa, and the U.K.” and employing “approximately 700 employees”. Before Respondent registered the Domain Name, that same press coverage announced that Accenture acquired Complainant in August 2020. It is not clear whether Respondent learned about Complainant or the CREATIVEDRIVE Mark before or after the Accenture acquisition of Complainant, which might have increased the profile of Complainant and the Mark. What is clear is that it is highly likely Respondent was aware of the Mark when it registered the Domain Name because: (1) Respondent has not shown that he has any rights or legitimate interests in the Domain Name; (2) Respondent registered a Domain Name that is exactly the same as Complainant’s registered Mark with the gTLD “.careers”, which particular gTLD reflects an aspect of Complainant’s business as advertised on its website of hiring talented and creative individuals on a fulltime or freelance basis; and (3) Respondent is using the Domain Name to operate an email address in a fraudulent employment phishing scam (as set out above). On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name in bad faith.
There is no plausible reason for Respondent’s selection of a Domain Name that is identical to the CREATIVEDRIVE Mark, in which Respondent has no rights or legitimate interests, other than as a deliberate attempt to profit unfairly from confusion with the Mark. See, Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273. Furthermore, the evidence in the record provided by Complainant shows that Respondent has been using the Mark for the above-described fraudulent purpose which it appears Respondent has benefitted from or could have benefitted from financially. Despite the fact that the Domain Name has yet to resolve to an active website, Respondent’s use of the Domain Name as an email address in the fraudulent scheme supports a finding of bad faith use within the meaning of the Policy. Furthermore, Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use, affirm the Panel’s conclusion that Respondent’s use of the Domain Name is in bad faith.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <creativedrive.careers> be transferred to Complainant.
Harrie R. Samaras
Date: October 6, 2021