The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Valentin Petit, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 1, 2020, 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 July 4, 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 July 6, 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 July 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020. The Center appointed Jane Lambert as the sole panelist in this matter on August 31, 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 a well-known professional services firm operating in 56 countries. Such services include management consultancy, logistics and outsourcing. It supplies those services under the trade mark ACCENTURE which it has registered in over 140 countries. Examples of those registrations are appended to the Complaint as Annex D. One of the countries in which that mark is registered is the United States. The word mark ACCENTURE was registered on May 16, 2006 for a wide range of goods and services in classes 9, 16, 35, 36, 37, 41, and 42 under registration number 3,091,811. Nothing is known of the Respondent other than his name, phone, email and address. Annex T to the Complaint exhibits the screen dump of a page dated June 25, 2020 at 10:59. The Disputed Domain Name appears in the browser. The words “Not Found” and “The requested URL was not found on this server” are displayed on the website at the Disputed Domain Name. When the Panel typed in the Disputed Domain Name into her browser at 10:50 on September 6, 2020 it resolved to a page with the domain name The Complainant requests the transfer of the Disputed Domain Name on the grounds that: - It is confusingly similar to a trade mark in which the Complainant has rights; and As to the first ground, the Complainant says that the Disputed Domain Names is confusingly similar to its ACCENTURE trade mark. The only differences are the addition of the word “eservice” before a hyphen and the trade mark and a hyphen and the betters “be” after the trade mark. With regard to the second ground, the Complainant says that none of the circumstances in paragraph 4(c) of the Policy applies. The Respondent is not affiliated with the Complainant and it has not been licensed or permitted to register the Disputed Domain Name. There is no evidence that the Respondent is commonly known by the Disputed Domain Name. It is not making any legitimate use of the Disputed Domain Name. In respect of the third ground, the Complainant submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web page, by creating a likelihood of confusion with the Complainant’s marks 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 within the meaning of paragraph 4(b)(iv) of the Policy. The Complainant adds that the Respondent had actual and almost certainly actual knowledge of the Complainant’s trade marks and that knowingly registering a domain name incorporating a trade mark of a well-known business without lawful excuse is itself an act of bad faith. Relying on as Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, the Complainant accuses the Respondent of passive holding which would also evidence bad faith. Moreover, the Complainant submits that the Respondent has demonstrated a pattern of bad faith conduct, as the Complainant has obtained a transfer decision in a previous UDRP case against the Respondent, in which the Respondent registered the domain names The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The agreement by which the Respondent registered the Disputed Domain Name incorporated paragraph 4(a) of the Policy: “You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar The Panel is satisfied that the first element is present. The Complainant is the registered proprietor of United States trade mark number 3,091,811 mentioned above. It is therefore a trade mark in which the Complainant has rights. The Respondent has registered a domain name that combines the registered mark with the words/letters “eservice” and “be”. “E” is used frequently as an abbreviation for “electronic” in English and “électronique” in French. “Service” has the same meaning in English and French. “BE” is the international abbreviation for Belgium. Such additional terms do not prevent a finding of confusing similarity. It follows that the Disputed Domain Name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests The Panel finds that the second element is present. The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)providesthe following guidance: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In the Panel’s judgment, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant has considered whether any of the circumstances in paragraph 4(c) of the Policy might apply and has found no evidence that they do. It has confirmed that it has no connection with the Respondent and that it has neither licensed nor permitted the Respondent to register the Disputed Domain Name. Without such licence or permission, it is difficult to see how the Respondent could register the Disputed Domain Name without risking an action for trade mark infringement or passing off. Moreover, the Disputed Domain Name includes “eservice” and “be” before and after the Complainant’s trade mark. It is likely that at least some Internet users would be led to believe that the Disputed Domain Name is the URL for the Complainant’s services in Belgium. According to section 2.1 of the WIPO Overview 3.0, “the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” The Respondent has had ample opportunity to adduce such evidence but has not done so. As the Respondent has failed to come forward with such evidence, the Complainant is deemed to have satisfied the second element. C. Registered and Used in Bad Faith The Panel holds that the third element is present. Paragraph 4(b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. There are three sub-paragraphs that may apply to this case: “(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;” “(ii) you have 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 you have engaged in a pattern of such conduct;” and “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” The main evidence that sub-paragraph (i) applies is that the Disputed Domain Name is being offered for sale right now. The words “Ce nom de domaine vous intéresse?” (“Does this domain name interest you?”) could not be more explicit. The price would obviously be for negotiation but the vendor would expect more than he paid for the name. As for sub-paragraph (ii), the Panel notes that the Complainant has obtained a transfer decision in a previous UDRP case against the Respondent, in which the Respondent registered the domain names As for sub-paragraph (iv), the Panel has already found that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark. It follows that the current use of the Disputed Domain Name may create a likelihood of confusion with the Complainant’s mark as to the source of the website. Internet users enquiring about the Complainant’s services in Belgium would be attracted to that site. The words “Ce nom de domaine vous intéresse?” (“Does this domain name interest you?”) anticipate a sale from which there would be “for commercial gain”. Alternatively, the words “but without limitation” indicate that conduct of the same nature as the circumstances in paragraph 4(b) of the Policy could constitute evidence of registration and use in bad faith. The Panel finds that the totality of the circumstances mentioned above is ejusdem generis as any of the circumstances listed in paragraph 4(b) of the Policy. Further, the Panel agrees that the Respondent’s registration of the Disputed Domain Name incorporating the trade marks of a well-known company and previously inactive use of the Disputed Domain Name for no good reason does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. In the absence of any evidence to the contrary, the Panel concludes that the Disputed Domain Name has been registered and used in bad faith. 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 Jane Lambert
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
- The Disputed Domain Names is registered and used in bad faith.
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
Sole Panelist
Date: September 14, 2020
Full & Egal Universal Law Academy