The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Peubez Patrck, 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 July 29, 2020. On July 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 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 August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2020. The Center appointed Rodrigo Azevedo as the sole panelist in this matter on September 3, 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 an international corporation that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations under the mark ACCENTURE, since 2001. The trademark ACCENTURE was registered by the Complainant in several regions of the world, including in the United Stated of America (registration number 3,091,811, obtained on May 16, 2006) and in France (registration number 00 3 071 818, obtained on September 28, 2001). The Complainant is also the holder of the domain name The Respondent registered the disputed domain name The Panel accessed the disputed domain name on September 10, 2020, at which time the disputed domain name was not pointing to any active webpage. However, as evidenced in the Complaint, the disputed domain name has been used in connection with a fraudulent scheme. 5. Parties’ Contentions A. Complainant The Complainant makes the following contentions: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The only difference between the disputed domain name and the Complainant’s ACCENTURE mark is that addition of the letters “fr” and a hyphen in front of the trademark. The letters “fr” appear to refer to the descriptive, geographic abbreviation for France, which the WhoIs record lists as the Respondent’s country. The disputed domain name was registered nearly 18 years after the Complainant first registered its ACCENTURE mark in the United States, and 20 years after the Complainant’s earliest trademark registration in France. The ACCENTURE mark is distinctive and famous. The addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name is completely without legal significance. Adding a descriptive and/or geographic term to a trademark in a domain name fails to negate confusing similarity. In assessing a likelihood of confusion between a registrant’s domain name and a complainant’s mark, points of similarity are weighed more heavily than points of difference. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The Complainant’s ACCENTURE marks are globally famous and have acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use of the marks in connection with the Complainant’s goods and services. The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks. It is clear that the Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which the Respondent registered the disputed domain name to trade on the value of the Complainant’s famous trademark. It appears that the Respondent has chosen to use the Complainant’s famous ACCENTURE trademark in the disputed domain name to create a direct affiliation with the Complainant and its business. The Respondent is not using the disputed domain name for any purpose at this time. Instead, the disputed domain name results in a security warning from the Internet browser. Prior UDRP panels have found that the inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Furthermore, use of a domain name for malicious web attack or malware purposes in no way confers on the Respondent any rights or legitimate interests in the disputed domain name. The Respondent’s failure to use the disputed domain name to provide a bona fide offering of goods and services confirms that it does not have a right or legitimate interest in the disputed domain name, particularly since the Complainant has proven its rights in the marks at issue. Although the Respondent is not using the disputed domain name to host a legitimate website, the Respondent has used the disputed domain name in relation to a corresponding email address, which has been used to impersonate one of the Complainant’s employees in order to perpetuate a financial fraud/phishing scam. - The disputed domain name was registered and is being used in bad faith. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE marks on the Internet, and following the Respondent’s fraudulent activities in association with the disputed domain name and the ACCENTURE company name, it is clear that the Respondent was aware of the ACCENTURE marks long prior to registering the disputed domain name. The Respondent’s use of the disputed domain name with a corresponding email address to pose as the Complainant and to perpetuate a financial fraud/phishing scam constitutes bad faith pursuant to Policy paragraph 4(b)(iv). Therefore, the Respondent registered and is using the disputed domain name in bad faith to intentionally mislead and confuse the public into believing that the Respondent is associated or affiliated with the Complainant for fraudulent purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed domain name 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Annexes E and D to the Complaint shows trademark registrations for ACCENTURE obtained by the Complainant as early as 2001. The disputed domain name differs from the Complainants’ trademark ACCENTURE by the addition of the prefix “fr-” (common acronym for France), as well as the gTLD “.com”. Previous UDRP decisions have found that the mere addition of symbols such as a hyphen or of descriptive/geographical terms to a trademark in a domain name do not avoid a finding of confusing similarity. This has been held in many UDRP cases (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc.,WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork,WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc.,WIPO Case No. D2000-0927). It is also already well established that the addition of a gTLD such as “.com” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark. As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks, and that the Complainant has satisfied the first element of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name: (i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name. The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant showed that the disputed domain name was recently used in connection with phishing and fraudulent schemes. Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location. When the disputed domain name was registered by the Respondent in 2020, the trademark ACCENTURE was already directly connected to the Complainant’s services for almost two decades. Besides the gTLD “.com”, the disputed domain name is comprised of the common acronym for France (“fr”) and of the Complainant’s trademark ACCENTURE, separated by a hyphen. The Respondent (whose informed address is in France) has not provided any justification for the registration of a domain name containing a famous third-party trademark and a reference to such country. Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “fr-accenture” could be a mere coincidence. Currently, there is no active website linked to the disputed domain name, but this is not enough to avoid the Panel’s findings that the disputed domain name is also being used in bad faith. In the Panel’s view, the circumstances that the Respondent is, (a) not presently using the disputed domain name; (b) not indicating any intention to use it; and (c) not at least providing justifications for the registration of a domain name containing third-party trademark, certainly cannot be used in benefit of the Respondent in the present case. Furthermore, in the Panel’s view, the circumstance that the Respondent has recently used the disputed domain name in connection with phishing and fraudulent schemes (as demonstrated by the Complainant) is enough to support a finding of bad faith registration and use of the disputed domain name by the Respondent in the present case. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainants have also satisfied the third element 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 Rodrigo Azevedo
Sole Panelist
Date: September 30, 2020
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