The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Duram Mascarin, Canada. 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 31, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2020, 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 January 6, 2020 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 January 7, 2020. 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 January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2020. The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on February 12, 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 provides a broad range of management consulting, technology services and outsourcing services under the name “Accenture” worldwide. It began using the name and trademark ACCENTURE on January 1, 2001. The trademark ACCENTURE has been recognized as a leading global brand. The Complainant is the owner of various registrations worldwide for the trademark ACCENTURE, including United States trademark registration number 3,091,811 registered on May 16, 2006 in relation to goods and services of classes 9, 16, 35, 36, 37, 41 and 42. The Complainant owns the domain name The Respondent registered the disputed domain name on October 22, 2019. The Respondent did not use the disputed domain name in connection to an active website. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain name is partly identical and confusingly similar to its famous ACCENTURE trademark and that the adjunction of the generic term “logistics” is an attempt to refer to the Complainant’s freight and logistics consulting services. Further, the Complainant argues that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the ACCENTURE mark or any domain names incorporating ACCENTURE. The Complainant also claims that the Respondent is not commonly known by the disputed domain name. According to the Complainant, it is clear that the choice of the famous ACCENTURE trademark aims at creating a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy. 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 before registering the disputed domain name. The Complainant alleges that Respondent is passively holding the disputed domain name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following: (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name registered by the respondent has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant owns various trademark registrations for the mark ACCENTURE. The disputed domain name As a rule, UDPR Panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0)). In the present case, the trademark ACCENTURE is the most distinctive element in the disputed domain name. The mere addition of the descriptive term “logistics” does not change the overall impression produced by the disputed domain name and is not sufficient to distinguish the disputed domain name from the Complainant’s trademark (See for example DEKRA e.V.v. Andrzej Potrac, WIPO Case No. D2015-1223: “Likewise, the addition of the descriptive term “logistics”, which describes the purported services, does not provide any distinction under these circumstances”). UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark (see section 1.11 of the WIPO Overview 3.0). The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Accenture”. The Respondent did not file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and that the Respondent’s silence corroborates such prima facie case. Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy C. Registered and Used in Bad Faith Given the well-known character of the ACCENTURE trademark, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered the disputed domain name. There is no indication that the Respondent made any use of the disputed domain name since its registration in October 22, 2019. In certain circumstances, panelists have held that passive holding of a domain name could amount to use in bad faith. 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 (section 3.3 of the WIPO Overview 3.0). In the case at hand, the three first factors are present: the trademark ACCENTURE is well-known, the Respondent failed to submit a Response or to allege any actual or contemplated use, and the Respondent did not provide accurate contact details. Indeed, the DHL shipment of the complaint could not be delivered. With respect to the fourth factor, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain name, given the fact that the disputed domain name combines the Complainant’s trademark with a term referring to one of the Complainant’s lines of business, and that there is no relationship between the Respondent and the Complainant. Such being the case, consumers would certainly mistakenly assume that an active website connected to the disputed domain name is operated or endorsed by the Complainant, when such is not the case. The Panel accordingly reaches the conclusion that the passive holding of the disputed domain name amounts to use in bad faith given the circumstances of the case. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, and that the Complainant has satisfied the condition set forth in paragraph 4(a)(iii) of the Policy. 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 Anne-Virginie La Spada
Sole Panelist
Date: February 26, 2020
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