The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“US”).
The Respondent is Janaka De Silva, Sri Lanka. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2020. On February 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 March 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 30, 2020. The Center appointed Marilena Comanescu as the sole panelist in this matter on April 17, 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. The language of the proceedings is English. 4. Factual Background The Complainant, based in Ireland, is an international business that provides a range of services and solutions in strategy, consulting, digital, technology and operations under the mark ACCENTURE since January 2001. The Complainant has offices and operations in more than 200 cities in 56 countries, including in Sri Lanka. The Complainant claims it has more than 1,000 trademark registrations in more than 140 countries worldwide for or including ACCENTURE mark, such as the following: - the US trademark No. 3091811 registered on May 16, 2006 for ACCENTURE, covering goods and services in International Classes 9, 16, 35, 36, 37, 41 and 42; - the Sri Lanka trademark No. 102900 registered on October 6, 2000 for ACCENTURE, covering goods in International Class 16; and - the Sri Lanka trademark No. 103312 registered on November 14, 2000 for ACCENTURE and design, covering services in International Class 42. The Complainant’s main website is available at “www.accenture.com”. The Complainant invested in and used extensively its ACCENTURE trademark worldwide and obtained numerous international confirmations and accolades. Previous UDRP Panels have found that the Complainant’s ACCENTURE trademark is well-known worldwide. See for example Accenture Global Services Limited v. Valentin Petit,WIPO Case No. D2020-0348; Accenture Global Services Limited v. Domain Administrator, See PrivacyGuardian.org / Tu Do, Nguyen Thi Ha Linh,WIPO Case No. D2020-0164; or Accenture Global Services Limited v. ICS INC. / Privacy Protect.org,WIPO Case No. D2013-2098. The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its well-known trademark ACCENTURE with a descriptive term “con”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requests the transfer of the disputed domain name to it. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In view of the abscence of a Response, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met: (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 the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar The Complainant holds rights in the ACCENTURE trademark. The disputed domain name incorporates the Complainant’s trademark ACCENTURE with an additional three letter term. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name. Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of theWIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0. Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ACCENTURE, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests The Complainant asserts that it has given no license or other right to use or register its trademark to the Respondent, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP”. See paragraph 2.1 of theWIPO Overview 3.0. The Respondent has not replied to the Complainant’s contentions, alleging any rights or legitimate interests in the disputed domain name. Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been known by this disputed domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. In fact, at the time of filing the Complaint the disputed domain name resolved to a website which was offering goods and services, competing with, or having the potential to compete with, the Complainant’s consulting services. Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith The Complainant’s ACCENTURE trademark, registered since at least 2002, consists of a coined mark, globally well-known and vested with significant goodwill. The disputed domain name was registered in 2019 and incorporates the ACCENTURE mark together with an additional non-distinctive term. For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark. According to the Complaint evidence, at the time of filing the Complaint, the disputed domain name was used to divert Internet users to a website on which the Respondent advertises and promotes consultancy business that compete with the Complainant’s similar service, such as those in the field of construction. The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for Internet users with regard to a potential affiliation/connection with the Complainant. This impression is increased by the use of the Complainant’s trademark in the disputed domain name and the content on the website corresponding to the disputed domain name. Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location” is evidence of registration and use in bad faith. Given that the Complainant’s trademark is distinctive and well-known worldwide, the disputed domain name incorporates the Complainant’s trademark, and the website operated under the disputed domain name provides similar services to those offered by the Complainant, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that it is a website held, controlled by, or somehow related to or endorsed by the Complainant, for its commercial gain. Further, it has been consistently found by UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark can constitute, by itself, a presumption of bad faith for the purpose of Policy. See section 3.1.4 of the WIPO Overview. The Respondent has not participated in the present proceedings in order to provide arguments in its favor. Having in view the other circumstances of this case, such facts constitute further evidence of bad faith. For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 Marilena Comanescu
Sole Panelist
Date: April 30, 2020
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