The Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is Shivani Sharma of Melbourne, Victoria, Australia, represented by Jasbir Singh, India. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2015. The Center notified the Respondent’s default on May 8, 2015. A late Response was filed with the Center on May 13, 2015. The Respondent’s advisor sent a further response on May 27, 2015, offering to transfer the Domain Name for USD 3000. The Center proposed a suspension of proceedings in order for the Parties to settle the case amicably. However, no settlement was concluded and the proceedings were continued.
The Center appointed Isabel Davies as the sole panelist in this matter on June 1, 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 registered their domain name on August 30, 2000.
The Respondent registered the Domain Name on December 3, 2014.
On October 6, 2000 the Complainant filed a trademark application in the United States of America for ACCENTURE in classes 9, 16, 35, 36, 37, 41 and 42 and these were registered on December 24, 2002.
The Complainant owns trade mark registrations in 152 countries dating from 2000 including Australia, which is the Respondent’s home country. 5. Parties’ Contentions A. Complainant The Domain Name is confusingly similar to the ACCENTURE Mark
The Complainant states that the Domain Name incorporates, in its entirety, the Complainant’s well-known ACCENTURE mark. The only difference between the Domain Name and the Complainant’s ACCENTURE mark is the addition of the descriptive term “world,” which is a geographical indicator and synonymous with the term “global” which appears in the Complainant’s corporate name, Accenture Global Services Ltd.
It states further that the ACCENTURE Mark is distinctive and well-known. It refers to Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that the Complainant demonstrated that its ACCENTURE mark has been extensively used, is well-known globally, is vested with significant goodwill and carries distinction). The ACCENTURE Mark consists of a coined term and, as such, should be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand (as demonstrated by the heavy advertising presence worldwide). The Complainant states that it has invested heavily in global advertising and has been recognized as a top ranking company with many awards for its business, products and services provided under the ACCENTURE Mark. The Complainant refers to Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that the word “accenture” is not a descriptive or generic term but, rather, was coined by Complainant, so consumers associate this term exclusively with Complainant and its products and services owing to the international goodwill that Complainant has developed in the ACCENTURE mark over the years).
The Complainant argues that the addition of a generic Top-Level Domain (gTLD) is completely without legal significance and the addition of the geographical indicator “world” does not lessen the likelihood of confusion between the Domain Name and the Complainant’s ACCENTURE Mark. Rather, the addition of the term merely exacerbates the likelihood of confusion between the Domain Name and the Complainant’s ACCENTURE Mark because the term “world” suggests a valid domain extension and geographical indicator that describes the Complainant’s worldwide product and service offerings.
Moreover, it contends, the addition of the generic and/or descriptive terms “world” does not lessen the likelihood of confusion between the Domain Name and the Complainant’s ACCENTURE Mark. Rather, the addition of this term merely exacerbates the likelihood of confusion between the Domain Name and the Complainant’s ACCENTURE Mark because the Complainant owns more than 1,000 trademark registrations for the ACCENTURE Mark in 152 countries across the world. Thus, use of the descriptive term “world” in the Domain Name will only add to the confusion in the mind of Internet users as to whether the Domain Name is associated with the Complainant.
The Complainant refers to Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that the addition of the generic and descriptive word “people” to the domain name may in fact reinforce consumer confusion as to the connection between the Complainant’s ACCENTURE mark and the disputed domain name)
It contends that it would be entirely reasonable for anyone seeking information regarding the Complainant’s services to access the Domain Name.
Finally, it contends that, in assessing a likelihood of confusion between a registrant’s domain name and a complainant’s mark, “points of similarity are weighed more heavily than points of difference.” And refers to Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219 and Accenture Global Services Limited v. Whois Privacy Protection Service, Inc./Robert Green,WIPO Case No. D2013-2100 (finding the domain name confusingly similar to Complainant’s ACCENTURE mark and finding that the addition of “UK” is purely descriptive and does not distinguish the domain name from the trademark). It says that the Complainant is a large-scale company operating on a world-wide basis and, therefore, juxtaposing the term “world” with the Complainant’s ACCENTURE mark will cause people to believe that the Domain Name is a reference to the Complainant and/or its global products and services, further exacerbating the likelihood of confusion.
In this case, the Complainant complains, the Respondent has incorporated the Complainant’s registered ACCENTURE mark in its entirety into the Domain Name. Respondent’s addition of the descriptive term “world” not only does nothing to meaningfully distinguish the Domain Name from the Complainant’s ACCENTURE mark, it actually exacerbates the likelihood of confusion. As such, Internet users are very likely to be confused as to whether an association exists between the Domain Name and the Complainant. Respondent has no legitimate interests in the Domain Name
The Complainant contends that, consistent with paragraph 4(c) of the Policy, a respondent can demonstrate a legitimate interest in a domain name by proving one of the following: (i) that before notice of the dispute, it had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; (ii) it is commonly known by the domain name; or (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademarks of another. The Respondent in this case, the Complainant avers, can demonstrate none of these criteria and, therefore, has no legitimate interest in the Domain Name.
The Complainant states that the Respondent has made no bona fide offering of goods or services. It states that the Respondent previously operated a website at the Domain Name advertising a company called ACCENTURE WORLD which claimed to offer IT outsourcing services that were nearly identical to the Complainant’s IT outsourcing services. A screenshot of Respondent’s previous “About Our Company” webpage at the Domain Name is annexed to the Complaint. Despite the fact that this was the Respondent’s purported website, its “Contact Us” page listed the email address “[...]@” an email address associated with the Complainant.
The Respondent, the Complainant states, subsequently directed the Domain Name to a parked page, which includes a link stating: “BUY THIS DOMAIN The domain may be for sale by its owner!” A screenshot of the parked page displayed at the Domain Name as of the filing date of this Complaint is annexed to the Complaint. Clicking on this link automatically redirects to a website wherein the Domain Name is offered for sale for £10,000. A copy of the screenshot for the webpage offering the Domain Name for sale for £10,000 is annexed to the Complaint.
The Complainant contends that the Respondent has made no bona fide offering of goods or services. It states that it has not licensed or otherwise permitted Respondent to use its ACCENTURE Mark, or to apply for or use any domain name incorporating the mark.
The Complainant states that term “accenture” is an invented word that has achieved significant worldwide recognition and, as such, is not a term that a domain name registrant would legitimately choose unless seeking to create an impression of an association with the Complainant. It refers to the case of Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that the term “Accenture” is not a generic term, but rather an original creation of Complainant and, therefore, it is not likely that the respondent’s choice of words in the disputed domain name was random). Indeed, the Complainant avers, Respondent’s use of the Complainant’s email address at its previous “Contact Us” page demonstrates that the Respondent registered the Domain Name in an attempt to create an impression that it is associated with the Complainant.
In summary, the Complainant contends, there is no indication that the Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain. Instead, the Respondent deliberately chose to include the Complainant’s ACCENTURE mark in the Domain Name and in email addresses on its website in order to achieve commercial gain by misleadingly diverting consumers and refers again to Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that the respondent deliberately chose to include the ACCENTURE mark in the domain name in order to achieve commercial gain by diverting consumers in a misleading way). It is submitted that the Respondent has no legitimate interest in the Domain Name, in view of the Complainant’s prior statutory and common law rights in the ACCENTURE Mark and the arguments which the Complainant has made. Respondent registered and is using the Domain Name in bad faith
The Complainant refers to the Policy (paragraph 4(b)(iv)) which establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt 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 mark as to source, sponsorship, affiliation or endorsement of the respondent’s website or location, or of a product or service on the respondent’s website or location.
The Complainant states that the Respondent had constructive notice that the ACCENTURE Mark was a registered trademark in the United States, Australia and many other jurisdictions worldwide.
Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE Mark on the Internet, the Respondent was or should have been aware of the ACCENTURE Mark long prior to registering the Domain Name. The Complainant again refers to Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was not aware of Complainant and its ACCENTURE mark at the time the disputed domain name was registered, as Complainant demonstrated that its mark is well-known globally and is vested with significant goodwill). In fact, the Respondent’s use of an email address associated with the Complainant demonstrates that the Respondent was aware of the Complainant.
The Complainant avers that it appears that the Respondent did not register the Domain Name to actually offer services but, instead, registered and is using the Domain Name for the bad-faith purpose of intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s ACCENTURE Mark.
Even if the Respondent intended or intends to offer services under the ACCENTURE Mark, use of a business name that incorporates another’s trademark demonstrates that a registrant acted in bad faith in registering a domain name. ALDI GmbH & Co. KG v. ALDI Einkauf GmbH,WIPO Case No. D2012-1594 (finding that a respondent acted in bad faith by using a corporate name and domain name that incorporated another’s trademark). The Respondent adopted the name ACCENTURE WORLD as part of the Domain Name in a bad-faith attempt to appear associated or affiliated with the Complainant, as is shown by its use of an email address associated with the Complainant.
The Complainant contends that the Respondent registered the Domain Name, in part, to sell the Domain Name to the Complainant or its competitors and refers to Société Nationale des Chemins de Fer Français, SNCF v. Elitebase,WIPO Case No. D2010-2179 (finding that an offer to buy a domain name posted at the domain name’s parked page supports a finding of bad faith use and registration). The Respondent has posted an offer to sell the Domain Name at its website for £10,000, demonstrating her intent to sell the Domain Name to the Complainant or its competitors. The Respondent’s lawyer has offered to sell the Domain Name to the Complainant for “USD 3000 which is the cost of purchase of the domain, credit card deductions, counsel fee etc”. The Complainant has responded stating that the offer “appears to exceed your client’s out-of-pocket costs and has not been supported by receipts, invoices or other documentation”.
The Complainant contends that is no reasonable explanation for Respondent’s selection of the Domain Name other than that the Respondent was intentionally attempting to trade off of the goodwill which the Complainant has established in its ACCENTURE Mark and refers again to Accenture Global Services Limited v. Whois Privacy Protection Service, Inc./Robert Green,WIPO Case No. D2013-2100 (where given the goodwill Complainant established in its ACCENTURE mark, the Panel could not conceive of any good-faith use of the disputed domain name by the respondent).
The Complainant submits that the Respondent is intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant’s ACCENTURE Mark and, therefore, has acted in bad faith. B. Respondent
The Respondent failed to respond the Complaint by May 6, 2015. A reply was sent to the Center on May 13, 2015, by a lawyer representing the Respondent stating that the Domain Name was not used for any work relating to the Complainant and will not use it in future in any manner. The Reply states that “the Respondent purchased the Domain Name so is having every right to sell the same and offered it for sale but that the Complainant’s lawyers obstructed the said sale”.
“That now my client has no concern with the domain name in question and release all her right over the same and Accenture Global Services Ltd is fully competent to retain the domain name in question and my client is ready to fulfill any formalities for the same, if the Company is ready to get return the amount deducted from the credit card of my client, without any information and also to pay the purchase amount to my client.”
On May 27, 2015 the Respondent’s advisor following the Center’s communication inviting a suspension for settlement talks replied:
“It is brought to your notice that my client is agree to transfer the domain name in question in your favour for USD 3000 which is the cost of purchase of the domain, credit card deductions, counsel fee etc. My client is ready to fulfill any formalities in this regard.” 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel accepts that the Complainant’s trade mark ACCENTURE is distinctive and widely known in the light of the very substantial use and promotion of the trade mark in connection with the Complainant’s business since 2001. The Complainant’s business has been recognized as a leading global brand. The Panel accepts that the Complainant has a very extensive portfolio of trade marks applied for since 2000 in 152 countries.
The Panel accepts that the Domain Name incorporates, in its entirety, the Complainant’s widely known ACCENTURE mark. The only difference between the Domain Name and the Complainant’s ACCENTURE mark is the addition of the descriptive term “world,” which is a geographical indicator and synonymous with the term GLOBAL which appears in the Complainant’s corporate name, ACCENTURE GLOBAL SERVICES LTD.
Further, the Panel accepts that the ACCENTURE Mark is distinctive and widely known as was previously found in Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098. The addition of a gTLD is “completely without legal significance” as stated in PepsiCo, Inc. v. PEPSI, SRL and EMS Computer Industry,WIPO Case No. D2003-0696.
The Panel accepts that the addition of the geographical indicator “WORLD” does not lessen the likelihood of confusion between the Domain Name and Complainant’s ACCENTURE Mark as was also decided in J. Choo Limited v. Bai Hanjin,WIPO Case No. D2010-2053 and as stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.
The Panel accepts that, in this case, the Respondent has incorporated the Complainant’s registered ACCENTURE mark in its entirety into the Domain Name. The Respondent’s addition of the descriptive term “world” not only does nothing to meaningfully distinguish the Domain Name from the Complainant’s ACCENTURE mark, and may exacerbate the likelihood of confusion. Therefore Internet users are very likely to be confused as to whether an association exists between the Domain Name and Complainant.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s ACCENTURE trade mark. B. Rights or Legitimate Interests
The Panel accepts that the Respondent has made no bona fide offering of goods or services and that the Respondent previously operated a website at the Domain Name advertising a company called ACCENTURE WORLD which claimed to offer IT outsourcing services that were nearly identical to the Complainant’s IT outsourcing services and that despite the fact that this was the Respondent’s purported website, its “Contact Us” page listed the email address “[...]@” an email address associated with the Complainant.
The Panel accepts that the Respondent subsequently directed the Domain Name to a parked page, which includes a link stating: “BUY THIS DOMAIN The domain may be for sale by its owner!” and that clicking on the link automatically redirects to a website wherein the Domain Name is offered for sale for £10,000.
The Panel accepts that the Complainant has not licensed or otherwise permitted the Respondent to use its ACCENTURE Mark, or to apply for or use any domain name incorporating the mark. In Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, it found that the respondent had no rights or legitimate interest in the domain name where the complainant did not license or permit the respondent to use any of its trademarks.
The Panel finds that the trade mark ACCENTURE is an invented word that has achieved significant worldwide recognition and is not a term that a domain name registrant would legitimately choose unless seeking to create an impression of an association with the Complainant. This has previously been found in Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098.
The Panel finds that Respondent’s use of the Complainant’s email address at its previous “Contact Us” page demonstrates that the Respondent registered the Domain Name in an attempt to create an impression that it is associated with the Complainant.
The Panel finds that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain.
The Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, in view of Complainant’s prior statutory and common law rights in the ACCENTURE Mark. C. Registered and used in bad faith
The Panel accepts that the Respondent had constructive notice that the ACCENTURE Mark was a registered trademark in the United States, Australia and many other jurisdictions worldwide.
In view of the Complainant’s worldwide reputation and the extensive presence of the ACCENTURE Mark on the Internet, the Panel accepts that the Respondent was or should have been aware of the ACCENTURE Mark long prior to registering the Domain Name as was previously found in Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098.
Accordingly the Panel accepts that the Respondent did not register the Domain Name to actually offer services but, instead, registered and is using the Domain Name for the bad-faith purpose of intentionally attempting to attract users to its website by creating a likelihood of confusion with the Complainant’s ACCENTURE Mark and that use of a business name that incorporates another’s trademark demonstrates that a registrant acted in bad faith in registering a domain name as found in ALDI GmbH & Co. KG v. ALDI Einkauf GmbH,WIPO Case No. D2012-1594 (finding that a respondent acted in bad faith by using a corporate name and domain name that incorporated another’s trademark).
The Panel accepts that the Respondent registered the domain name, in part, to sell the Domain Name to Complainant or its competitors. In Société Nationale des Chemins de Fer Français, SNCF v. Elitebase,WIPO Case No. D2010-2179 (it was found that an offer to sell a domain name posted at the domain name’s parked page supports a finding of bad faith use and registration). The Panel accepts that the Respondent has posted an offer to sell the Domain Name at its website for £10,000, demonstrating her intent to sell the Domain Name to Complainant or its competitors. In addition the Respondent’s lawyer has offered to sell the Domain Name to the Complainant for USD 3000 which allegedly is the cost of purchase of the domain name, credit card deductions, counsel fee etc.
The Panel does not consider that any other statements made in the Respondent’s reply assist the Respondent’s case under this or any of the previous issues.
The Panel cannot conceive of any good-faith use of the Domain Name by the Respondent, the Respondent is intentionally attempting to attract users to its website by creating a likelihood of confusion with the Complainant’s ACCENTURE Mark and, therefore, has acted in bad faith. 7. Decision
The Panel orders that the Domain Name be transferred to the Complainant.
Isabel Davies
Sole Panelist
Date: June 4, 2015
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