The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America.
The Respondent is ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filled with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2013. On December 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2013, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint on December 20, 2013. The Complainant filed an amended Complaint on December 20, 2013.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDPR”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 24, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 16, 2014.
The Center appointed Mladen Vukmir as the sole panelist in this matter on February 3, 2014. 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 is a corporation organized under the laws of Ireland, with its principal place of business in Dublin, Ireland. As evidenced in Annexes B to the Complaint, the Complainant is the exclusive owner of the ACCENTURE trademarks registered in United States of America (USA) and in Australia, namely:
- ACCENTURE, USA No. 3,091,811, registered on May 16, 2006;
- ACCENTURE, USA No. 2,665,373, registered on December 24, 2002;
- ACCENTURE, USA No. 3,340,780, registered on November 20, 2007;
- ACCENTURE, USA No. 2,884,125, registered on September 14, 2004;
- ACCENTURE & Design, USA No. 3,862,419, registered on October 19, 2010;
- ACCENTURE, Australia No. 855248, registered on October 27, 2000;
- ACCENTURE & Design, Australia No. 874887, registered on May 7, 2001;
- ACCENTURE, Australia No. 894768, registered on November 12, 2001;
- ACCENTURE & Design, Australia No. 1013948, registered on February 24, 2004;
- ACCENTURE HIGH PERFORMANCE DELIVERED, Australia No. 1025651, registered on March 11, 2004;
- ACCENTURE & Design, Australia No. 1251485, registered on July 15, 2008;
- ACCENTURE TECHNOLOGY DELIVERED, Australia No. 1460212, registered on November 14, 2011;
- ACCENTURE CONSULTING DELIVERED, Australia No. 1460210, registered on November 14, 2011;
- ACCENTURE OUTSOURCING DELIVERED, Australia No. 1460211, registered on November 14, 2011.
The Complainant owns the domain name registered since August 30, 2000, as evidenced in Annex F to the Complaint.
The ACCENTURE mark has been recognized as leading global brand by brand consulting companies in the industry, and ranked under number 41 by the Interbrand’s 2013 Best Global Brands Report, as evidenced in Annex G to the Complaint.
According to the information contained in the WhoIs extract provided in Annex A to the Complaint, the disputed domain name was registered by the Respondent on September 16, 2013 and updated on December 16, 2013. The Respondent registered the disputed domain name anonymously using a proxy service. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
- The Complainant is an international business that provides management consulting, technology and outsourcing services since January 1, 2001, with 110 offices in 49 countries.
- Since January 1, 2001 the Complainant has extensively used and continues to use the ACCENTURE mark in connection with various services including management consulting, technology and outsourcing services. In order to help the trademark rights for the ACCENTURE mark, the Complainant owns more than 1,000 registrations in 152 countries for the mark ACCENTURE, ACCENTURE & Design, and many other marks incorporating the ACCENTURE brand, for variety of products and services, including consulting, technology and outsourcing services.
- The ACCENTURE mark has been heavily advertised by the Complainant in connection with various media and has been written about it in the press. Accordingly, in fiscal year 2009, the Complainant spent over USD77 million on global advertising including newspaper advertisements, magazine advertisements, sponsorship billboards, online advertisements and television advertisements. In fiscal year 2010 the total cost of global advertising of the ACCENTURE mark was USD67 million and in fiscal year 2011 it was USD66 million.
- The Complainant has relied on the Internet as a forum to promote and disseminate information regarding the various offerings under the ACCENTURE mark, including consulting, technology and outsourcing services.
- The ACCENTURE mark has been recognized as a leading global brand by reputable brand consulting companies in the industry and ranked under number 41 by the Interbrand’s 2013 Best Global Brands Report.
- As the result of the extensive use and promotion, 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 disputed domain name is confusingly similar to the Complainant’s ACCENTURE mark which mark is incorporated in the disputed domain name in its entirety. The Respondent’s addition of the generic top-level domain (gTLD) “.com” and the generic term “people” does nothing to meaningfully distinguish the disputed domain name from the Complainant’s ACCENTURE mark, but instead it actually increases the likelihood of confusion.
- The Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Respondent has made no bona fide offering of goods and services. Rather, the Respondent is using the disputed domain name to divert consumers, by click-through links, to third party websites. The Complainant has not licensed or otherwise permitted the Respondent to use its ACCENTURE mark, nor to apply for use or use any domain name incorporating its mark. The Respondent is not commonly known by the disputed domain name.
- The disputed domain name has been registered and is being used in bad faith, as the Respondent is intentionally attempting to attract users to its website by creating likelihood of confusion with the Complainant’s ACCENTURE mark. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Panel now proceeds to consider this matter on the merits in the light of the Complaint, the absence of a response, the Policy, the Rules, the Supplemental Rules and other applicable substantive law, pursuant to paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy provides that a complainant must prove, with respect to the domain name, each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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
Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Second Edition, (“WIPO Overview 2.0”)). In this case, the Panel determines that the Complainant has successfully established that it is the owner of a number of ACCCENTURE trademarks as listed under Section 4 Factual Background hereof, and by doing so, has demonstrated the existence of its registered rights in respect of the ACCENTURE mark.
Moreover, it is well established that the threshold test for confusing similarity under the Policy involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion (see paragraph 1.2, WIPO Overview 2.0).
The disputed domain name consists of three parts, of which the main part carrying the semantic load is identical to the Complainant’s ACCENTURE mark and is used in the disputed domain name in its entirety and without any modification. The remaining two parts are the generic term “people” and the applicable gTLD suffix “.com”.
Hence, it is evident that the Complainant’s ACCENTURE mark is clearly recognizable in the disputed domain name. Incidentally, this Panel finds that the Complainant has presented enough evidence showing that its ACCENTURE mark has been extensively used, including on the Internet, and can in fact be considered as well-known within the relevant Internet community. Moreover, as the Complainant appositely pointed out, the word “accenture” is not a descriptive or generic term, but rather a term coined by the Complainant, so consumers associate this term exclusively with the Complainant and its products owing to the international goodwill that the Complainant has developed in the ACCENTURE mark over the years.
Further, this Panel upholds the Complainant’s contention that the term “people” is clearly generic and descriptive, and that used by the Respondent in combination with the Complainant’s ACCENTURE mark in the disputed domain name is insufficient to prevent a finding of confusing similarity. Moreover, in this Panel’s view, adding said generic and descriptive word may, in fact, reinforce consumer confusion as to the connection between the Complainant’s ACCENTURE mark and the disputed domain name. As the Complainant asserts, it would be entirely reasonable for anyone seeking information regarding the Complainant and its global career and alumni opportunities, or for additional information regarding the Complainant’s employees or ex-employees, to access to disputed domain name.
Therefore, in this Panel’s view, it is safe to conclude that the Respondent clearly did not intend to distinguish the disputed domain name from the Complainant’s trademark by adding the generic term “people” to the Complainant’s ACCENTURE mark when creating the disputed domain name.
It should be noted, that prior UDRP panels have found confusing similarity in several earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a generic term. Confusing similarity was found in each instance because the term added was not powerful enough to overcome the strong mental association created by the trademark itself. See the generally adopted panel views under paragraph 1.9 of the WIPO Overview 2.0, and particularly, Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet Ltd.,WIPO Case No. D2000-0275; Société Air France v. R Blue,WIPO Case No. D2005-0290; SANOFI AVENTIS v. ProtectF/RegisterF,WIPO Case No. D2006-1272; F.Hoffmann-La Roche AG v. Avieltech Consultant,WIPO Case No. D2007-0930. Also, see the numerous UDRP decisions cited by the Complainant: Swarovski Aktiengesellschaft v. PrivacyP Domain Admin / Trade Out Investments Ltd,WIPO Case No. D2011-1522; Swarovski Aktiengesellschaft v. Christine Jil,WIPO Case No. D2011-0981; Swarovski Aktiengesellschaft v. liu ji,WIPO Case No. D2011-0353; Swarovski Aktiengesellschaft v. Marzena Marzena,WIPO Case No. D2011-0980; Swarovski Aktiengesellschaft v. shenglin fan,WIPO Case No. D2012-0170; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; Swarovski Aktiengesellschaft v. Zhang Yulin,WIPO Case No. D2009-0947; and See Siebel Systems, Inc v. Implementation Services Group, Inc., WIPO Case No. D2002-1070.
As for the applicable gTLD “.com” in the disputed domain name, it is a consensus view that it can usually be disregarded under the confusing similarity test (see paragraph 1.2 of the WIPO Overview 2.0).
For all the foregoing reasons, the Panel finds that the Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy, i.e. that the disputed domain name is confusingly similar to the Complainant’s ACCENTURE trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent](as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights or;
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDPR panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized in paragraph 2.1 of the WIPO Overview 2.0, whereby: “… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant”.
In accordance with the Policy and paragraph 3(b)(ix)(2) of the Rules, the Complainant must describe the grounds on which the Complaint is made, including, in particular, why the Respondent should be considered as having no rights or legitimate interests in respect of the disputed domain name that is the subject matter of the Complaint.
In the present case, the Complainant asserts that the Respondent has made no bona fide offering of goods and services, as it appears that the only use of the disputed domain name is to divert the consumers to third-party websites. The Complainant furthermore states that it has not licensed or otherwise permitted the Respondent to use its ACCENTURE mark, or to apply for or use any domain name incorporating the same mark. Also, the Complainant asserts that the Respondent has never been commonly known by the disputed domain name.
The Respondent failed to submit a response to the Complaint or give any explanation as to why the disputed domain name was chosen and registered.
After reviewing the evidence submitted by the Complainant, in the first place Annex M to the Complaint, and after having inspected the website operated under the disputed domain name, this Panel established that the Complainant’s assertions are correct and that the Respondent offers automatically generated sponsored links to third party websites, without any other actual content that would represent bona fide offering of goods and services. In this regard, this Panel finds that use of the domain name as a portal to third-parties’ websites does not constitute a bona fide offering of goods and services. See Canadian Tire Corporation, Limited v. Texas International Property Associates,WIPO Case No. D2007-1407; and Interflora, Inc. v. Whois Privacy Protection Service, Inc. NAF Claim No. 0796384.
Furthermore, the Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. Therefore, the Panel finds that there is no indication that the Respondent is known by the disputed domain name and finds that it does not have rights or legitimate interests over the disputed domain name, as defined in paragraph 4(c)(ii) of the Policy.
The Panel finally determines that there is no indication that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. To the contrary, in this Panel’s view, it can be safely concluded that the Respondent deliberately chose to include the Complainant’s ACCENTURE trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use. Especially taking into account that the term “Accenture” is not a generic term, but rather an original creation of the Complainant, and that therefore, it is not likely that the Respondent’s choice of words in the disputed domain name was random.
Given the above, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and in absence of any reply from the Respondent, has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(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 holder’s website or location or of a product or service on the holder’s website or location.
With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its ACCENTURE mark. On the contrary, the Complainant provided sufficient evidence to show that its ACCENTURE mark can be considered as well-known globally and vested with significant goodwill.
Therefore, it is safe for this Panel to assume that the Respondent must have been aware of the Complainant, its ACCENTURE mark and the Complainant’s business, and that it has registered the disputed domain name in order to trade on the renown of the Complainant’s trademarks and goodwill. In this Panel’s view, it cannot be denied that the word “Accenture” carries distinction, and given the above-described use of the disputed domain name by the Respondent, it is obvious that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or location or of a product or service on the Respondent’s website or location. Especially and as already stated earlier, taking into account that the term “Accenture” is not a generic term, but rather an original creation of the Complainant, it is not likely that the Respondent’s choice of words in the disputed domain name was random.
For the purpose of establishing whether the Respondent has registered and is using the disputed domain name in bad faith, this Panel also considered the fact that the Respondent registered the disputed domain name by using a proxy service. In this Panel’s view and in line with the general consensus view (see paragraph 3.9 of the WIPO Overview 2.0), use of privacy or proxy registration service is not in and of itself an indication of bad faith. However, taking into account the circumstances surrounding the present case and the afore-described use of the disputed domain name by the Respondent, this Panel is of the opinion that registration of the disputed domain name using the proxy service with the obvious purpose of concealment of the Respondent’s identity can be considered as a further indication of the Respondent’s bad faith.
Given the above, the Panel determines that the disputed domain name has been registered and is being used bad faith and that the Complainant fulfilled the third element under paragraph 4(a) 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 disputed domain name be transferred to the Complainant.
Mladen Vukmir
Sole Panelist
Date: February 17, 2014
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