Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper LLP of Chicago, Illinois, United States of America ("United States").
Respondent is Upendra Singh of Allahabad, India, self-represented. 2. The Domain Name and Registrar
The disputed domain name ("Disputed 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 March 10, 2017. On March 13, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 20, 2017, Complainant submitted an amended Complaint to correct an administrative formality.
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 March 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2017. Respondent did not submit any response until April 10, 2017. Accordingly, the Center notified Respondent's default on April 11, 2017. After the notification of Respondent's default, the Center received an email communication from Respondent on April 11, 2017, and a letter from Complainant on April 24, 2017, regarding Respondent's email communication.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on April 21, 2017. 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
Complainant states that it is "an international business that provides management consulting, technology services and outsourcing services"; that it "has offices and operations in more than 200 cities in 56 countries"; that "[f]or the past 14 years, it has been listed in the Fortune Global 500, which ranks the world's largest companies"; and that it has spent USD 66 million to USD 77 million annually in advertising expenses from 2009 through 2015.
Complainant further states, and provides evidence to support, that it is "the owner of the ACCENTURE trademark and company name" (the "ACCENTURE Trademark"), which it began using on January 1, 2001; that it "has extensively used and continues to use the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services"; that it "owns registrations for the ACCENTURE Mark in 144 countries, including India, which is Respondent's purported home country"; that the ACCENTURE Trademark is protected in the United States by Reg. Nos. 3,091,811 (registered on May 16, 2006); 2,665,373 (registered on December 24, 2002); 3,340,780 (registered on November 20, 2007); 2,884,125 (registered on September 14, 2004); and 3,862,419 (registered on October 19, 2010); and that the ACCENTURE Trademark "has been recognized in Interbrand's 'Best Global Brands Report' since 2002."
The Disputed Domain Name was created on October 10, 2016, and is being used in connection with a Facebook page for "Al Allahabad" that contains a cover photo with the text "Accenture Infotech" and "Welcome to Accenture Infotech"; the page identifies Al Allahabad as a "Computer Company." 5. Parties' Contentions A. Complainant
Complaint contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the ACCENTURE Trademark because, inter alia, the Disputed Domain Name "fully and exactly incorporates Complainant's ACCENTURE Mark"; and the "addition of the generic or descriptive term 'infotech' does not materially differentiate it from the ACCENTURE Mark".
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent does not offer any products or services at the website at the Domain Name"; in a proceeding brought by Complainant against Respondent regarding the domain name , the panel found that "Respondent cannot demonstrate that it has rights in the domain name, or that it is using it for a legitimate, non-commercial purpose", Accenture Global Services Limited v. Mr Upendra Singh, .IN Domain Name Dispute Resolution Policy ("INDRP") Case No. 829; that "[a]t Complainant's request, F has previously removed profiles under the "Accenture Infotech" name that were, upon information and belief, created by Respondent"; that "Respondent is not a registered business entity in India" and "[w]hile there was previously an entity registered under the name "Accenture Infotech Private Limited" in India, upon information and belief, this company was not related to or associated with Respondent, and the company name was cancelled as a result of Complainant filing a Rectification Action against the company name"; "Complainant has not licensed or otherwise permitted Respondent to use its ACCENTURE Mark, or to apply for or use any domain name incorporating the mark"; and "Respondent is not commonly known by the domain name."
- The Disputed Domain Name was registered and is being used in bad faith because, inter alia, "Respondent had constructive notice that the ACCENTURE Mark was a registered trademark in the United States, India and many other jurisdictions worldwide"; "[g]iven Complainant's worldwide reputation and the ubiquitous presence of the ACCENTURE Mark on the Internet, Respondent was or should have been aware of the ACCENTURE Mark long prior to registering the Disputed Domain Name"; "use of a business name that incorporates another's trademark demonstrates that a registrant acted in bad faith in registering a domain name"; "Registration of multiple domain names that incorporate a complainant's trademarks, and decisions against a respondent by other arbitration bodies, suggest a domain name was registered in bad faith"; Respondent failed to respond to Complainant's demand letters; and "[t]here is no reasonable explanation for Respondent's selection of the Domain Name, other than that Respondent was intentionally attempting to trade off of the goodwill Complainant has established in its ACCENTURE Mark." B. Respondent
Respondent did not submit a Response. However, one day after the deadline for submission of a Response, Respondent sent an email stating that, inter alia, the Disputed Domain Name "was registered (M/S Accenture Infotech) in the government department as a contractor and a listed supplier"; that the Disputed Domain Name is "a goodwill and identity of respondent Mr. Upendra Singh"; that he "is not willing to, knowingly or unknowingly, use the name of 'Accenture global service of Ireland'"; and that the Disputed Domain Name "is developed and maintained by the respondent since last 3 years now and it's the only source of income and living hood of respondent and his family." 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed 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 Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Preliminary Issue: Respondent's Email
As stated above, the Center received an email communication from the Respondent on April 11, 2017 – one day after the deadline for a response – and a letter from Complainant on April 24, 2017, regarding Respondent's email communication. Complainant's letter states that Respondent's email "contains inaccurate information" and, therefore, the Panel should "disregard any and all claims made therein." Complainant also noted that the email was submitted after the deadline for a response and does not contain the statement required by paragraph 5(c)(viii) of the Rules, which states, in part, "Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate".
Pursuant to its authority under paragraph 10(a) of the Rules – which states that "[t]he Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules" – the Panel has read and considers Respondent's email but gives it little weight given that it fails to contain the certification statement, that it is not signed by Respondent, that it is not substantively supported by appropriate evidence and that it cites no authority or precedent. Further, as noted below, Respondent's email does not contradict any factual or legal arguments in the Complaint. B. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ACCENTURE Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the ACCENTURE Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., "accentureinfotech"), as it is well established that the generic Top-Level Domain ("gTLD") (i.e., ".com") may generally be disregarded for this purpose. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("[t]he applicable top-level suffix in the domain name (e.g., ".com") would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark").
The Panel finds that "the dominant portion" of the Disputed Domain Name contains the ACCENTURE Trademark and that the addition of the term "infotech" is insufficient "to create a distinct domain name capable of overcoming a proper claim of confusingly similar". F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger,WIPO Case No. D2007-0189. This is especially true because the term "infotech" is associated with Complainant's use of the ACCENTURE Trademark. Indeed, because the term "infotech" "relate[s] to the Complainant's business", this Panel finds that it actually "increases the likelihood of confusion between the Domain Name and the Complainant's trademark". Inter-Continental Hotels Corporation v. Hui Lian Yang/Yang Hui Lian; a/k/a Jian Ren Zhou/Zhou Jian Ren; a/k/a Jian Guo Liu/Liu Jian Guo,WIPO Case No. D2014-0272.
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. C. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent does not offer any products or services at the website at the Domain Name"; in a proceeding brought by Complainant against Respondent regarding the domain name , the panel found that "Respondent cannot demonstrate that it has rights in the domain name, or that it is using it for a legitimate, non-commercial purpose", Accenture Global Services Limited v. Mr Upendra Singh, INDRP Case No. 829; that "[a]t Complainant's request, F has previously removed profiles under the "Accenture Infotech" name that were, upon information and belief, created by Respondent"; that "Respondent is not a registered business entity in India" and "[w]hile there was previously an entity registered under the name "Accenture Infotech Private Limited" in India, upon information and belief, this company was not related to or associated with Respondent, and the company name was cancelled as a result of Complainant filing a Rectification Action against the company name"; "Complainant has not licensed or otherwise permitted Respondent to use its ACCENTURE Mark, or to apply for or use any domain name incorporating the mark"; and "Respondent is not commonly known by the domain name."
Under the Policy, "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 the 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". WIPO Overview 2.0, paragraph 2.1.
Although Respondent has not submitted a formal Response, he has, as stated above, submitted an email after the deadline for a response, which the Panel has read. However, as stated above, this email does not contradict any factual or legal arguments in the Complaint. While the email refers to the fact that the Disputed Domain Name "was registered (M/S Accenture Infotech) in the government department as a contractor and a listed supplier", it is impossible for the Panel to ascertain the veracity relevance of this statement.
Therefore, the Panel finds that Complainant has established its prima facie case and without appropriate evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. D. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant'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 registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Although Complainant does not specify which, if any of the four factors establishes bad faith here, Complainant implies that bad faith exists pursuant to paragraph 4(b)(iv) when Complainant states that "Respondent adopted the name ACCENTURE as part of the Domain Name in a bad-faith attempt to appear associated or affiliated with Complainant". Respondent's email in this proceeding does not deny knowledge of Complainant or the ACCENTURE Trademark, and the record establishes without contradiction that the ACCENTURE Trademark has been protected in India, where Respondent is located, since long before registration of the Disputed Domain Name.
Given the strength of the ACCENTURE Trademark and the similarity between Respondent's apparent services as a "Computer Company" and Complainant's technology services, it is difficult to imagine how the Respondent was not aware of the ACCENTURE Trademark, when he registered the Disputed Domain Name. As numerous decisions under the Policy make clear, use of a confusingly similar domain name in connection with a website that competes with the complainant – even if the competing website is not identical – constitutes bad faith. See, e.g., Beachbody, LLC v. Liu Wan,WIPO Case No. D2012-1407 (finding bad faith where the complainant alleged that disputed domain name "resolved to a website with similar content"); LinkedIn Corporation v. Direct Privacy, Domain Name Proxy Service, Inc.,WIPO Case No. D2014-0494 (finding bad faith where "the Respondent was acting in competition with the [c]omplainant"); Eclipse Telecom, LLC v. JustCom / Just Communications, Inc.,WIPO Case No. D2015-0341 (finding bad faith where "[the r]espondent has used the disputed domain name to divert Internet users to a competitive website"); and F. Hoffmann-La Roche AG v. Clear Foto,WIPO Case No. D2009-0501 (finding bad faith where the respondent's website "offers some competing services"). In this case, as stated above, the website using the Disputed Domain Name resolves to a Facebook page for "Al Allahabad" that contains a cover photo with the text "Accenture Infotech".
Accordingly, the Panel finds that Complainant has proven 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 disputed domain name be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: May 5, 2017
Full & Egal Universal Law Academy