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 Whois Agent, Whois Privacy Protection Service Inc. of Kirkland, Washington, United States of America / Damian King of Mississauga, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2016. On July 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response 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 July 11, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 11, 2016.
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 the Respondent of the Complaint, and the proceedings commenced on July 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2016.
The Center appointed Christian Pirker as the sole panelist in this matter on August 24, 2016. 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, Accenture Global Services Limited of Chicago, is an international business that provides management consulting, technology services and outsourcing services under the name ACCENTURE.
The Complainant is the owner of ACCENTURE trademark and company name, and trademarks fully incorporating the ACCENTURE trademark.
The ACCENTURE trademark is well known through the world. The Complainant began using the trademark ACCENTURE in connection with the above mentioned business provided by it on January 2001 and since January 2001 has extensively used and continued to use the trademark ACCENTURE.
The Complainant has offices and operations in more than 200 cities in 56 countries.
The Complainant provided evidence of trademark registrations for the ACCENTURE trademark (and including this term) in the United States of America and numerous other countries throughout the word, for various products and services.
The Complainant is also the owner of the domain name .
The Respondent registered the disputed domain name, , on June 28, 2016. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the ACCENTURE trademark has become distinctive and well known globally and has enjoyed such distinctiveness since long prior to the date which the Respondent registered the disputed domain name.
The Complainant asserts that it is entitled to protection with the right to prevent any use of the well-known ACCENTURE trademark or a confusingly similar representation of it in connection with any products or services.
The Complainant asserts that it has not authorized the Respondent to register the disputed domain name, nor does it maintain any licensing relationship with the Respondent.
The Respondent registered the disputed domain name more than 15 years ago after the Complainant began using or filing for U.S. federal and international registrations for the ACCENTURE trademark.
Due to the use of ACCENTURE trademark in its entirety in the disputed domain name , as well as the generic corporate designation “company”, it has to be considered as confusingly similar to the ACCENTURE trademark.
The Complainant asserts that the Respondent was familiar with the well-known ACCENTURE trademark at the time it obtained the registration for the disputed domain name. The Respondent intentionally sought registration for a domain name that is confusingly similar to the ACCENTURE trademark. Moreover, the Complainant alleged and provided an email according to which the Respondent used fraudulently the disputed domain name to one of Complainant’s vendors, posing as an employee of Complainant and seeking price quotes for electronics.
Accordingly, the Complainant requests the Panel to issue a decision that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions
The Respondent did not give any response nor communicate any message at any time during the present proceedings. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy states that the Complainant must prove that each of the three following elements are present:
(i) That the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service trademark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith. A. Identifying the Respondent
From a purely procedural perspective, in the view of the Panel and as mentioned in prior UDRP decisions, it is not necessarily significant in this case who is named as a respondent in the heading of a complaint. A complainant will usually satisfy its procedural obligation under the Policy by identifying as the “respondent” the person or persons named in the publically available WhoIs register at the time that the Complaint is filed with the Center. See, e.g., Rapidshare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and Rapidshare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), WIPO Case No. D2010-0894.
That said, in this Panel’s view the individual or entity named as the formal respondent in this proceeding in practice does not necessarily matter. “The reason for this is that it is the motives and interests of the person, who de facto controls the domain name, and has been responsible for its registration, which is significant when addressing issues under the Policy. (…). In such circumstances the knowledge of the principal is to be imputed to the agent. There is no reason why a privacy service should be treated in different way to any other agent in this respect.” See, e.g.,Rapidshare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain Services Customer ID: DSR-2092987) and Rapidshare AG, Christian Schmid v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), supra.
In conclusion, as stated in RapidShare AG, Christian Schmid, v. Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: DSR-2239262), supra, which addresses the use of privacy or proxy services and the UDRP, this Panel considers in this case that the disputed domain name is in fact controlled by both persons, the privacy service as public registrant and the underlying registrant and that naming both entity as the Respondent respects the UDRP rules (see, for example, General Electric Company v. trademarketing Total S.A, WIPO Case No. D2007-1834and Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited / COMDOT INTERNET SERVICES PVT. LTD., LAKSH INTERNET SOLUTIONS PRIVATE LIMITED., PLUTO DOMAIN SERVICES PRIVATE LTD., COMPSYS DOMAIN SOLUTIONS PRIVATE LIMITED.,WIPO Case No. D2008-1675). B. Identical or Confusingly Similar
As already stated in another UDRP decision (See, e.g., Accenture Global Services Limited v. ICS INC. / PrivacyP,WIPO Case No. D2013-2098) and supported by the evidence submitted, the Complainant has established to the satisfaction of the Panel that it owns rights to the ACCENTURE trademark and that it is globally a well-known recognized trademark, that the trademark is a term coined by the Complainant which deserves a wide scope of protection in view of the ubiquitous nature of the brand and that the term is associated by consumers to the Complainant.
As stated by the Complainant, the addition of a generic Top-Level Domain is without legal significance on the ground that it is insufficient to distinguish the disputed domain name from the Complainant’s trademark ACCENTURE (See, e.g., PepsiCo, Inc. v. PEPSI, SRL and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
Furthermore, as stated by the Complainant, the term “company” in the disputed domain name is a generic term and this designation does not allow to distinguish between the disputed domain name and the ACCENTURE trademark.
The ACCENTURE trademark is entirely included in the disputed domain name in a way that points of similarity are weighed more heavily than points of difference especially in regard with the fact that the generic term “company” does not diminish the confusing similarity (See Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219).
For all these reasons, the Panel considers that the disputed domain name and the ACCENTURE trademark are confusingly similar. C. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy a respondent can establish its rights or legitimate interests in its domain name if it shows the presence of any of the following circumstances:
(i) before any notice to the respondent of the dispute, the respondent use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service trademark rights; or
(iii) the respondent 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 trademark or service trademark at issue.
It is for the Complainant to demonstrate that this condition is met prima facie. Provided that the Complainant is successful in demonstrating that the condition is met prima facie, it is for the Respondent to demonstrate its rights or legitimate interests. Accordingly, the burden of production shifts to the Respondent.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent failed to respond to the Complaint.
Moreover, there is no evidence in the file that the Respondent has rights or legitimate interests in the disputed domain name.
Accordingly, the Panel considers that the Respondent does not have any rights or legitimate interests in the disputed domain name. D. Registered and Used in Bad Faith
The third element to be established by the Complainant is that the domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states the following four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the domain name.
(i) Circumstances indicating that the Respondent has registered or the Respondent has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service trademark, or to a competitor of that Complainant, for valuable consideration in excess of the Respondent documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service trademark from reflecting the trademark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or its location.
The Complainant alleges that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the websites, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the websites.
Some panels in certain default cases have accepted credible factual allegation from a complainant as true, particularly as these pertain paragraphs 4(a)(ii) of the Policy regarding the factors that make out illegitimacy of a respondent’s use or the presence or absence of bad faith (See, e.g., Microsoft Corporation v. Andrey Tumakov,WIPO Case No. D2004-1039; Playmouth State College v. Domains, Best Domain,WIPO Case No. D2002-0939).
Since the Respondent was likely to have been aware of the Complainant’s trademark at the time of registration of the disputed domain name, has failed to give any answer and failed to challenge the Complainant’s allegations, such bad faith registration and use can be accepted as true.
That being said, the Panel further states the following:
Regarding the globally well-known reputation of the ACCENTURE trademark and its ubiquitous presence on the Internet, the Respondent was or should have been aware of the ACCENTURE trademark before the registration of the disputed domain name (See Accenture Global Services Limited v. ICS Inc./PrivacyP,WIPO Case No. D2013-2098).
In this way, it is likely that the Respondent registered the disputed domain name to appear associated or affiliated with the Complainant’s ACCENTURE trademark to intentionally confuse consumers and Internet users in order to take advantage of it, especially to obtain quotes, prices or materials from the Complainant’s vendors (See The Prudential Assurance Co. Ltd. v. Prudential Securities Ltd,WIPO Case No. D2009-1561). Further, the Respondent did try to obtain such advantage, which is evidence of bad faith use.
Since moreover the Respondent failed to give any answer in this proceeding, there is no reasonable or acceptable explanation for the registration of the disputed domain name and above mentioned use apart from that the Respondent attempts to take advantage of the goodwill the Complainant has established with the ACCENTURE trademark or create a likelihood of confusion with Complainant.
Finally, the Respondent used a privacy service to hide its identity. That may also indicate its bad faith (See Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services,WIPO Case No. D2006-1620).
Accordingly, the Panel is convinced that the disputed domain name has been registered and is being use in bad faith and that the Complainant has 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.
Christian Pirker
Sole Panelist
Date: September 7, 2016
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