The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains by Proxy, LLC, United States / Richa Sharma, Name Redacted1 , India. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 9, 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 October 11, 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 October 17, 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 October 17, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 7, 2019. The Center appointed Gareth Dickson as the sole panelist in this matter on November 13, 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 the proprietor of the domain name The ACCENTURE mark was found in Accenture Global Services Limited v. ICS Inc/PrivacyProtect.org,WIPO Case No. D2013-2098 to be neither a descriptive nor a generic term, but a coined term. The Respondent registered the Domain Name on August 9, 2019 and used a privacy service to mask its contact details. The Domain Name resolves to a coming soon website and mail exchange (“MX”) records appear to have been created for it, enabling the Respondent to use it to send emails. 5. Parties’ Contentions A. Complainant The Complainant contends that it has rights in the Mark and that the Domain Name is confusingly similar to the Mark, with the only difference being the addition of a hyphen and the letters “hr” (presumably referring to “human resources”) and the generic Top-Level Domain (“gTLD”) suffix “.info”. The Complainant submits that the addition of “hr” to the Domain Name does not distinguish the Domain Name from the Mark in any way. The Complainant also asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name since it has no relation or link with the Complainant and the Complainant has not authorised the Respondent to make any use of the Mark, nor is it commonly known by the Domain Name. The registration is said not to be a bona fide or legitimate business or a noncommercial or fair use of the Domain Name. Finally, the Complainant argues that the Domain Name was registered and is being used in bad faith, given its confusing similarity to the Mark and the likelihood that the Respondent was aware of the Mark at the time of registration. The Complainant argues that the Respondent’s use of the Domain Name to send emails purporting to be from “Accenture HR”, evidenced by the existence of MX records, is further evidence of bad faith, as is the Respondent’s use of a privacy service. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Complainant has submitted several hundred pages of printouts in support of the Complaint. These include numerous printouts from websites and trade mark registries around the world, the majority of which are illegible or concern an entity other than the Complainant. The Complainant has, however, included in the documentation accompanying the Complaint a single registration for ACCENTURE in the name of the Complainant, namely, the Mark. The Panel therefore finds that the Complainant is the owner of and has rights in the Mark. In relation to the addition of “-hr” to the Domain Name, section 1.8 of the WIPO Overview 3.0 provides that “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. The Panel therefore finds that the Domain Name is confusingly similar to the Mark, since ACCENTURE is recognisable within the Domain Name. The addition of “-hr” and the gTLD suffix “.info”, does not in any way prevent a finding of confusing similarity. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint. As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case, having alleged that it has not authorised the Respondent to use the Mark, whether in the Domain Name or otherwise. Furthermore, there is no evidence that the Respondent has acquired any rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the Domain Name in any descriptive manner, not least since ACCENTURE is a coined rather than a generic or descriptive term. Finally, the Respondent is not making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it: if anything, the Respondent appears to be using it (or at least preparing to use it), to contact third parties with the aim of imitating the Complainant or one of its connected companies. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith The Panel accepts that the Domain Name was chosen by reference to the Mark. As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or unintended, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The Panel accepts that the Respondent is using the Domain Name to provide access to a coming soon website. However, a “coming soon” page does not prevent a finding of bad faith use, under the doctrine of passive holding. In particular, section 3.3 of the WIPO Overview 3.0 states that relevant factors to finding bad faith in passive holding “include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” The Panel notes that the trade mark ACCENTURE has already been found to be a coined rather than a descriptive or generic term, and that the Respondent has used (or is preparing to use) the Domain Name as a means of communication in a manner that will inevitably confuse recipients of such communications as to the genuine origin of them, while concealing its identity and without having participated in these proceedings or sought to explain its registration and use of the Domain Name. Consideration of these and other factors militates in favour of a finding of bad faith passive holding. There is no basis for the Panel to conclude that the Respondent’s particular use of the Domain Name is justified and the Panel must, and does, find that the Respondent’s use of the Domain Name to send emails which are very likely to confuse the recipient of such emails as to their origin, is without justification, is inconsistent with the Complainant’s exclusive rights in the Mark, and accordingly is in bad faith. As a result of the above, 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 Gareth Dickson 1 The Panel decided to redact the name of the organization of the Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788 (“The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted the organization name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names that includes the Respondent´s organization name, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published except under exceptional circumstances”).
Sole Panelist
Date: November 27, 2019
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