The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by Mayer Brown LLP, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Pamana / Gedion Kitili, TrendPro Systems Limited of Nairobi, Kenya, represented by TLO Law Associates, Kenya. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2019, 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 March 1, 2019 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 March 6, 2019.
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 March 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 26, 2019. The Respondent submitted two email communications and filings with the Center on March 13, 2019, and on March 29, 2019, requesting, among other things, to redact the Respondent’s name. On March 29, 2019, the Center informed the Parties that it would proceed to appoint the Panel.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on April 8, 2019. 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 Accenture Global Services Limited and its affiliates, a leading global professional services company that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations across many industries, including the airline, aerospace and freight transport and logistics industries, with 449,000 people serving clients in more than 120 countries.
The Complainant has been using the mark ACCENTURE since January 1, 2001 and owns several trademark registrations around the world for ACCENTURE, and ACCENTURE and design, including the United States trademark registrations for ACCENTURE dated from 2006 (registration no. 3,091,811, granted on May 16, 2006) and ACCENTURE & design dated from 2010 (registration no. 3,862,419, granted on October 19, 2010).
The Complainant is the owner of the domain name since August 30, 2000.
The disputed domain name was created on November 27, 2018 and the website purports to offer helicopter chartering services, executive corporate transport services and air, road and ocean freight services. 5. Parties’ Contentions A. Complainant
The Complainant states that it owns trademark registrations in several jurisdictions for the trademarks ACCENTURE, and ACCENTURE and design, and that the disputed domain name incorporates its trademarks in their entirety, including the generic or descriptive term “aviation” and the suffix “ltd”.
According to the Complainant, the disputed domain name was used and registered in bad faith to confuse and deliberately deceive Internet users, since the Complainant offers services related to aviation and the aviation industry and its trademarks are very well known worldwide.
The Complainant argues that one of the phone numbers published on the website to which the disputed domain name resolves mentions nothing about the company “Accenture Aviation Limited” and that the other is inoperable, and that it is not possible to make any purchase or sign the page out, since the attempts result in an error message. In addition, the Complainant has found no evidence that the company “Accenture Aviation Limited” is a registered business.
The Complainant concludes that the Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, it is not commonly known by the disputed domain name, it has not acquired any trademark rights related to the disputed domain name and is unfairly taking advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks.
According to the Complainant, the Respondent is not authorized to register and use the disputed domain name.
Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent sent emails to the Center with some argumentation that the disputed domain name has registered by it on behalf of its client as beneficial owner and requesting, among other things, to redact the Respondent’s name, but did not submit a formal response to the Complainant’s contentions. The Respondent alleges that the beneficial owner of the disputed domain name is “Accenture Aviation Limited” and provided an extract of the Registrar of companies, Kenya for said company, registered on April 10, 2018. 6. Discussion and Findings 6.1 Respondent Identity
In its email communications with the Center, the Respondent alleged that it registered the disputed domain name on behalf of its client, “Accenture Aviation Limited”, that it disclosed this information at the earliest opportune time, that the provision of proxy/privacy services is a common and legitimate practice, that the Respondent has no interest whatsoever in the disputed domain name, and that the Respondent name should be replaced with that of the beneficial holder, “Accenture Aviation Limited”. The Respondent references requirements for revealing underlying registrant details as provided at paragraph 4(b) of the Rules, and provides an extract of the Registrar of Companies, Kenya for the company “Accenture Aviation Limited”.
UDRP panels have occasionally been required to consider respondent identity questions in the context of an agent/beneficial holder relationship. In Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Osbil Technology, Osbil Technology Ltd,WIPO Case No. D2018-2906, the panel concluded that “a named respondent might seek to contend that a third party is the ‘beneficial registrant’. In such scenario, it would be incumbent on the respondent to adequately demonstrate that another party or parties should be so named,” and also that “the registrant as listed in the WhoIs is a properly-named Respondent but that the submissions of other interested parties may be considered for purposes of the panels’ decision.”
In the instant proceeding, as in the referenced Facebook case above, neither the Respondent nor any other interested party has put forward satisfactory evidence to show that Respondent in fact registers and/or holds domain names on behalf of other parties, let alone any satisfactory argument as to why it should not be the named Respondent. The Respondent has provided only an extract from the Kenyan Registrar of Companies but does not provide any substantive link between this corporate entity and Respondent’s actions in registering the disputed domain name. The Respondent indicated in its later communication that the beneficial owner of the disputed domain name was undertaking action to respond to the Complaint, but no such submission has been made.
Accordingly, the Panel determines that WhoisGuard Protected, WhoisGuard, Inc. / Gedion Kitili, TrendPro Systems Limited is the proper Respondent in this proceeding. 6.2 Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademarks ACCENTURE, and ACCENTURE and design in the United States and in several other countries, in distinct classes of services and products, and of the domain name . The Panel finds that the Complainant has trademark rights for purposes of the Policy.
The Complainant’s trademarks and domain name are very well known worldwide and predate the disputed domain name.
The disputed domain name incorporates the Complainant’s trademarks in their entirety. The addition of the term “aviation” and the suffix “ltd” is indeed not sufficient to avoid confusion between the disputed domain name and the Complainant’s trademarks.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety or a dominant feature of a trademark is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint on the merits of the conflict.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademarks or to register domain names similar to the Complainant’s trademarks.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
There is no evidence that the Respondent is commonly known by the disputed domain name. For the sake of completeness, the Panel notes that should it have found that “Accenture Aviation Limited” were the proper Respondent in this matter, on the basis of the information before it, it would not find that the Respondent is commonly known by the disputed domain name. The registration of a company name is not commonly known by such name. The registration of a company name is not sufficient for the purposes of the Policy to establish that a respondent is commonly known by such name, if that name had been chosen because of its association with the Complainant. Under the circumstances of this case, noting the fame of the Complainant’s mark, the Panel would find it more likely that the corporate registration was made with the Complainant in mind and thus, in any event, finds that the Respondent is not commonly known by the disputed domain name for purposes of the Policy. See The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim,WIPO Case No. D2016-2270; Tinder, Inc. v. GhostMonitor, Inc., Registration Private, c/o Domains by Proxy, LLC / Peter Bodnar,WIPO Case No. D2017-1212.
Based on the evidence in the Complaint, the Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademarks, does not correspond to a bona fide use of domain names under the Policy.
The Panel also notes in any event that the Respondent “has no interest whatsoever in the domain name”.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The trademarks ACCENTURE, and ACCENTURE and design are registered by the Complainant in several countries, including the United States and have been used since a long time, including for aviation related services and other similar services.
The disputed domain name is comprised of the Complainant’s trademarks with the inclusion of the descriptive term “aviation” and the suffix “ltd” and the Respondent has no rights or legitimate interests in the disputed domain name.
The Complaint demonstrates that there is no other reason for the use and registration of the disputed domain name than to take advantage of the fame of the Complainant’s trademarks, with the intent to deceive Internet users to believe they were negotiating with the Complainant. The Respondent obviously knew of the Complainant’s mark when it registered the disputed domain name.
Therefore, this Panel finds that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks and misleading Internet users to believe that the disputed domain name belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s intention of taking undue advantage of the Complainant’s trademarks as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith. 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.
Mario Soerensen Garcia
Sole Panelist
Date: April 22, 2019
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