The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Ko, Ko, 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 November 5, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 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 November 7, 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 November 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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019. The Center appointed Olga Zalomiy as the sole panelist in this matter on December 11, 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 a broad range of services and solutions in strategy, consulting, digital, technology, and operations under the name ACCENTURE. The Complainant is the owner of the ACCENTURE trademark. The Complainant owns numerous trademark registrations for the ACCENTURE trademark, such as: - The United States trademark registration No. 3091811 that was registered on May 16, 2006; and The Domain Name was registered on October 15, 2019. The Domain Name does not resolve to any active website. 5. Parties’ Contentions A. Complainant The Complainant claims that it is an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology, and operations under the name ACCENTURE and is the owner of the ACCENTURE trademark and company name, and marks fully incorporating the ACCENTURE trademark. The Complainant contends that it owns registrations for the ACCENTURE mark and ACCENTURE & Design mark in more than 140 countries. The Complainant owns more than 1,000 registrations for the marks. The Complainant submits that the Domain Name is highly similar to the famous ACCENTURE Marks. The Complainant claims that is the insertion of the letter “l” between the letters “n” and “t” of the ACCENTURE trademark, which serves to create a typographical misspelling in the Domain Name, as well as a similar visual appearance and phonetic pronunciation when compared to the ACCENTURE trademark. The Complainant states that the addition of a generic Top-Level Domain (“gTLD”) to the Domain Name is completely without legal significance. The Complainant states that the Respondent has no legitimate interests in the Domain Name. The Complainant submits 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 marks. The Complainant alleges that the Respondent is not commonly known by the Domain Name. The Complainant claims that the Domain Name has been used to create “[...]@accenlture.com” email addresses, which were then used to pose as representatives of the Complainant under the name of existing employees and to send email requests for payment of falsified invoices to the Complainant’s customer. The Complainant states that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Complainant contends that the Domain Name resolves to a page that results in an Internet browser error message stating, “[t]his site can’t be reached.” The Complainant claims that the Respondent registered and is using the Domain Name in bad faith. The Complainant contends that the Respondent was aware of the Complainant’s ACCENTURE trademarks prior to registering the Domain Name based on the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE Marks on the Internet, and given the Respondent’s fraudulent activities in association with the Domain Name. The Complainant argues that the Respondent has used the Domain Name to perpetuate financial fraud and to falsely obtain a financial gain from the Complainant’s third-party partner using the Domain Name. The Complainant alleges that the Respondent’s failure to otherwise use the website at the Domain Name for any legitimate purpose also constitutes bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the UDRP, to succeed in this proceeding, the Complainant must prove each of the following elements with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar Under the first UDRP element, the Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Under section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. The Complainant satisfied the standing requirement in this case by proving its ownership of numerous ACCENTURE trademark registrations. Where a domain name “consists of a common, obvious, or intentional misspelling of a trademark”,1 the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.2 Here, the Domain Name consists of the word “accenlture” and the gTLD “.com”. Because the word “accenlture” is a misspelling of the well-known ACCENTURE trademark, the Domain Name is confusingly similar to the Complainant’s trademark. The insertion of the letter “l” between the letters “n” and “t” of the ACCENTURE trademark in the Domain Name would not prevent a finding of confusing similarity under the first element. The gTLD “.com” does not detract from confusing similarity because “[t]he applicable Top‑Level Domain (“TLD”) in a domain name … is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” Thus, the Complainant has satisfied the first element of the UDRP. B. Rights or Legitimate Interests Under the second UDRP element, a complainant must make a prima facie case in respect of the lack of rights or legitimate interests of the respondent.3 Once the Complainant has made out the prima facie case, the respondent carries the burden of producing evidence demonstrating it has rights or legitimate interests in the domain name.4 Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.5 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name because the Complainant has not authorized the Respondent to use or register the Complainant’s ACCENTURE trademark, or to register any domain names incorporating the ACCENTURE mark. Previous UDRP panels have found that absence of any license or permission from a complainant to use that complainant’s trademarks constitutes prima facie proof for the Complainant that the Respondent lacks any rights or legitimate interests in the Domain Name. See CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251. The Respondent’s non-use, or passive holding, of the Domain Name is further evidence that it does not have any rights or legitimate interest in the Domain Name. See, e.g., Bayerische Motorken Werke AG v. David Weiss, Weiss Ent,WIPO Case No. D2017-2145 (“The Panel agrees that the use of the disputed domain name in connection with a ‘coming soon’ website is analogous to non-use or passive holding, which does not constitute a bona fide offering of goods or services nor a legitimate noncommercial or fair use.”) The Respondent has not been commonly known by the Domain Name. The Respondent provided no evidence that the Respondent owns trademark registrations or registered a business under the Domain Name. The WhoIs information on file shows that the Respondent identified itself as “Ko” and its organization as “Ko”. While the Complainant alleges that the Respondent used the Domain Name to create “[...]@accenlture.com” email addresses, which were then used to perpetuate a financial fraud, there is no evidence before the Panel to support these allegations. The Panel finds that the Complainant has made out the prima facie case and the burden of producing evidence demonstrating it has rights or legitimate interests in the Domain Name shifted to the Respondent.6 Because the Respondent failed to present any rebutting evidence, the Complainant is deemed to have satisfied the second element of the UDRP. That said, the Panel notes that the Complainant’s lawyer has attested to the veracity of its claims and also that the Complainant has been the target of similar behavior in a parallel case (Accenture Global Services Limited v. Lucas Pedro,WIPO Case No. D2019-2712). C. Registered and Used in Bad Faith Under the third UDRP element, the Complainant is required to prove that the Domain Name was registered and is being used in bad faith. It is well-established, that “the mere registration of a domain name that is identical or confusingly similar (particularly domain name comprising typos […]) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”7 The evidence on file shows that the Complainant’s trademark is widely known, therefore the Respondent’s unauthorized registration of the Domain Name that is confusingly similar to the Complainant’s trademark is in bad faith. Further, the registration of the Domain Name, which contains a misspelling of the Complainant’s well-known ACCENTURE trademark, constitutes registration and use bad faith. See, Go Daddy Software, Inc. v. Daniel Hadani,WIPO Case No. D2002-0568 (where the panel found that typosquatting is virtually per se registration and use in bad faith). Finally, non-use of a domain name would not prevent finding of bad faith under certain circumstances.8 The following circumstances 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, … and (iv) the implausibility of any good faith use to which the domain name may be put”.9 All of those circumstances are present in this case. The Complainant’s mark is well-known. The Respondent failed to submit a response or to provide any evidence of actual or contemplated good-faith use of the Domain Name. Any good faith use of the Domain Name is implausible. Therefore, the Panel finds that the Domain Name was registered and is being used in bad faith. The third element of the UDRP has been proved. 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 Olga Zalomiy 1 Section 1.9, WIPO Overview 3.0. 2 Id. 3 Section 2.1, WIPO Overview 3.0. 4 Id. 5 Id. 6 See section 2.1, WIPO Overview 3.0. 7 See Section 3.1.4, WIPO Overview 3.0. 8 Section 3.3, WIPO Overview 3.0. 9 Id.
- The United States trademark registration No. 3340780 that was registered on November 20, 2007.
Sole Panelist
Date: December 19, 2019
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