Accela, Inc. v jiangli

WIPO Case No. D2024-4098

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Accela, Inc. v. jiangli

Case No. D2024-4098

1. The Parties

Complainant is Accela, Inc., United States of America (“U.S.”), represented by Hanson Bridgett LLP, U.S.

Respondent is jiangli, China.

2. The Domain Name and Registrar

The Domain Name <aca-prodaccela.com> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2024. On October 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2024, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to Complainant on October 9, 2024, 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 October 14, 2024.

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 October 15, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2024. Respondent did not submit any response. Accordingly, the

Center notified Respondent’s default on November 5, 2024.

The Center appointed Marina Perraki as the sole panelist in this matter on November 12, 2024. 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

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4. Factual Background

Complainant is a software firm that has specialized in designing automated software, cloud-based platforms and related technology for state and local governments for over twenty years. Complainant works with U.S. city governments, has over 1,500 active developers, and provides digital government-service delivery to

more than 300 million citizens worldwide.

Complainant owns trademark registrations for ACCELA, including U.S. trademark registration No. 2875166, class 35.

Moreover, Complainant is the owner of the domain name <accela.com>, under which it keeps its main website. Furthermore, for many years, Complainant has used the subdomain <aca-prod.accela.com> as part of the functionality of its Citizens’ Access web application. Users access through the Complainant’s Citizens’ Access service in order to interact with local governments, including submitting repair requests and other requests for municipal services.

The Domain Name was registered on September 12, 2021, and leads to a pay-per-click (“PPC”) webpage
containing links to third parties’ pages, including competitors to Complainant. On September 16, 2024,
Complainant submitted a takedown request. Subsequently, access to the Domain Name was blocked. The

Domain Name currently leads to an inactive website.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the

Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the

Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant

has rights;

(ii) Respondent 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.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

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Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here, “aca”, “prod” and a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the
comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v.
Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,

WIPO Case No. D2002-0122).

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in the Domain Name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted

On the contrary, the Domain Name was used to host a parked page with PPC links. The Panel finds that it is not unlikely that Respondent received PPC fees from the linked websites and used the Domain Name for his own commercial gain. The use of a domain name to host a parked page comprising PPC links does not

represent a bona fide offering where such links mislead Internet users and trade off the complainant’s trademark (Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302; WIPO Overview 3.0, section 2.9).

Furthermore, there is no evidence on record giving rise to any rights or legitimate interests in the Domain
Name on the part of Respondent within the meaning of paragraphs 4(c)(ii) and 4(c)(iii) of the Policy.
In addition, the nature of the Domain Name, incorporating entirely Complainant’s trademark, carries a risk of
implied affiliation (WIPO Overview 3.0, section 2.5.1). All the more so, given that a functionality in one of
Complainant’s web applications, namely the Citizens’ Access application, through which citizens
communicate with local governments, uses the subdomain <aca-prod.accela.com> which differs from the

Domain Name in only one character, namely the “.” between the terms “prod” and “accela”.

The Panel finds the second element of the Policy has been established.

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C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Because the ACCELA mark had been used and registered before the Domain Name registration, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name.

Moreover, the inclusion of Complainant’s mark in the Domain Name, reinforces the notion that Respondent was aware of and intentionally targeted Complainant in an attempt to confuse Internet users who were expecting to find Complainant’s website. This also given that a functionality in one of Complainant’s web applications, namely the Citizens’ Access application, through which citizens communicate with local governments, used the subdomain <aca-prod.accela.com> which differs from the Domain Name by only one character, namely the “.” between the terms “prod” and “accela”.

As regards bad faith use, the Domain Name directed Internet users to a website displaying links to third-party sites, which suggests that, presumably, Respondent received PPC fees from the linked websites that were listed thereon. It has been recognized that such use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith (McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353; Volkswagen Aktiengesellschaft v. Robert Brodi, WIPO Case No. D2015-0299; SAP SE v. Domains by Proxy, LLC / Kamal Karmakar, WIPO Case No. D2016-2497; WIPO Overview 3.0, section 3.5). Furthermore, the links referred to Complainant or services offered by Complainant or similar ones, while they included websites of Complainant competitors.

This, in view of the finding that Respondent has no rights to or legitimate interests in the Domain Name, and in the circumstances of the case, affirms the bad faith (Aygaz Anonim Şirketi v. Arthur Cain, WIPO Case No. D2014-1206; WIPO Overview 3.0, section 3.1).

Last the Panel notes that an identically named Respondent “jiangli,” located in China has been the named respondent in two other WIPO cases, namely Taylor Wimpey Plc, and Taylor Wimpey Holdings Limited v. jiangli, WIPO Case No. D2024-1669 and Arnold Clark Automobiles Limited v. jiangli, WIPO Case No.

D2024-1233.

Under these circumstances and on this record, the Panel finds that Respondent has registered and is using the Domain Name name in bad faith.

The Panel finds that Complainant has established the third element 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 Domain Name <aca-prodaccela.com> be transferred to Complainant.

/Marina Perraki/
Marina Perraki
Sole Panelist
Date: November 26, 2024