The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America.
The Respondent is Name Redacted.1 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 filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2018. On May 22, 2018 and June 5, 2018, the Center received communications from the named registrant of the disputed domain name reporting identity theft. On June 8, 2018, the Center informed the Parties of the receipt of these communications. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 8, 2018.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on June 15, 2018. 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 an international corporation that provides management consulting, technology services and outsourcing services under the name Accenture. The Complainant has offices and operations in more than 200 cities in 56 countries with its principal place of business in Dublin, Ireland.
As evidenced in Annexes D and E to the Complaint, the Complainant is the exclusive owner in more than 140 countries of the ACCENTURE trademark, marks fully incorporating the ACCENTURE trademark (collectively the “ACCENTURE Mark”) and the ACCENTURE & Design Mark. A representative list of the Complainant’s United States trademark registrations for the ACCENTURE Mark and ACCENTURE & Design Mark, and variations thereof is as follows:
Mark
Goods and Services
Registration No.
Registration Date
ACCENTURE
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42.
3,091,811
May 16, 2006
ACCENTURE >
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42.
2,665,373
December 24, 2002
ACCENTURE
Various goods in Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28
3,340,780
November 20, 2007
ACCENTURE
Various goods in Classes 18, 25 and 28
2,884,125
September 14, 2004
ACCENTURE & Design
Various services in Classes 35 and 36.
3,862,419
October 19, 2010
The Complainant has owned and operated the domain name since August 30, 2000 as evidenced by Annex G to the Complaint. At this website, Internet users can find detailed information about the services offered by the Complainant and its global offices in connection with the ACCENTURE Mark.
The ACCENTURE Mark has been recognized as a leading global brand by reputable brand consulting companies in the industry. The Complainant supports numerous social development projects worldwide in connection with the ACCENTURE Mark and has collaborated with various groups on cultural initiatives across the world. The ACCENTURE Mark is also connected with world-wide sporting events. As a result of the extensive use and promotion of the ACCENTURE Mark by the Complainant, the Complainant asserts that its mark has become distinctive and well-known globally.
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 February 3, 2018. The named Respondent is a senior officer of the Complainant. This individual indicated in correspondence with the Center that he did not authorize the registration of the disputed domain name or the use of his name in the WHOIS details. The Registrar (and related hosting company) has provided evidence satisfactory to the Panel to substantiate the claim of the individual listed as registrant on the record of registration that he was not responsible for registration of the disputed domain name. The Panel has decided to redact the name of the individual listed as registrant on the record of registration from this decision (while providing it to the Registrar in Annex 1 and directing that said Annex should not be published). 5. Parties’ Contentions A. Complainant
The Complainant asserts its rights in the ACCENTURE Mark. The Complainant contends that the disputed domain name is confusingly similar to the ACCENTURE Mark. It states that the dispute domain name incorporates the ACCENTURE Mark in its entirety with the only difference being the addition of the generic designation “investments”. The Complainant contends that the addition of the generic designation “investments” is not sufficient to distinguish the disputed domain name from the ACCENTURE Mark and reinforces the confusing similarity of the disputed domain name with the ACCENTURE Mark given the Complainant’s various products and services offered in the financial industry. The Complainant further contends that the addition of the generic Top Level Domain (“gTLD”) “.com” is irrelevant to the confusingly similar analysis.
The Complainant also contends that the Respondent has no rights in respect of the disputed domain name. It also states that the Respondent has falsely used, without authorization, another’s identity in the WHOIS information for the disputed domain name. The Complainant also draws the Panel’s attention to the fact that the address captured in the WHOIS details for the disputed domain name is the address of a company JCI Global Investments Limited (previously registered under the name ACCENTURE Global Investments Ltd). As evidenced by Annex U to the Complaint, JCI Global Investments Limited did not authorize registration of the disputed domain name or the website to which the disputed domain name resolved. The Complainant therefore contends that the disputed domain name is an attempt by the Respondent to fraudulently appear associated or affiliated with the Complainant and/or JCI Global Investments Limited.
The Complainant further contends that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent’s only use of the disputed domain name was to divert consumers by click-through links (many of which incorporate the ACCENTURE Mark) to third-party websites.
Finally, the Complainant contends that the disputed domain name was registered in bad faith and in full knowledge of the Complainant’s rights. Given the Complainant’s worldwide reputation and ubiquitous presence of the ACCENTURE Mark on the Internet, the Complainant contends that the Respondent was or should have been aware of the ACCENTURE Mark and therefore registered the disputed domain name with the Respondent in mind and with the intent to take advantage of the ACCENTURE Mark and to appear associated or affiliated with the Complainant. 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 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.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(i) That the disputed domain name is identical or confusingly similar to a 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. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the ACCENTURE Mark by virtue of its numerous trademark registrations around the world as well as its extensive use of that Mark since 2001.
The Panel finds that the disputed domain name consists of three parts, of which the first and dominant part is the Complainant’s ACCENTURE Mark which is used in the disputed domain name in its entirety and without any modification. The remaining two parts are the generic designation “investments” and the applicable gTLD suffix “.com”. It is well established that the addition of such a generic designation does not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark and that the gTLD “.com” may be disregarded for the purposes of comparison under the first element.
Moreover, as the Complainant has pointed out, the word “accenture” is not a descriptive or generic term, but rather a term coined by the Complainant. Consumers therefore associate this term exclusively with the Complainant and its products and services owing to the international goodwill that the Complainant has developed in the ACCENTURE Mark over the last 17 years.
Therefore, the Panel finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant and that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the disputed domain name, among other circumstances, by showing any one of the following elements:
(i) That before notice of the dispute, the Respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the Respondent has been commonly known by the disputed domain name, even if it had acquired no trademark or service mark rights; or
(iii) That the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers to or tarnish the trademark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain names lies with the Complainant.
The Complainant has stated, and the Panel accepts, that it has not licensed or otherwise authorized the Respondent’s use of the ACCENTURE Mark and the Respondent is not commonly known by the disputed domain name.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights in the disputed domain name. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove registration in bad faith as well as use in bad faith.
The Panel is satisfied that the disputed domain name has been registered in bad faith.:
In the absence of a response, the Panel draws the reasonable inference that at the time of registering the disputed domain name, the Respondent must have been aware of the Complainant, its ACCENTURE Mark and the Complainant’s exclusive rights in that trademark, and the reputation and fame of that trademark. The Panel accepts the Complainant’s assertion that the ACCENTURE Mark is known worldwide and has been in continuous use since 2001. The Panel also places weight on the fact that the word “accenture” is a word coined by the Complainant. It is therefore not a case of the Respondent adopting a generic term as the key part of the disputed domain name. It has adopted a uniquely coined trademark.
With respect to use in bad faith, the Panel notes the Complainant’s contention at paragraph 40 of the Complaint that the “Respondent’s only use of the disputed domain name appears to be to divert consumers by click-through links (many of which incorporate the ACCENTURE Mark) to third-party websites.” However, the evidence in support (Annex S to the Complaint) shows that the disputed domain name does not now resolve to an active website. It is therefore not clear to the Panel whether there has in fact been use of the disputed domain name. If there has been use as asserted in the Complaint, no evidence in support has been provided.
As recorded in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3, the lack of active use of the domain name does not as such prevent a finding of use in bad faith. The circumstances of the case must be looked at. “Examples of circumstances that can indicate bad faith can include the Complainant having a well-known trade mark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name.” Telstra Corporation Limited v Nuclear Marshmallow,WIPO Case No. D2000-0003.
The facts of the present Complaint squarely fall within the “examples of circumstances” provided in the WIPO Overview 3.0.
(i) The ACCENTURE trade mark comprises an invented word that has achieved worldwide recognition.
(ii) The ACCENTURE trade mark is not a mark that a registrant would legitimately choose unless seeking to create an impression or association with the Complainant. (The Panel has already found that the Respondent has no rights or legitimate interests in the disputed domain name).
(iii) There has been no Response to the Complaint.
(iv) The Respondent provided false WhoIs details by using the name of a senior officer of the Complainant and the address of company previously registered under the name ACCENTURE Global Investments Ltd. and which changed its name to JCL Global Investments Limited. The Panel accepts that the Respondent was not authorized or licensed to use such information. The Panel finds that the use of false WhoIs information by the Respondent constitutes use for the purpose of intentionally misleading the public to believe that the disputed domain name is associated or affiliated with the Complainant.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant. 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.
Andrew Brown Q.C.
Sole Panelist
Date: June 25, 2018
1 The Respondent appears to have used the name and contact details of a senior officer of the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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