The Complainant is Accenture Global Services Limited Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent’s name has been redacted for the reason explained in section 6A below. 2. The Domain Name and Registrar
The disputed domain name, (the “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 April 9, 2019. On April 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 10, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 12, 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 April 12, 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 April 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 10, 2019.
The Center appointed Tony Willoughby as the sole panelist in this matter on May 24, 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.
The amendment to the Complaint referred to above stemmed from the fact that the Respondent was making use of a privacy service. The identity of the Respondent was disclosed to the Center by the Registrar in response to the Center’s request for registrar verification. A further issue relating to the identity of the Respondent is dealt with in sections 4 and 6A below. 4. Factual Background
The Complainant is an international management consultancy, technology and outsourcing services company, which with its affiliates and predecessor in title has been conducting business under the ACCENTURE trade mark since 2001.
The Complainant is the proprietor of a large number of trade mark registrations covering the ACCENTURE trade mark. One such registration is United States registration No. 3,091,811 ACCENTURE (typed drawing) registered May 16, 2006 (application filed October 26, 2000) for a wide range of goods and services in classes 9, 16, 35, 36, 37, 41 and 42.
The Complainant has produced evidence to demonstrate that its ACCENTURE brand is very well known in the United States and internationally. Its expenditure on advertising has been substantial and in the years 2009 to 2017 never amounted to less than USD 66 million.
The Complainant operates a website connected to its domain name, , which it registered on August 30, 2000.
The Domain Name was registered on January 11, 2019 and is connected to a webpage with a Google message reading “404. That’s an error. The requested URL / was not found on this server. That’s all we know”.
On March 13, 2019 the Complainant’s IP Counsel emailed the Respondent in the following terms:
“I am intellectual property counsel for Accenture. Recently, your registration of the domain was flagged for my attention. Please respond to this email on an urgent basis with information explaining this registration, including the names of any Accenture employees authorizing the activity. Otherwise, we will be left to assume that this was done without Accenture’s authorization in a designed attempt to imitate our brand and/or imply our affiliation.”
No reply having been received a “chaser” was sent on March 22, 2019 reading: “Hello- I am writing to follow up on an urgent basis to my email [of March 13] regarding your registration of . Please respond as soon as possible to this urgent matter.”
The Respondent did not reply.
On April 12, 2019 the Complainant produced evidence attached to the amended Complaint demonstrating to the satisfaction of the Panel that the name of the Respondent appearing on the Registrar’s Whois database for the Domain Name is the name of an officer of the Complainant, who has had nothing to do with the registration of the Domain Name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s ACCENTURE trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name has been registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Matter – Redaction of the Respondent’s Name
As can be seen from the factual background set out above (section 4) this case appears to be a case where the individual identified on the Registrar’s WhoIs database is an innocent party unaware of the fraud being perpetrated in his name. In such cases, it is common practice for the Respondent’s name to be redacted from the published decision. The Panel proposes to follow the course of action adopted by the learned panel in Elkjøp Nordic A/S v. Name Redacted,WIPO Case No. D2013-1285 and set out as follows:
“As in Moncler S.r.l. v. Name Redacted, WIPO Case No. D2010-1677, Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890 and Saudi Arabian Oil Company v. Name Redacted, WIPO Case No. D2013-0105, this is a case in which the Panel finds that the Domain Name was registered by a third-party without the involvement of the person identified in the WhoIs as the registrant of the Domain Name, against whom the Complaint was filed. The Panel has accordingly redacted the name of that person from the caption and body of this Decision. The Panel has attached as an Annexure to this Decision an instruction to the Registrar regarding transfer of the Domain Name that includes the name of that person so as to enable effect to be given to the Panel’s order. To this end, the Panel authorises the Center to transmit the Annexure to the Registrar and the parties, but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published in this exceptional case.”
All references in this decision to the Respondent are to the unknown person who registered the Domain Name. B. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights: and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name: and
(iii) The Domain Name has been registered and is being used in bad faith. C. Identical or Confusingly Similar
The Domain Name comprises (a) the Complainant’s trade mark ACCENTURE, (b) the descriptive word “groupe” (the French word for “group”) and (c) the “.com” generic Top-Level Domain identifier. The Complainant’s ACCENTURE trade mark being readily recognizable in the Domain Name, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. D. Rights or Legitimate Interests
There is nothing before the Panel to indicate that the Respondent has any rights or legitimate interests in respect of the Domain Name. The Respondent has made no use of the Domain Name (commercial or noncommercial) and, self-evidently, the name under which the Respondent registered the Domain Name, being a false name, leaves no room for doubt in the matter.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. E. Registered and Used in Bad Faith
The word “Accenture” is a made-up word. It is not a dictionary word. It is meaningless, save as a brand or trade mark. The addition of the word “groupe” to “Accenture” in the Domain Name serves to indicate that the Domain Name is the domain name of a group of companies (probably Francophone) trading under the name “Accenture”. On the evidence before the Panel, the Complainant is likely to be the only qualifying entity.
Registering a domain name which so obviously identifies the Complainant and doing so under a false name leads the Panel to conclude that the Domain Name was registered in bad faith with the intention of trading in bad faith on the back of the reputation and goodwill associated with the Complainant’s ACCENTURE trade mark.
However, to succeed under paragraph 4(a)(iii) of the Policy the Complainant needs to prove that the Domain Name was not only registered in bad faith, but is also being used in bad faith. Yet, as indicated above, the Domain Name is not in use and has never been used.
There are circumstances in which non-use can constitute abusive passive use under the Policy and this is primarily in cases where there is no conceivable justifiable use that can be made of the disputed domain name without the authority of the complainant (see section 3.3, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition).
Here the Panel has found that it is overwhelmingly likely that the Respondent registered the Domain Name with a view to trading on the Complainant’s goodwill in some shape or form. The purpose could be to squat on it in the hope that the Complainant will make an offer to purchase it or it could be with a view at some stage in the future to conduct trade under it. Either way, in the view of the Panel, this constitutes an unjustifiable threat hanging over the head of the Complainant while the Domain Name remains in the hands of the Respondent and, as such, a continuing abusive use.
The Panel finds that the Domain Name was 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: June 3, 2019
Full & Egal Universal Law Academy