The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Contact Privacy Inc. Customer 1245827525, Contact Privacy Inc. Customer 1245827525, Canada / Name Redacted 1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2019. On December 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 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 December 6, 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 December 10, 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 December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. On December 26, 2019, the Center received an email communication from [Name Redacted] regarding identification of the Respondent to which it replied. No further communications from [Name Redacted] were received by the Center and no substantive Response was filed. On January 6, 2020, the Center informed the Parties that it would proceed to appoint the Panel. The Center appointed Daniel Peña as the sole panelist in this matter on January 22, 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 The Complainant is an international business offering various services, including management consulting, technology services and outsourcing services. It has offices and operations in more than 200 cities in 56 countries. The Complainant’s employees total over 470,000, providing services across 139 global locations. The Complainant filed a United States trademark application (Application No. 76,154,620) for the mark ACCENTURE on October 6, 2000, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services. This application resulted in registration (Registration No. 3,091,811) on May 16, 2006. The Complainant holds several other trademark registrations for the ACCENTURE mark and ACCENTURE with design elements: ACCENTURE, for various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42, No. 3,091,811 of May 16, 2006; The Complainant also owns registrations for the ACCENTURE and ACCENTURE & Design marks in more than 140 countries for a variety of products and services including, but not limited to, management consulting, technology services and outsourcing services. The Complainant registered the domain name The disputed domain name was registered on November 7, 2019. The disputed domain name is not currently used by the Respondent. 5. Parties’ Contentions A. Complainant The Complainant points out that it has expended considerable amounts on advertising around the world in relation to its ACCENTURE marks, for instance in 2017 it expended USD 69 million. The Complainant argues that the ACCENTURE mark was ranked 34th in the 2018 Interbrand’s Best Global Brands Report, its highest ranking ever. For the past 16 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies. The Complainant says it has received numerous awards for its business, products and services provided under the ACCENTURE marks, and points out that millions of sports fans come across the ACCENTURE marks because the Complainant is the Official Technology Partner for the RBS 6 Nations Rugby Championship since 2012. The Complainant was a sponsor of the World Golf Championships and the title sponsor of the series’ season-opening, the Accenture Match Play Championship event. The Complainant contends that the disputed domain name is very similar to the Complainant’s ACCENTURE mark, the only difference being that it adds the letter “r”, which does not appear to have any particular meaning in this context. Because the ACCENTURE mark consists of a coined term, it should, according to the Complainant, be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand (as demonstrated by heavy advertising worldwide). The Complainant also says that adding random characters or a descriptive term to a trademark in a domain name does not negate confusing similarity. In assessing a likelihood of confusion between a domain name and a complainant’s mark, points of similarity should in any case be weighed more heavily than points of difference, according to the Complainant. The Complainant asserts that its ACCENTURE mark is not a generic or descriptive term in which the Respondent might therefore have an interest. The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating them. The Respondent is said not to be commonly known by the disputed domain name, nor known as such prior to the date on which the Respondent registered the disputed domain name for the purpose of trading on the value of what the Complainant describes as its famous trademark. The Complainant points out that the Respondent registered the disputed domain name via a privacy proxy service in order to mask its identity, and that the Respondent has chosen to use the ACCENTURE trademark to generate a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate, noncommercial fair use of the disputed domain name, according to the Complainant. The Respondent is also not using the disputed domain name. The Complainant points out that the Respondent had constructive notice that the ACCENTURE mark was a registered trademark in the United States and many other jurisdictions. Because of what the Complainant says is its worldwide reputation and the ubiquitous presence of its ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE marks a long time before registering the disputed domain name. The Complainant submits that there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of its marks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Considering these requirements, the Panel rules as follows. A. Identical or Confusingly Similar The Panel holds that the disputed domain name The Panel is satisfied that the disputed domain name Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the ACCENTURE marks is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Panel finds that the Respondent has registered as a domain name the same expression registered previously by de the Complainant, merely adding a letter “r”. This kind of conduct is considered an act of “typosquatting” or registering a domain name that is a common misspelling of a mark in which a party has rights has often been recognized as evidence of bad faith registration per se. Paragon Gifts, Inc. v. Domain.Contact, WIPO Case No. D2004-0107 (citing National Association of Professional Baseball Leagues, d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011); ESPN, Inc. v. XC2, WIPO Case No. D2005-0444 (finding that the practice of “typosquatting”, of itself, is evidence of the bad faith registration of a domain name). The Panel concurs with this approach. As to use in bad faith, the Complainant says that, whilst the disputed domain name has not been put to any substantial use in connection with an active website, since the Respondent has held the disputed domain name for nearly one month. It has long been held in UDRP decisions that the passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate Internet purpose, may indicate that the domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows (WIPO Case No. D2000-0003) (Attached as Annex Z); Jupiters Limited v. Aaron Hall (WIPO Case No. D2000-0574). The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.3, 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.” See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado (WIPO Case No. D2018-0082) The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain name 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 Daniel Peña 1 On the basis of the case file presented to the Panel, it seems that Respondent is not the true holder and registrant of the Domain Name. In light of a potential identity theft, the Panel, therefore, has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Domain Name, which includes the name of the registrant according to the Registrar’s WhoIs database. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
ACCENTURE for various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42, No. 2,665,373 of December 24, 2002;
ACCENTURE for various goods in Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28, No. 3,340,780 of November 20, 2007;
ACCENTURE for various goods in Classes 18, 25 and 28, No. 2,884,125 of September 14, 2004; and
ACCENTURE with design, for various services in Classes 35 and 36, No. 3,862,419 of October 19, 2010.
Sole Panelist
Date: February 2, 2020
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