The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“U.S”).
The Respondent is Registration Private / Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 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 21, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 23, 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 28, 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 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2019. The Center appointed Mihaela Maravela as the sole panelist in this matter on November 25, 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 management consulting, technology services and outsourcing services under the name ACCENTURE. The Complainant has offices and operations in more than 200 cities in 56 countries. The Complainant is the exclusive owner of a number of U.S. registered trademarks consisting of the word “Accenture”, including the following: - the U.S. trademark for the word ACCENTURE with registration number 3,091,811, registered on May 16, 2006, covering goods in classes 9, 16, 35, 36, 37, 41, and 42; - the U.S. trademark for the word ACCENTURE, with registration number 2,665,373, registered on December 24, 2002, covering goods in classes 9, 16, 35, 36, 37, 41, and 42. Also, the Complainant has registered the trademark ACCENTURE or ACCENTURE & Design in more than 140 countries (and the Complainant has submitted sample evidence in this regard), for a variety of products and services including, but not limited to, its management consulting, technology services and outsourcing services. The Complainant owns and operates the website at “www.accenture.com”, registered from August 29, 2000. The ACCENTURE trademark ranked 34th in the 2018 Interbrand’s Best Global Brands Report. The disputed domain name was registered on August 19, 2019 and is not active. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain name is confusingly similar to the ACCENTURE trademark of the Complainant which is a distinctive and famous trademark. The only difference in the disputed domain name is the addition of the word “portal” before the ACCENTURE trademark and the addition of the term “portal” does nothing to reduce its confusing similarity with the Complainant’s ACCENTURE trademarks. Further, the Complainant argues that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE trademarks or any domain names incorporating the ACCENTURE trademarks. The Complainant also shows that the Respondent registered the disputed domain name via a privacy proxy service in order to mask its identity; and that the registrant indicated by the registrar is not commonly known by the disputed domain name. Respondent is not using the disputed domain name for any purpose. Depending on the applicable Internet browser, the disputed domain name either resolves to a blank page with no content, or it results in some version of a redirected domain displaying a security warning, sponsored website, or some other form of suspicious website. The Complainant concludes that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name, and it appears that the Respondent has chosen the disputed domain name to trade off the reputation and goodwill associated with the Complainant’s ACCENTURE trademarks, to cause confusion amongst Internet users and the Complainant’s customers, and to prevent the Complainant from owning the disputed domain name. In addition, the Complainant alleges that given its worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE trademarks long prior to registering the disputed domain name. The Complainant also argues that given the distinctive and well-known character of its ACCENTURE trademark throughout the world, it is implausible for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s ACCENTURE trademarks. Furthermore, the Respondent concealed its identity using a WHOIS proxy service. These facts are indicative of the disputed domain name being held passively and in bad faith according to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Notwithstanding the fact that no Response has been filed by the Respondent, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant. “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”, paragraph 15(a) of the Rules. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed. Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the ACCENTURE trademark. As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights. According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Also, according to section 1.7 of the WIPO Overview 3.0, “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 confusingly similar to that mark for purposes of UDRP standing”. Here the disputed domain name wholly incorporates the Complainant’s ACCENTURE trademark in addition to dictionary term “portal”. This addition does not distinguish the disputed domain name from the Complainant’s trademark. The fact that a domain name wholly incorporates a complainant’s trademark is sufficient to establish identity or confusing similarity for the purpose of the Policy, despite the addition of other words to such marks. See, Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The addition of a descriptive term does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. It is well accepted by UDRP panels that a generic Top-Level Domain, such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark. This Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name: (i) before any notice to it of the dispute, the respondent’s 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; or (ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out 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 present case, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademark ACCENTURE and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Accenture”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei,WIPO Case No. D2014-0957. The Respondent has failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain name. Moreover, the disputed domain name was registered long after the Complainant registered its trademark ACCENTURE. By not submitting a Response, the Respondent has failed to invoke any circumstances, which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839. With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. According to the unrebutted assertions of the Complainant, its ACCENTURE trademark is widely used in commerce well before the registration of the disputed domain name in August 2019. The disputed domain name incorporates the Complainant’s trademark and a dictionary word in addition to the relevant gTLD. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain name. Section 3.3 of the WIPO Overview 3.0 describes the circumstances under which the passive holding of a domain will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine 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.” Passive holding of the disputed domain does not preclude a finding of bad faith, nor does it detract from the Respondent’s bad faith, as it has been established in prior UDRP decisions (e.g., Koç Holding A.S. v. KEEP B.T,WIPO Case No. D2009-0938). The following factors were considered by the Panel as indicative of bad faith registration and use of the disputed domain name: - the Respondent’s failure to respond to the Complaint, even though awarded a possibility to do so. See, Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210, Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN,WIPO Case No. D2013-2100; also, the Complainant has sent two email messages to the email address listed in the WhoIs information for the disputed domain name on September 3, 2019 and September 25, 2019, inquiring as to the Respondent’s purpose for registering the disputed domain name but received no response; - the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name as per paragraph 4(b) of the Policy; - the well-known character of the ACCENTURE trademarks – as held for example in Accenture Global Services Limited v. Domains By Proxy, LLC / Norman Shaaban,WIPO Case No. D2018-0731; Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN, supra. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. - also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademark at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name. Furthermore, the Respondent availed of a privacy shield service to protect its identity. While the use of a privacy shield is not necessarily objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler,WIPO Case No. D2016-1357. This Panel also notes that the Respondent Carolina Rodrigues, Fundacion Comercio Electronico has been named as Respondent in a high number of separate previous proceedings under the Policy (more than 50 UDRP cases). It is reasonable to infer from these that the Respondent has engaged in a pattern of cybersquatting. E.g., Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1991; Redbox Automated Retail, LLC d/b/a Redbox v. Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-0812, and the decisions cited there. The Panel concludes that the disputed domain name was registered and 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, Mihaela Maravela
Sole Panelist
Date: December 9, 2019
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