The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Super Privacy Service LTD c/o Dynadot, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2019. On September 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2019, 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 and contact information for the disputed domain name. 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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2019. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 12, 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 an international business that provides, among others, management consulting, technology services and outsourcing services, with offices and operations in more than 200 cities in 56 countries. Since 2001, the Complainant has continuously operated under the name “accenture” and extensively used the mark ACCENTURE in connection with its products and services, being this trademark firmly established. The Complainant holds registered trademark rights in the mark ACCENTURE in more than 140 jurisdictions, alone or in combination with other figurative elements, owning a trademark portfolio with more than 1,000 trademark registrations, of which the following are sufficiently representative for the present proceeding: United States Trademark No. 3,091,811 ACCENTURE, word mark, registered May 16, 2006, in classes 9, 16, 35, 36, 37, 41 and 42; United States Trademark No. 3,340,780 ACCENTURE, word mark, registered November 20, 2007, in classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28; United States Trademark No. 2,884,125 ACCENTURE, word mark, registered September 14, 2004, in classes 18, 25 and 28; United States Trademark No. 3,862,419 ACCENTURE, figurative, registered October 19, 2010, in classes 35 and 36. The Complainant further owns The disputed domain name was registered on August 8, 2019, and it is inactive. It resolves to a blank page with the exception of an Internet browser error message stating that the site cannot be reached. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: Through its intensive use and promotion, the trademark ACCENTURE has acquired worldwide reputation. Since 2002, it has been recognized by Interbrand, in its Best Global Brands studies (ranking it as number 53 in 2002 and number 34 in 2018). Since 2006, it has been recognized by BranZ, in its Top 100 Brand Rankings (as number 58 in 2006 and number 32 in 2018). For the past 16 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies, as well as in various other top rankings (Fortune 100 Most Admired Companies Ranking, Fortune 100 Best Companies to Work For Ranking, Fortune’s Blue Ribbon Companies, and The World’s Most Valuable Brands). Further, the Complainant has received numerous awards and recognitions for its business, products and services provided under the trademark ACCENTURE, a complete list is provided by the Complainant. In connection with the mark ACCENTURE, various events related to rugby and golf have been sponsored (the RBS 6 Nations Rugby Championship since 2012, Accenture Match Play Championship in the World Golf Championships), as well as numerous social development projects and cultural initiatives worldwide (among others, the project “Skills to Succeed”, the Louvre Museum and the Rheingau Musik Festival). The global reputation of the trademark ACCENTURE has also been recognized in prior decisions under the Policy. The disputed domain name was registered more than 17 years after the Complainant’s first trademark registration in the United States, and it is confusingly similar to the Complainant’s trademark ACCENTURE. The only difference is the addition of a hyphen and the descriptive geographic term “Asia”. The word “accenture” is not a descriptive or generic word, but rather a coined term, which should be afforded a wide scope of protection, particularly in view of the reputation and international goodwill developed over the continuous and extensive use of the mark ACCENTURE over the years. The addition of a generic Top-Level Domain (“gTLD”) has no legal significance, and the addition of a descriptive geographic term not only does not prevent a finding of confusing similarity. Internet users are very likely to be confused as to whether an association exists between the disputed domain name and the Complainant. The Respondent has no rights or legitimate interests in the disputed domain name. The ACCENTURE mark does not consists of a generic or descriptive term in which the Respondent might have any interest. The disputed domain name incorporates the globally famous trademark ACCENTURE, being the Respondent not affiliated or authorized to use this mark or any domain name incorporating it. The Respondent has further used a privacy proxy service in order to mask its identity, and it appears not to be commonly known by the disputed domain name. Furthermore, the Respondent is not making a legitimate noncommercial fair use of the disputed domain name, not using it for any purpose. The disputed domain name resolves to a blank page, which includes an error message stating that the site cannot be reached. This passive holding confirms the finding that the Respondent lacks any rights or legitimate interests in the disputed domain name. The disputed domain name was registered and is used in bad faith. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE mark on the Internet, the Respondent was or should have been aware of this trademark long before the registration of the disputed domain name. Further, the Complainant sent various communications to the Respondent through the email address listed in the WhoIs information of the disputed domain name, as well as to the registrant via the proxy email, inquiring as to the Respondent’s purpose for registering the disputed domain name, not having obtained any reply from the Respondent. Given the strong reputation of the Complainant’s trademark and the continuous use of the Complainant’s domain name The Respondent has not used the disputed domain name for any legitimate purpose. This passive or inactive holding may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. The reputation of the Complainant’s trademark ACCENTURE, and the fact that the Respondent has concealed its identity using a WhoIs proxy service, are indicative of the disputed domain name being held passively and in bad faith. Further, the disputed domain name is so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith. The Complainant has cited previous decisions under the Policy as well as various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute. Paragraph 15(a) of the Rules provides that “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”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Policy. See section 4.8 of WIPO Overview 3.0. A. Identical or Confusingly Similar In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. In such cases, the addition of terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element, although the nature of such additional term(s) may bear on assessment of the second and third elements. See sections 1.7 and 1.8 of WIPO Overview 3.0. Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test, irrespective of its particular ordinary meaning, although said meaning may be relevant to the assessment of the second and third elements. See section 1.11, WIPO Overview 3.0. The Complainant indisputably has rights in the registered trademark ACCENTURE. The disputed domain name incorporates this mark in its entirety followed by a hyphen and the geographical term “Asia”. The addition of a geographical term separated by a hyphen to the trademark would not prevent a finding of confusing similarity under the first element, provided that the Complainant’s trademark is recognizable within the disputed domain name. The Complainant’s trademark ACCENTURE is directly recognizable in the disputed domain name, and the gTLD “.com”, being a technical requirement, is generally disregarded for the purpose of the analysis of the confusing similarity. Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied. B. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of coming forward with evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests. The Complainant has asserted that the Respondent has no relation with the Complainant and has not been authorized to use the trademark ACCENTURE. Further, the Complainant has alleged that there is no evidence that the Respondent is commonly known by the disputed domain name, has any other rights, or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or for any legitimate noncommercial or fair purpose. This effectively shifts the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides circumstances, without limitation, which may demonstrate the Respondent’s rights or legitimate interests in the disputed domain name: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” A core factor in assessing rights or legitimate interests in the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding a hyphen and a descriptive geographical term, which also may point to the Complainant and its notorious trademark, being likely perceived as an indication of some connection to the relevant mark in relation to a particular region (Asia). Therefore, the Panel considers that there is a risk of implied affiliation. The Panel further notes the extensive presence of the trademark ACCENTURE over the Internet, as well as the extensive use of this mark worldwide. The disputed domain name is inactive, and the Respondent has used a privacy proxy service in the registration of the disputed domain name. It is further remarkable the Respondent’s attitude deliberately choosing not to reply to the Complainant’s communications and to the Complaint, not providing any explanation connected to the above-mentioned circumstances (included in paragraph 4(c) of the Policy) or any other that may be considered as a right or legitimate interest in the disputed domain name. All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all this case cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith.” At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about ACCENTURE mark, and did not have it in mind. Several factors in this case lead to this conclusion. The Panel notes the extensive presence of the trademark ACCENTURE over the Internet, as well as its extensive use, promotion and press recognition worldwide. The Complainant’s trademark has been used and registered for more than fifteen years, being considered well known worldwide, vested with significant goodwill. Further, the trademark ACCENTURE is a term coined by the Complainant, which lacks any particular meaning. Under these circumstances, the disputed domain name incorporates the Complainant’s trademark in its entirety, which intrinsically creates a likelihood of confusion or at least a risk of implied affiliation, adding the descriptive geographical term “Asia” (separated from the mark by a hyphen), which also points to the Complainant and its mark being likely perceived as a reference to the reputed trademark in connection to the Asia region, increasing the intrinsic risk of confusion and association. Further, the disputed domain name is inactive resolving to a blank page with the exception of an Internet browser error message stating that the site cannot be reached. The Panel further notes that the Respondent has used a privacy proxy service in the registration of the disputed domain name, and it is again remarkable the Respondent’s attitude deliberately choosing not to reply to the Complaint and to the Complainant’s communications before filing the Complaint. The Policy’s non-exhaustive list of bad faith circumstances in paragraph 4(b) includes the following: “(i) circumstances indicating that you have registered or you have acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the reputed trademark ACCENTURE with the intention of trading off its reputation and good will, and it has been used in bad faith, being held passively in bad faith. It is further highly probable that the Respondent had the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, trying to misleadingly attract Internet users, and disrupting the Complainant’s business. All the above-mentioned lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 name Reyes Campello Estebaranz
Sole Panelist
Date: November 26, 2019
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