Complainant is Accenture Global Services Limited, United States of America, represented by McDermott Will & Emery LLP, United States of America.
Respondent is Domain Admin / Privacy Protect, LLC (PrivacyP), United States of America / Rajan, Rajan Moshik, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Hostinger, UAB (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2019. On May 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 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 Complainant on June 5, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 10, 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 Respondent of the Complaint, and the proceedings commenced on June 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2019.
The Center appointed Mark Partridge as the sole panelist in this matter on July 16, 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
Complainant is an international business offering various services, including management consulting, technology services and outsourcing services. It has offices and operations in more than 200 cities in 56 countries. Complainant’s employees total over 470,000, providing services across 139 global locations.
On January 1, 2001, Complainant began using the ACCENTURE mark. Complainant owns numerous trademark registrations for ACCENTURE, particularly United States. Reg. No. 3091811, registered on May 16, 2006, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services.
The disputed domain name was registered on April 28, 2019. At some point, it resolved to a page that provided a location address and displayed the following message: “Accenture Data Lab launching soon.” Now, it resolves to an error page. 5. Parties’ Contentions A. Complainant
In requesting that the disputed domain name be transferred to it, Complainant contends that it has satisfied the three necessary elements under the Policy.
First, Complainant argues that the disputed domain name is identical or confusingly similar to its trademarks. Complainant provides evidence of numerous, worldwide trademark registrations and offers evidence concerning its worldwide reputation. Complainant claims that the only difference between the disputed domain name and Complainant’s ACCENTURE mark is that the disputed domain name adds a hyphen and the descriptive terms “data lab.” Complainant argues that “data lab” is directly related to Complainant’s business. Complainant argues that Respondent’s addition of the descriptive terms “data lab” to disputed domain name does nothing to reduce the confusing similarity with Complainant’s ACCENTURE marks.
Second, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Among various arguments, Complainant asserts that Respondent is not making a legitimate noncommercial fair use of the disputed domain name; that Respondent is neither affiliated with, nor has it been licensed or permitted to use its ACCENTURE marks or any domain names incorporating the ACCENTURE marks; that Respondent is not commonly known by the disputed domain name; and, that Respondent is not making a bona fide offering of goods and services.
Third, Complainant argues that the disputed domain name has been registered and is being used in bad faith by Respondent. Based on its worldwide reputation, Complainant argues that Respondent knew or should have known of the ACCENTURE marks prior to registering the disputed domain name. Among a number of arguments concerning bad-faith use, Complainant invokes the doctrine of passive holding, arguing that each of the factors indicate that the disputed domain name is being passively held in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, and notwithstanding Respondent’s default, Complainant must prove the following three elements:
(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.
Although Respondent defaulted, the Panel may choose to accept as true the reasonable contentions of Complainant. Allianz SE v. IP Legal, Allianz Bank Limited,WIPO Case No. D2017-0287 (citing Joseph Phelps Vineyards LLC v. NOLDC, Inc., Alternative Identity, Inc., and Kentech,WIPO Case No. D2006-0292); see also OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyP,WIPO Case No. D2015-1149 (citing Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009); Tata Sons Limited v. Domaincar,WIPO Case No. D2006-0285 (noting “[t]his is not a simple ‘rubber stamping’”); Rules, paragraph 14(b) (providing, in other words, that a Panel must use its discretion when a respondent is in default). A. Identical or Confusingly Similar
To satisfy the first element, a complainant must establish that the disputed domain name is identical or confusingly similar to the trademark in which the complainant has rights. This element has two distinct parts: (i) complainant’s rights in a trademark; and, (2) identical or confusingly similar.
First, the Panel finds that Complainant introduced sufficient evidence establishing its trademark rights for purposes of the Policy. “[T]his prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, previous panels have recognized Complainant’s extensive rights in the ACCENTURE mark. See, e.g., Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / David Tracey,WIPO Case No. D2018-0811; see id. (recognizing “panels have held that the ACCENTURE mark is well known and distinctive and that the term ACCENTURE was coined by the Complainant”).
Second, the next inquiry generally involves a “side-by-side” comparison of the disputed domain name and the relevant trademark to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. For purposes of the first element, the Top-Level Domain (“TLD”) “.com” in the disputed domain name, , is disregarded. See WIPO Overview 3.0, section 1.11; see also Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; America Online, Inc. v. Johuathan Investments, Inc., and AOLLNEWS.COM,WIPO Case No. D2001-0918.
The Panel finds that Complainant’s ACCENTURE mark is wholly incorporated and clearly recognizable in the disputed domain name. Respondent’s addition of the suffix “-datalab” does not eliminate or preclude a finding of confusing similarity. See Accenture Global Services Limited v. Milano Mariah,WIPO Case No. D2019-1067 (finding “addition of the descriptive word ‘groups’ does not dispel confusing similarity” between and Complainant’s ACCENTURE mark). See WIPO Overview 3.0, section 1.8.
For the foregoing reasons, the Panel concludes that Complainant has satisfied the first element. B. Rights or Legitimate Interests
To satisfy the second element, Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in a domain name. Once the complainant satisfies its initial burden, the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the disputed domain name. AB Electrolux v. Mostafa Faheem,WIPO Case No. D2017-2233; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. Where, as here, Respondent defaults, it does not mean that Complainant automatically prevails on this element. Instead, the Panel “is left to examine the record to determine whether there is a plausible rebuttal to Complainant’s prima facie case.” Staatsolie Maatschappij Suriname N.V. v. WhoisGuard, Inc. / Statee Loil,WIPO Case No. D2017-1117; see also WIPO Overview 3.0, section 4.3 (noting “a respondent’s default is not necessarily an admission that the complainant’s claims are true”).
Complainant asserts that Respondent is not making a legitimate noncommercial fair use of the disputed domain name; that Respondent is neither affiliated with, nor has it been licensed or permitted to use its ACCENTURE marks or any domain names incorporating the ACCENTURE marks; that Respondent is not commonly known by the disputed domain name; and, that Respondent is not making a bona fide offering of goods and services. Based on the foregoing, the Panel concludes that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
As noted above, Respondent did not file a response. After examining the record, the Panel determines that there is no plausible rebuttal to Complainant’s prima facie case. See Staatsolie Maatschappij Suriname N.V.,WIPO Case No. D2017-1117. The Panel therefore concludes that Complainant has satisfied the second element. C. Registered and Used in Bad Faith
Lastly, Complainant must prove that the disputed domain name was registered and is being used in bad faith. See Service Spring Corp. v. hao wang,WIPO Case No. D2018-2422.
Complainant has established that it has a worldwide reputation and that its ACCENTURE marks are distinctive and well known. In light of this, Complainant argues that Respondent knew or should have known of the ACCENTURE marks prior to registering the disputed domain name. The Panel agrees. Moreover, the Panel notes that the phrase “datalab” in the disputed domain name is an apt descrition of many of the scenarios provided by Complainant. Accordingly, the Panel finds that Respondent registered the disputed domain name in bad faith. See Accenture Global Services Limited v. Milano Mariah,WIPO Case No. D2019-1067; Accenture Global Services Limited v. ICS INC. / PrivacyP,WIPO Case No. D2013-2098.
Next, the Panel considers whether Complainant has shown Respondent’s bad-faith use. Paragraph 4(b) of the Policy offers a non-exhaustive list of circumstances that indicate bad-faith use and registration of a domain name.
Here, Respondent is passively holding the disputed domain name. Passive holding of a domain name does not preclude a finding of bad-faith use of a registration. See WIPO Overview 3.0, section 3.3. In such cases, panels are to consider the totality of the circumstances as well as a number of factors. See id. (setting out four factors); see also Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado,WIPO Case No. D2018-0082. Two of the factors are the following: (i) the degree of distinctiveness or reputation of the complainant’s mark[;] … and (iv) the implausibility of any good faith use to which the domain name may be put.” WIPO Overview 3.0, section 3.3.
Complainant provides arguments based on these two factors, noting the distinctiveness and worldwide reputation of its ACCENTURE marks and asserting that the disputed domain name could not be used other than to trade of its reputation and goodwill. In light of the totality of the circumstances, including consideration of these two factors, the Panel finds that it is more likely than not that Respondent is passively holding the disputed domain name in bad faith. See Andrey Ternovskiy dba Chatroulette,WIPO Case No. D2018-0082. One of the suspicious facts leading to this conclusion is the change in use that took place after registration. Although not determinative, this change may indicate an awareness of wrong doing and a deliberate attempt to avoid an adverse decision. Respondent had the opportunity in this proceeding to rebut the evidence of bad faith but failed to do so. That failure, under these circumstances, helps tip the balance in Complainant’s favor.
In sum, the Panel concludes that Complainant has established by a preponderance of the evidence that the disputed domain name has been registered and is being used in bad faith, thereby satisfying the third element. 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 Complainant.
Mark Partridge
Sole Panelist
Date: August 12, 2019
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