The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Domains By Proxy, LLC, United States / ATC International, 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 July 23, 2020. On July 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 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 29, 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 August 3, 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 August 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 26, 2020. The Center appointed Angelica Lodigiani as the sole panelist in this matter on September 1, 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 leading company providing a broad range of services and solutions in strategy consulting, digital, technology and operations at international level. Since 2001, the Complainant has extensively used the trademark ACCENTURE in connection with various services and specialties, such as management consulting and business process services, comprising various aspects of business operations such as supply chain and logistics services, technology services, outsourcing services, etc. The Complainant is the owner of more than 1,000 registrations worldwide for the trademarks ACCENTURE, ACCENTURE & design, and other trademarks incorporating the word ACCENTURE, for various goods and services. In the United States, the Complainant owns the following United States trademark registrations: Trademark Classes Registration No. Registration Date ACCENTURE 9, 16, 35, 36, 37, 41, and 42 3,091,811 May 16, 2006 ACCENTURE 9, 16, 35, 36, 37, 41, and 42 2,665,373 December 24, 2002 ACCENTURE 6, 8, 9, 14, 16, 18, 20, 21, 24, 28 3,340,780 November 20, 2007 ACCENTURE 18, 25, and 28 2,884,125 September 14, 2004 ACCENTURE & Design 35 and 36 3,862,419 October 19, 2010 The Complainant is also the owner of the domain name The disputed domain name was registered on June 25, 2020. As provided in the Complaint, the disputed domain name resolves to a parking page hosted by the Registrar. 5. Parties’ Contentions A. Complainant The Complainant maintains that the disputed domain name is confusingly similar to its ACCENTURE trademark since it fully incorporate this mark. The addition of the descriptive term “strategy” creates direct reference to the Complainant’s “Accenture Strategy” business division and relating services that is a core component of the Complainant’s services. The Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name since it is not connected to the Complainant, nor has it ever been authorized to register the disputed domain name, or to use its trademark, within the disputed domain name. Furthermore, the Respondent is not commonly known by the disputed domain name. According to the Complainant, the Respondent has not intended to use or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name resolves to a parking page hosted by the Registrar and is therefore inactive. The Complainant submits that the Respondent has registered and has been using the disputed domain name in bad faith as the trademark ACCENTURE enjoys extensive reputation and the Respondent was, or should have been aware of, the ACCENTURE trademark well before the registration of the disputed domain name. The Complainant sent two emails to the Respondent’s email address listed in the WhoIs at the time of the registration of the disputed domain name, to inquire about the reason of its registration, but failed to receive an answer. The fact that the disputed domain name is passively held cannot prevent a finding of bad faith, according to the Complainant, the Respondent registered the disputed domain name to trade off the reputation and goodwill of the Complainant’s ACCENTURE mark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s earlier trademarks since it entirely reproduces the Complainant’s trademark ACCENTURE. Although the descriptive term “strategy”, followed by a hyphen, precedes the ACCENTURE mark, the addition of this 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”)). Also, the hyphen between the word “strategy” and the trademark ACCENTURE does not bear distinctive character. Accordingly, the Panel concludes that the Complainant has successfully proved the existence of the first Policy requirement. B. Rights or Legitimate Interests The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name. While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore, a complainant must make 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 relevant evidence demonstrating rights or legitimate interests in the domain name. The Panel finds that the Respondent is not connected to the Complainant, and that the Complainant never authorized the Respondent to reflect its trademark in a domain name. Furthermore, the Respondent does not appear to be commonly known by the disputed domain name. To the best of the Panel’s knowledge, the Respondent has never used the disputed domain name in connection with a bona fine offering of goods or services, nor has it made any preparations for such use. At the time of the filing of the Complaint, the Respondent was passively holding the disputed domain name and therefore was not making a legitimate noncommercial or fair use of it. In accordance with the general powers conferred to the Panel by the Rules, the Panel has made a quick check on the use of the disputed domain name at the time of the drafting of this decision and has so found that the disputed domain name currently leads to a parking page containing pay‑per-click advertisements. The same parking page also contains the following statement “Interested in strategy-accenture.com? Our Domain Broker Service may be able to get it for you. Find out how”. If one clicks on the “add to cart” button, the Registrar informs the Respondent that there is a potential buyer and acts as a broker in the possible purchase transaction. Previous UDRP panels found that the use of a domain name to host a parked page comprising pay-per-click 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 section 2.9 of the WIPO Overview 3.0). In the instant case, the Complainant’s trademark is a distinctive word and enjoys extensive reputation and goodwill. The Respondent is probably deriving an economic advantage from each click on the links contained in the parking page. In addition, the potential interest to sell a domain name containing a third party’s well-known trademark does not amount to a legitimate noncommercial or fair use of the domain name. All the above is sufficient to establish at least a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has failed to rebut. Accordingly, the Panel is satisfied that also the second requirement under the Policy is met. C. Registered and Used in Bad Faith The Complainant has provided sufficient evidence to support the fact that its trademarks enjoy international reputation. The fact that the Complainant’s trademarks are well known has also been recognized in various other UDRP decisions (see, e.g., Accenture Global Services Limited v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org). / Rajan, Rajan Moshik, WIPO Case No. D2019-1199; Accenture Global Services Limited v. Oneandone Private Registration, 1&1 Internet Inc / Gulam Sayeed Pasha, WIPO Case No. D2019-1602). Given that the descriptive term “strategy” added to the disputed domain name, refers to one of the core activities of the Complainant, it is evident that the Respondent was well aware of the Complainant’s trademarks at the time of the registration of the disputed domain name. The unauthorized registration of a domain name confusingly similar to a third party’s well-known trademark, coupled with the registrant’s lack of rights or legitimate interests in the domain name, amounts to bad faith registration. As far as use in bad faith is concerned, the disputed domain name previously led to a non-active webpage and now leads to a parking page containing pay-per-click links from which the Respondent is probably deriving an economic advantage. Furthermore, the parking page contains a statement attracting visitors to make an offer to purchase the disputed domain name. Said uses of the disputed domain name amount to use in bad faith, even in a case, like the one at issue, where the parking page contains automatically generated contents. Indeed, the Respondent cannot disclaim responsibility for the content of the website associated with its domain name even if the content has been generated by a third party (see section 3.5 of the WIPO Overview 3.0). Furthermore, the passive holding of the disputed domain name would not prevent a finding of bad faith in the circumstances of this case (see section 3.3 of the WIPO Overview 3.0). Therefore, the Panel is of the opinion that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. Accordingly, the Panel concludes that the disputed domain has been registered and is being 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 Angelica Lodigiani
Sole Panelist
Date: September 15, 2020
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