The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States” or “US”).
The Respondent is WhoisGuard Protected/WhoisGuard, Inc., Panama / Helga Fischer, Lithuania. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 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 September 7, 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 September 10, 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 September 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2020. The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 12, 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, Accenture Global Services Ltd, trades internationally (in 56 countries) in providing a broad range of services and solutions including, strategy, consulting, digital and technology services, outsourcing services and operations under the mark ACCENTURE. The Complainant first began using the mark on January 1, 2001. Since then it has extensively used the mark in connection with its services. On October 6, 2000 it filed a US trade mark application (76/154,620) for ACCENTUREcovering inter alia computer software , business and computer consulting services as well as many other services. That mark was granted on May 16, 2006 (No.3091811). The Complainant sets out in the Complaint a representative list of US registrations for the mark ACCENTURE including No. 2,665,373, 3,340,780, 2,884,125 and 3,862,419 the latter incorporating a design. Exhibited at Annex D are true copies of the relevant US certificates of registration. The registrations are valid and subsisting and are prima facie evidence of the Complainant’s ownership of the mark ACCENTURE and its validity. Additionally the Complainant owns more than 1,000 registrations for ACCENTURE and ACCENTURE (and design) in more than 140 countries for goods and services, including, but not limited to, its management consulting, technology and outsourcing services. A representative sample of international registration certificates are exhibited at Annex E. The Complainant, also, as a result of its widespread trading established a substantial trading goodwill in the mark ACCENTURE as well as in the domain name The marks have been advertised through media use. The Complainant has made significant advertising expenditure, for example USD 67 million in 2018. Samples of the advertising are exhibited at Annex H. ACCENTURE is recognized as a leading global brand for example by Interbrand in its reports including its Best Global Brands 2019 Report. part of which is exhibited as Annex I. and by Kantar Millward Brown in its 2020 Brand Z- Top 100 Brand Rankings. This is exhibited as Annex J. For over 18 years the Complainant has been listed in Fortune Global 500. It has also received numerous awards for its business, products and services under the mark ACCENTURE. The Complainant has also used the mark in respect significant social development, sports and cultural initiatives internationally as can be seen from Annexes K to M. The disputed domain name was registered on July 31, 2020. At the time the Complaint was filed, the disputed domain name redirected to Complainant’s website “www.accenture.com/us-en”. 5. Parties’ Contentions A. Complainant The Complainant submits; i. The disputed domain name is confusingly similar to the marks ACCENTURE in which the Complainant has rights. ii. The Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(c) of the Policy. iii. The Respondent registered and is using the disputed domain name in bad faith within paragraph 4(b) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In the absence of a Response the Panel finds the evidence adduced by the Complainant to be true. It finds on the basis of that evidence, as put by the Complainant, that as a result of its extensive use and promotion the ACCENTURE marks have become distinctive and famous globally and have enjoyed such distinctiveness and notoriety since long prior to the date of registration of the disputed domain name, which was on July 31, 2000. It proceeds to determine the Complaint on the basis of the above evidence. A. Identical or Confusingly Similar The Complainant submits that the disputed domain name It relies upon a previous UDRP decision, Accenture Global Services Ltd v Registration Private, Domains by Proxy LLC/John V,WIPO Case No. D2020-0189 in which the Panel found that the addition of descriptive terms to the mark ACCENTURE did not preclude a finding of confusing similarity with the mark. This Panel follows that decision and agrees with the Complainant’s submission that the addition of the term “connect” to the disputed domain name does nothing to reduce its confusing similarity with the mark ACCENTURE especially when the domain name redirects to the Complainant’s own website. The Panel also finds that on well-established previous authority it is entitled to disregard the gTLD “.com” for the purpose of deciding whether the disputed domain name is identical or confusingly similar to the marks relied upon. The Panel therefore finds that the disputed domain name The Complainant submits that ACCENTURE is not a generic or descriptive term in which the Respondent has an interest. The Complainant’s marks ACCENTURE are (as set out above), globally famous as a result of substantial, continuous and exclusive use by the Complainant. Moreover, on the evidence, the Respondent is neither affiliated with, nor has it been licensed or permitted by the Complainant to use the ACCENTURE marks or domain names incorporating ACCENTURE. Under paragraph 4(c)(ii) of the Policy the fact that the Respondent is not licensed or otherwise authorized to use the disputed domain name constitutes prima facie proof that the Respondent lacks any rights or legitimate interests in the domain name. The Panel accepts this submission. The Complainant submits that because the Respondent has registered the disputed domain name via a privacy proxy service in order to conceal its identity, it therefore follows that the Respondent is not commonly known by the domain name and that this does not constitute a legitimate interest in the domain name. It also argues that it is not using the domain name for any legitimate purpose within paragraph 4(c)(i) of the Policy. Rather the domain name redirects to the Complainant’s own web-site at “www.accenture.com/us-en”. This can be seen from Annex U. It is well established that unauthorized redirection to a complainant’s web-site does not constitute evidence of rights or legitimate interest. Having considered the Complainant’s evidence and in the absence of evidence from the Respondent the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. Having done so the burden of proof then shifts to the Respondent to rebut that case by demonstrating the existence of such rights or interests. See, for example; Kate Spade, LLC v Darmstadter Designs,WIPO Case No. D2001-1384. In the absence of a Response, the Respondent has failed to adduce evidence of its use of the domain name to rebut the Complainant’s case. Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in the domain name within paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant relies upon paragraph 4(b)(iv) of the Policy in that bad faith registration and use can be established by showing circumstances indicating that the Respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its web-site by creating a likelihood of confusion with the Complainant’s mark. The Complainant submits that the Respondent would have had constructive notice of the mark ACCENTURE which was registered internationally and that the Complainant traded widely using the mark including on the Internet so that it would have been aware of the Complainant’s rights in the mark before and at the date of registration of the domain name. Support for this view is given by an earlier UDRP decision of Accenture Global Services Limited v ICS Inc/Privacy Protect.org,WIPO Case No. D2013-2098 also in respect of the mark ACCENTURE. In the absence of a Response this Panel finds on the evidence that the Complainant by choosing to use the domain name to redirect to the Complainant’s website would at least have been aware of the likelihood of the Complainant owning rights in the mark ACCENTURE. The Complainant refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) which at section 3.0 describes the circumstances in which the passive holding of a domain name will be considered to be a bad faith registration including “(i) the degree of distinctiveness or reputation of the complainant’s mark”. It submits that it is therefore implausible for the Respondent to have registered the domain name other than to trade off the reputation and goodwill of the Complainant’s marks ACCENTURE given the evidence of redirection to the Complainant’s official website. Taking into account this evidence, while the Panel notes that the redirection to the Complainant’s website cannot be considered as passive holding, the Panel accepts the Complainant’s submission and finds that such redirection is evidence of bad faith use. It also takes into account on the evidence that the identity of the real owner of the website is concealed. The Panel therefore finds that the disputed domain name was registered and is used by the Respondent in bad faith within paragraph 4(a)(iii) 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 Clive Duncan Thorne
Sole Panelist
Date: October 26, 2020
Full & Egal Universal Law Academy