Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
Respondent is Registration Private, Domains By Proxy LLC, United States / 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 November 24, 2019. On November 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 26, 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 Complainant on November 28, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 2, 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 December 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 2, 2020. The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on January 20, 2020. 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, with offices and operations in more than 200 cities in 56 countries, providing a broad range of services and solutions in strategy, consulting, digital, technology and operations under the name Accenture. The table below sets out a representative list of United States trade mark registrations for the ACCENTURE mark. Complainant also owns more than 1,000 registrations for the ACCENTURE mark and ACCENTURE & Design mark in more than 140 countries. Mark Goods and Services Registration No. Registration Date ACCENTURE Classes 9, 16, 35, 36, 37, 41 and 42 2,665,373 December 24, 2002 ACCENTURE Classes 18, 25 and 28 2,884,125 September 14, 2004 ACCENTURE Classes 9, 16, 35, 36, 37, 41 and 42 3,091,811 May 16, 2006 ACCENTURE Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28 3,340,780 November 20, 2007 ACCENTURE & Design Classes 35 and 36 3,862,419 October 19, 2010 (collectively “Complainant’s Mark”). According to the publicly available WhoIs the Domain Name was registered on October 29, 2019 and resolves to a pay-per-click (“PPC”) webpage. 5. Parties’ Contentions A. Complainant Complainant states that it has used Complainant’s Mark since January 2001 and has developed substantial goodwill in both its Accenture name and Complainant’s Mark, as well as its official domain name Complainant asserts that Complainant’s Mark has been well recognized for its business services and brand recognition by leading market research and brand valuation companies, including Interbrand’s Best Global Brands Report, 2018 Interbrand’s Best Global Brands Report, and Kantar Millward Brown’s annual BrandZ – Top 100 Brand Rankings. Also, for the past 16 years, it has been listed in the Fortune Global 500. Complainant has also received numerous awards for its business, products and services provided under Complainant’s Mark. Complainant contends that due to its extensive use and promotion, Complainant’s Mark has become distinctive and famous globally. Complainant points out that the Domain Name was registered on October 29, 2019, more than 17 years after Complainant first registered Complainant’s Mark in the United States. Complainant contends that Complainant’s Mark is not a generic or descriptive term but is a coined term and submits that the Domain Name is confusingly similar to Complainant’s Mark as it contains Complainant’s Mark in its entirety, except for the prefix of the letters “myte”. Complainant goes on to state that Respondent’s addition of the letters “myte” to the Domain Name does nothing to reduce the confusing similarity with Complainant’s Mark and as such, Internet users are very likely to be confused as to whether an association exists between the Domain Name and Complainant. Complainant advises that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s Mark or any domain names incorporating said Mark. Complainant claims that Respondent is not making a legitimate, noncommercial fair use of the Domain Name; nor is Respondent using the Domain Name in connection with a bona fide offering of goods or services. Complainant submits that Respondent is using the Domain Name to host a website that promotes other commercial links and websites, and Respondent’s use of the Domain Name to run click-through links or to redirect users to sponsored websites does not qualify as a bona fide offering of goods and services. Complainant submits that Respondent is using the Domain Name to trade off the reputation and goodwill associated with Complainant’s Mark to misleadingly divert Internet traffic from Complainant’s website to Respondent’s website for commercial gain. Complainant advises that when it became aware of the registration of the Domain Name, on November 4, 2019, it sent an email to the email address listed in the WhoIs information for the Domain Name, inquiring as to Respondent’s purpose for registering the Domain Name, but it has received no response from Respondent. Complainants asserts that Respondent’s use of the Domain Name to redirect Internet users to commercial websites through various sponsored click-through links is in bad faith and indicates that Respondent registered the Domain Name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainant conducts an international business in 56 countries, providing services in the strategy, consulting, digital, technology and operations areas under the name Accenture. Complainant has registered Complainant’s Mark or derivatives thereof in more than 140 countries. Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it consists of Complainant’s Mark in its entirety, prefixed by the letters “myte”. It argues that the letters “myte” do not negate the confusing similarity. Respondent does not explain its actions or try to refute the allegations made by Complainant. In the absence of such response, it is found that: a) Complainant has rights in respect of Complainant’s Mark. b) The Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests In terms of assessing whether Respondent has rights or legitimate interests in the Domain Name, absent any response from Respondent, the Panel finds that Respondent is not sponsored by or affiliated with Complainant, nor has Respondent been licensed, authorized, or permitted to register domain names incorporating Complainant’s Mark. Further, Respondent is not commonly known by the Domain Name. Complainant asserts that Respondent is using the Domain Name to host a website that promotes other commercial links and websites. Complainant argues that Respondent’s activities in running click-through links or to redirecting users to sponsored websites does not qualify as a bona fide offering of goods and services. That argument suggests the Domain Name is being used for monetization purposes. It has merit. Based on the above, the Panel is satisfied that the second element of the Policy has been met. C. Registered or Used in Bad Faith Given Complainant’s use and registration of Complainant’s Mark, and its international business activities, the Panel infers that Respondent knew of Complainant’s Mark when registering the Domain Name. The Panel finds that Respondent registered and is using the Domain Name to take bad faith advantage of Complainant’s long-standing interest in Complainant’s Mark, at the time of registration of the Domain Name; and since (PPC monetization). The Panel thus finds that the third limb of the Policy has been met. 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 Clive L. Elliott Q.C.
Sole Panelist
Date: February 4, 2020
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