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 Respondents are Privacidad Whois, Privacidad Whois sl of Santiago de Compostela, Spain / Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Alfonso Galiana Iglesias of Málaga, Spain / Accenture Espana Dominios Externos of Madrid, Spain. 2. The Domain Names and Registrars
The disputed domain name is registered with Dinahosting s.l..
The disputed domain name is registered with Wild West Domains, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2018. On October 1, 2018, the Center transmitted by email to the Registrars Dinahosting s.l. and Wild West Domains a request for registrar verification in connection with the disputed domain names. On October 2, 2018, the Registrar Wild West Domains 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. On October 3, 2018, the Registrar Dinahosting s.l. 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 October 5, 2018, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 8, 2018.
The Center sent an email communication to the parties on October 15, 2018 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on October 15, 2018. The Respondent did not submit any communication regarding the language of the proceeding.
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 October 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Response was filed with the Center on November 12, 2018.
The Center appointed Luca Barbero as the sole panelist in this matter on November 28, 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 business that has been providing management consulting, technology and outsourcing services under the trademark ACCENTURE since 2001.
The Complainant is the owner of a number of trademark registrations for ACCENTURE, including the following, as per trademark certificates submitted as annexes to the Complaint:
- United States trademark registration Nos. 3091811 for ACCENTURE (word mark), registered on May 16, 2006, in International classes 9, 16, 35, 36, 37, 41 and 42; 3340780 for ACCENTURE (figurative mark), registered on November 20, 2007 in International classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28; 2884125 for ACCENTURE (figurative mark), registered on September 14, 2004 in classes 18, 25 and 28; and 2665373 for ACCENTURE (figurative mark), registered on December 24, 2002, in International classes 9, 16, 35, 36, 37, 41 and 42;
- European Union trademark registration No. 001958370 for ACCENTURE (figurative mark), registered on August 14, 2002, in classes 9, 16, 35, 36, 37, 39, 41 and 42.
The trademark ACCENTURE was ranked 53rd in Interbrand’s Best Global Brands Report in 2002 and 37th in the same chart in 2017. It was also ranked 58 in the BrandZ – Top 100 Brand Ranking in 2006 and 58th in 2017. Furthermore, the Complainant and its trademark have been listed for the past 16 years in the Fortune Global 500, which ranks the world’s largest companies.
The Complainant owns and operates its main website at , which was registered on August 30, 2000.
The disputed domain names and were registered on March 7, 2018 and April 27, 2018, respectively, and are not pointed to active websites. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain names are confusingly similar to its trademark ACCENTURE, as they reproduce the trademark in its entirety with the generic Top-Level Domain (“gTLD”) “.com”, which is without legal significance, and of the letters “e” and “ee”, which fail to distinguish the disputed domain names from the Complainant’s trademark.
The Complainant asserts that the Respondents have no rights or legitimate interests in the disputed domain names for the following reasons:
(i) the Complainant has not licensed or otherwise permitted the Respondents to use its trademark ACCENTURE, or to apply for or use any domain name incorporating the trademark;
(ii) the Respondents have made no bona fide offering of goods or services in connection with the disputed domain names as the corresponding websites are currently inactive and, in April and September 2018, individuals writing from email addresses based on the disputed domain names (“[...]@ee‑” and “[...]@e”), emailed a Complainant’s vendor, falsely claiming an association with the Complainant and requesting the payment of an invoice;
(iii) the Respondents are not commonly known by the disputed domain names;
(iv) there is no indication that the Respondents are making a legitimate noncommercial or fair use of the disputed domain names without intent for commercial gain. Instead, the Respondents deliberately chose domain names that are essentially identical to the Complainant’s trademark ACCENTURE and appear to be attempting to achieve commercial gain by misleading the Complainant’s vendors.
The Complainant submits that the Respondents registered and are using the disputed domain names in bad faith because:
(i) the Respondents had constructive notice that the trademark ACCENTURE, as the trademark was registered in the United States and many other jurisdictions worldwide;
(ii) in light of the Complainant’s worldwide reputation and the ubiquitous presence of the trademark ACCENTURE on the Internet, the Respondents were or should have been aware of the trademark ACCENTURE long prior to registering the disputed domain names;
(iii) the 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;
(iv) the registration of a domain name in an attempt to appear associated or affiliated with another entity to obtain money or other materials constitutes bad-faith use and registration;
(v) the Respondents registered, used and continues to use the disputed domain names to intentionally mislead and confuse vendors into believing that the Respondents are the Complainant and/or is associated or affiliated with the Complainant, in order to obtain payments from the Complainant’s vendors;
(vi) sending fraudulent emails pretending to be associated or affiliated with the Complainant is strong evidence of bad faith. B. Respondent
A Response was filed only by Privacidad Whois sl, which requested that the decision not be issued against it since it is not the actual holder of , but only the proxy service used by the registrant to finalize the registration.
The underlying registrants of the disputed domain names as disclosed by the concerned Registrars to the Center failed to reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Preliminary procedural issues. i. Language of the proceeding
Pursuant to paragraph 11(a) of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.
In the case at hand, the language of the Registration Agreement of the disputed domain name is English, whilst the Registration Agreement of the disputed domain name , is in Spanish.
The Complaint was filed in English. Upon completing the Registrar’s verifications, the Center sent an email communication to the parties about the language of the proceeding for , both in English and in Spanish, requesting them to comment on the issue.
The Complainant submitted a request for English to be the language of the proceeding based on the following grounds:
(i) the registration agreement of one of the disputed domain names (i.e. ) is in English;
(ii) the disputed domain names fully incorporate the Complainant’s company name and trademark ACCENTURE;
(iii) the Respondents registered the disputed domain names in bad faith since email addresses based on the disputed domain names have been used to intentionally create a likelihood of confusion with the Complainant and to wrongfully obtain money from the Complainant’s vendors;
(iv) allowing the dispute to proceed in both in English (for ) and Spanish (for ) would give the Respondents an advantage and force the Complainant to incur in additional costs and expenses.
The Respondents did not submit any comment about the language of the proceeding.
In view of the circumstances of the case, the Panel finds that English is the appropriate language of this proceeding and will thus proceed to render the Decision in English. ii. Identification of proper Respondents
The Complaint was originally filed against Privacidad Whois sl and Domains By Proxy, LLC, which are the two proxy services selected by the actual registrants to shield their identity and contact details in the Whois records of the disputed domain names.
Upon receipt of the Center’s Registrar Verification request, the concerned Registrars disclosed the full data of the underlying registrants according to their records, which were identified as Alfonso Galiana Iglesias and Accenture Espana Dominios Externos.
The Panel finds that the Registrar-disclosed registrants are the actual holders of the disputed domain names. Therefore, references made in the subsequent paragraphs and in the substantive sections of this Decision to “the Respondents” shall be read as referred to them. iii. Consolidation of multiple Respondents
Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.
As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)”.
The Complainant asserted that the disputed domain names, although registered in the name of different entities, are under common control since they:
(i) are nearly identical;
(ii) both resolve to inaccessible websites;
(iii) were registered using privacy services;
(iv) were used to create essentially the same email address to perpetrate a scheme in which the sender pretended to be a Complainant’s employee and requested payment from a Complainant’s vendor.
The Panel finds that the elements highlighted by the Complainant and referenced above demonstrate a common control of the disputed domain names by the Respondents. Indeed, the disputed domain names, which are both registered by an individual or entity based in Spain, incorporate the core of the Complainant’s trademark with the mere addition of one or two letters “e” and have been apparently used in connection with the sending of almost identical emails aimed at extorting money to a third party by misleading the recipient into believing that the communications were sent from the Complainant.
In view of the above, this Panel concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281).
Therefore, the Panel will now proceed to a decision on the merits of the case. B. Identical or Confusingly Similar
The Complainant has established rights over the trademark ACCENTURE based on its trademark registrations cited under Section 4 above.
The disputed domain names reproduce the trademark ACCENTURE in combination with the letters “e” and “ee” and a hyphen as prefix and the gTLD “.com”, which can be disregarded being a mere technical requirement for registration.
The Panel finds that the mere addition of one or two letter “e” to the trademark ACCENTURE does not prevent a finding of confusing similarity of the disputed domain names with the Complainant’s trademark and may also be interpreted as a misspelled prefix of ACCENTURE. As stated in section 1.9 of the WIPO Overview 3.0, “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. See also ACCOR v. I&M Raamatupidamise O/Accora Consult OÜ,WIPO Case No. D2006-0650 (), where the panel stated that the addition of “the single letter ‘a’ is an obvious attempt to ‘typosquat’ the Domain Name and is insufficient to avoid confusion”, and E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043 (), finding that “this is clearly a ‘typosquatting’ case where the disputed domain name is a slight misspelling of a registered trademark to divert internet traffic”.
Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie case and that the Respondents, by not having submitted a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the evidence on record, there is no relationship between the Complainant and the Respondents and the Complainant has not authorized the Respondents to register or use its trademark or the disputed domain names.
In addition, there is no evidence that the Respondents might be commonly known by the disputed domain names.
As mentioned above, the disputed domain names have not been pointed to active websites but it appears that they have been used for the creation of email addresses used for the sending of emails claiming to come from a Complainant’s employee and aiming at obtaining payments.
In view of the above-described use of the disputed domain names, the Panel finds that the Respondents have not used the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
See, along these lines, Section 2.13.1 of the WIPO Overview 3.0: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondents in bad faith.
The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark ACCENTURE in connection with the Complainant’s business consulting services, ii) the well-known character of the trademark, and iii) the virtual identity of the disputed domain names with the Complainant’s trademark, the Respondents very likely registered the disputed domain names having the Complainant’s trademark in mind.
Moreover, in view of the notoriety of the Complainant’s trademark, the Panel finds that the Respondents acted in opportunistic bad faith at the time of registration, since the disputed domain names are so obviously connected with the Complainant that its selection by the Respondents, which have no connection with the Complainant, suggests the disputed domain names were registered with a deliberate intent to create an impression of an association with the Complainant.
As to the use of the disputed domain names, the Panel notes that they have not been pointed to active websites. However, according to the records, the disputed domain names appear to have been used in connection with the sending of fraudulent email communications pretending that the sender was a Complainant’s employee and requesting the payment of invoices.
As stated in Section 3.4 of the WIPO Overview 3.0, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. (In some such cases, the respondent may host a copycat version of the complainant’s website.) Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”.
In view of the circumstances of the case and since the Respondents have failed to file a Response and submit counter-allegations to rebut the Complainant’s contentions, the Panel finds that the Respondents’ use of the disputed domain names amounts to bad faith.
Therefore, the Panel finds that the Complainant has also proven the requirement prescribed by paragraph 4(a)(iii) 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 names and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Date: December 14, 2018
Full & Egal Universal Law Academy