Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / James Farre, James Co Limited, 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 January 27, 2020. On January 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 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 Complainant on January 30, 2020 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 February 4, 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 Respondent of the Complaint, and the proceedings commenced on February 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 28, 2020. The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on March 9, 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 Accenture Global Services Limited is an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations. Complainant, which has offices in more than 200 cities in 56 countries, began using the mark ACCENTURE in connection with its services in January 2001. Complainant owns more than 1,000 registrations for the ACCENTURE and ACCENTURE and design marks in more than 140 countries, including United States Trademark Registration Nos. 3,091,811; 2,665,373; 3,340,780; 2,884,125; and 3,862,419. The first United States trademark registration for the ACCENTURE mark dates back to December 24, 2002. Complainant also owns the domain name Complainant’s ACCENTURE marks have been widely advertised and promoted and the ACCENTURE mark has been recognized as a leading global brand. The disputed domain name Complainant asserts that the disputed domain name is confusingly similar to the ACCENTURE marks. It points out that the only difference between the disputed domain name and the ACCENTURE mark is the addition of the descriptive term “federal” in the plural form (“federals”), which appears to be a direct reference to Complainant’s “Accenture Federal Services” business division that serves Complainant’s government clients. According to Complainant, “adding random characters or a descriptive term to a trademark in a domain name fails to negate confusingly similarity, especially when the descriptive term suggests an affiliation with Complainant[…].” Complainant further notes that the addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name is “completely without legal significance.” Complainant next contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that Respondent is neither affiliated with nor licensed or permitted to use Complainant’s ACCENTURE marks or any domain names incorporating such marks. Complainant further contends, based on information and belief, that Respondent is not commonly known by the disputed domain name and that Respondent’s use of the disputed domain name to run click-through links or to redirect users to sponsored websites does not qualify as a bona fide offering of goods or services. Nor can such use, for which Respondent presumably receives compensation for each misdirected user, be considered a legitimate noncommercial or fair use of the domain name, Complainant declares. With respect to the issue of bad faith registration and use, Complainant maintains that, given Complainant’s worldwide reputation, Respondent was or should have been aware of Complainant’s ACCENTURE marks long prior to registration of the disputed domain name. “In addition, Respondent’s use of the [disputed domain name] to redirect Internet users to commercial websites through various sponsored click-through links constitutes bad faith and indicates that Respondent registered and is using the [disputed domain name] with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s ACCENTURE mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.” Citing the panel’s decision in McDonald’s Corp. v. ZusCom,WIPO Case No. D2007-1353, Complainant points out “that UDRP panels have long recognized that the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy”. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel concludes that the disputed domain name is confusingly similar to the ACCENTURE mark. As noted by Complainant, the disputed domain name incorporates in full the term “accenture,” adding only the descriptive term “federals” and the generic gTLD “.com.” The term “federals” does not serve to distinguish the disputed domain name from the ACCENTURE trademark. See Accenture Global Services Ltd. v. Whois Privacy Protection Service, Inc./Robert Green,WIPO Case No. D2013-2100 (finding the domain name The Panel further determines that Complainant, through its ownership of trademark registrations for the ACCENTURE mark, as well as its longstanding use of such mark, has rights in the ACCENTURE mark. B. Rights or Legitimate Interests The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. The Complainant alleges that it never licensed or otherwise authorized Respondent to use the ACCENTURE mark as part of the disputed domain name. There also is no evidence that Respondent is commonly known by the disputed domain name. The evidence further indicates the disputed domain name resolves to a website featuring pay-per-click-through links. That being the case, the Panel determines that Respondent is not engaged in a bona fide offering of goods or services under the disputed domain name. (Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.) See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, section 2.9 and cases cited therein.) And, since it is presumed that Respondent earns revenue for each misdirected Internet user, it cannot be found that Respondent is engaged in a legitimate noncommercial use of the ACCENTURE mark. Nor is Respondent using the disputed domain name in a descriptive manner so as trigger the fair use provision of paragraph 4(c)(iii) of the Policy. C. Registered and Used in Bad Faith The Panel concludes that Respondent registered and is using the disputed domain name in bad faith. Complainant’s ACCENTURE mark was first used in 2001, 19 years prior to Respondent’s registration of the disputed domain name, and has been widely advertised and promoted throughout the world. As such, it may be presumed that Respondent was aware of the ACCENTURE mark at the time the disputed domain name was registered. Such fact supports a finding of the requisite bad faith. See Caesar’s World, Inc. v. Forum LLC,WIPO Case No. D2005-0517. The evidence further establishes that, by using the disputed domain name, Respondent intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant’s ACCENTURE mark as to the source, sponsorship, affiliation, or endorsement of his website, within the meaning of paragraph 4(b)(iv) of the Policy. As determined above, the disputed domain name is confusingly similar to the ACCENTURE mark; indeed, use of the term “federals” as part of the disputed domain name exacerbates the likelihood of confusion given the fact that Complainant’s business includes a division devoted to serving the public sector and is likely to be viewed by Internet users as referring to that division of Complainant’s business. The evidence further supports a determination that the disputed domain name is used for commercial gain, insofar as the disputed domain name resolves to a website featuring pay-per-click links. The requisite intent is presumed, given the longstanding use and promotion of Complainant’s mark for nearly 20 years prior to registration of the disputed domain name. 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 Jeffrey M. Samuels
Sole Panelist
Date: March 23, 2020
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