The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States or “U.S”).
The Respondent is Registration Private/Domains By Proxy, LLC, United States / Eric Winter, 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 August 31, 2020. On September 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 2, 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 9, 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 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2020. The Center appointed Francine Tan as the sole panelist in this matter on October 21, 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 owns the ACCENTURE trade mark and company name and has been using the said mark in connection with various services, including management consulting, technology services, and outsourcing services since January 2001. The Complainant has offices and operations in more than 200 cities in 56 countries and is listed in the Fortune Global 500. The Complainant owns many trademark registrations for ACCENTURE in the United States.including U.S. Registration No. 3,091,811 with registration date May 16, 2006; U.S. Registration No. 2,665,373 with registration date December 24, 2002; U.S. Registration No. 3,340,780 with registration date November 20, 2007. Additionally, the Complainant’s ACCENTURE and ACCENTURE-formative marks are registered in more than 140 countries. It operates the website at “www.accenture.com”. The The Complainant states that substantial goodwill in the ACCENTURE mark has been developed over the years. Its annual advertising expenditure worldwide since 2009 have been in the region of USD 67-77 million. The ACCENTURE mark has been recognized in Interbrand’s Best Global Brands Report since 2002 and featured as one of the top global brands by reputable brand consulting companies. For instance, it was ranked #36 on Forbes’ World’s Most Valuable Brands. The Complainant has also received numerous awards for its products and services and business under the ACCENTURE marks. The Complainant supports numerous social development projects worldwide under the ACCENTURE marks. It is also a global sponsor for various sports championship events. The disputed domain name was registered on June 11, 2020. It resolves to a page displaying an Internet browser error message stating “[t]his site can’t be reached”. 5. Parties’ Contentions A. Complainant The disputed domain name is confusingly similar to the Complainant’s ACCENTURE mark in which it has rights. The only difference between the disputed domain name and the ACCENTURE mark lies in the addition of the letters “sas”. The ACCENTURE mark is distinctive in nature and consumers associate the term exclusively with the Complainant. The inclusion of the random letters “sas” fails to negate confusing similarity. The Respondent has no rights or legitimate interests in the disputed domain name. The ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The ACCENTURE mark is globally famous through the Complainant’s substantial, continued and exclusive use in connection with its goods and services. The Respondent is not affiliated with, nor has it been licensed or permitted to use the ACCENTURE mark or any domain names incorporating the ACCENTURE mark. The Respondent, Eric Winter, is not commonly known by the name “Accenture” nor by the disputed domain name. The Respondent is not using the disputed domain name for any purpose and is therefore not providing a bona fide offering of goods and services. The Respondent registered and is using the disputed domain name in bad faith. Given the Complainant’s worldwide reputation and ubiquitous presence of the ACCENTURE marks on the Internet, the Respondent was or should have been aware of the Complainant’s ACCENTURE marks long before he registered the disputed domain name. The Respondent has held the disputed domain name and not used it for any legitimate purpose. It has long been held in UDRP decisions that the passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate Internet purpose, may indicate that the domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established it has rights in the trade mark ACCENTURE. The mark is incorporated within the disputed domain name and can be easily recognized, albeit the letters “sas” have been added. The Panel finds that the addition of these letters does not serve to remove the confusing similarity with the Complainant’s ACCENTURE mark. It is a very well-established that the addition of a term or letters in a disputed domain name which clearly incorporates a complainant’s trade mark is insufficient to make it non-confusingly similar with the trade mark. The Panel therefore concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has presented prima facie evidence and arguments supporting its assertion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is indeed difficult to imagine how the Respondent would be able to persuade in a convincing manner that he has rights or legitimate interests in what is, without doubt, a well-known trade mark. Neither is it plausible that the Respondent had no prior knowledge of the Complainant’s ACCENTURE mark which has been registered and used for many years, long before the disputed domain name was registered. In any event, the prima facie case has not been rebutted by the Respondent. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Accordingly, the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances which, if established, point to bad faith registration and use on the part of the Respondent: “(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; or (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; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (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 incorporation of the entire trade mark ACCENTURE, an invented and distinctive word, in the disputed domain name gives rise to a strong presumption that the Respondent registered the disputed domain name being aware of the Complainant and its trade mark. The Respondent did not offer any explanation for why he chose “accenturesas” for the disputed domain name. His silence speaks volumes. In view of the extensive global presence the Complainant has and the length of time since the ACCENTURE marks have been in use, it is highly improbable that the Respondent was not aware of the Complainant’s business and rights in the trade mark at the time he registered the disputed domain name. It has not been disputed that ACCENTURE is associated exclusively with the Complainant. In the circumstances, there could not be contemplated good faith use of the disputed domain name. The fact that the disputed domain name is passively held does not prevent a finding of bad faith registration and use since the mark is widely known and recognized. This position has been firmly established. (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.) The Panel therefore concludes that the Complainant has satisfied the requirement under paragraph 4(a)(i) 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 Francine Tan
Sole Panelist
Date: October 22, 2020
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