The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Pattie LaVance, 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 March 2, 2021. On March 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 11, 2021, 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 March 15, 2021. 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 March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021. The Center appointed Warwick Smith as the sole panelist in this matter on April 21, 2021. 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 corporation based in Dublin, Ireland. It operates an international business in which it provides a broad range of management consulting, digital technology, and other services under the name “Accenture”. It is the owner of numerous ACCENTURE trade marks which are registered in numerous jurisdictions around the world. According to the amended complaint, it has offices and operations in more than 200 cities in 51 countries. The Complainant’s trade mark registered in the United States of America include the following – Mark Goods and Services Registered Number Registration Date ACCENTURE Various goods and services in Classes 9, 16, 35, 36, 37, 41, and 42 3,091,811 May 16, 2006 ACCENTURE Various goods and services in classes 9, 16, 35, 36, 37, 41, and 42 2,665,373 December 24, 2002 ACCENTURE Various goods and services in classes 6, 8, 9, 14, 16, 18, 20, 21, 24, and 28 3,340,780 November 20, 2007 In addition to its ACCENTURE marks registered in the United States, the Complainant holds registrations for its ACCENTURE and ACCENTURE plus design marks in more than 140 countries. The Complainant registered the domain name The Complainant’s ACCENTURE mark has been recognised as one of the world’s leading global brands in Interbrand’s Best Global Brands Report since 2002, and the Complainant has received numerous awards for its business products and services provided under the ACCENTURE mark. The Complainant has also provided various services using the ACCENTURE mark to well-known sports teams and events, including the Golden State Warriors basketball team and, between 2021 and 2017, the RBS 6 Nationals Rugby Championship. It has also sponsored major golf championships, and collaborated with various groups on a number of cultural initiatives around the world. Through these activities, the Complainant says that its ACCENTURE marks have become known to millions of people around the world, and have become famous and distinctive of the Complainant and its goods and services. The word “accenture” is not a dictionary word. It is an expression coined by the Complainant. The Domain Name was registered on January 26, 2021. The Whois record for the Domain Name, which the Complainant produced with its original Complaint, did not identify the registrant. The Respondent, who appears at least to reside in Minnesota, United States of America, was identified by the Registrar as the underlying registrant in response to the Center’s verification request made on receipt of the Complaint. When the Complaint was filed, the Domain Name resolved to a parking page provided by the Registrar. In accordance with usual practice, the Panel has visited the Domain Name. The website showed that the Domain Name remained “parked free, courtesy of [the Registrar]”. There were links to various third party websites under headings which included “Royalty Free Music Audio”, “Buy Gold”, “Casino Online”, and “Best Online Casinos”. According to the Complaint, the Respondent has used the Domain Name to establish “@accecenture” email addresses for the purpose of perpetrating a financial fraud or phishing scams (in one case, impersonating the Complainant in order to obtain the banking details of one of the Complainant’s clients). 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the ACCENTURE marks in which it has rights. The “.com” suffix can be disregarded, and the only difference between the Complainant’s ACCENTURE marks and the Domain Name is that the letters “c” and “e” have been added in the Domain Name to create a typographical misspelling of the Complainant’s mark. The Domain Name is phonetically and visually similar to the Complainant’s mark, and the Respondent has been guilty of “typosquatting”. Internet users will likely be confused as to whether an association exists between the Domain Name and the Complainant. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant’s ACCENTURE mark is not a generic or descriptive term, and the Respondent is neither affiliated with nor licensed by the Complainant to use its mark, whether in a domain name or otherwise. Nor is the Respondent making a legitimate, noncommercial or fair use of the Domain Name, or using the Domain Name in connection with any bona fide offering of goods or services. The Respondent has provided no evidence of any demonstrable preparations to use the Domain Name in connection with any bona fide offer of goods or services. Her use of the Domain Name to create email addresses used for phishing or other such schemes is not a legitimate noncommercial or fair use of the Domain Name. The Respondent registered and is using the Domain Name in bad faith. The Respondent was or should have been aware of the Complainant’s ACCENTURE marks long before the Domain Name was registered, because of the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE marks on the Internet. The Respondent also had constructive notice of the ACCENTURE marks registered on the United States trade marks register. The Respondent has been passively holding the Domain Name, in circumstances indicating bad faith on her part. It is implausible that she registered the Domain Name for any purpose other than to trade off the Complainant’s reputation and goodwill in its ACCENTURE marks, and her bad faith is also demonstrated by the fact that she concealed her identity when she registered the Domain Name. Alternatively, the Respondent’s use of the Domain Name with corresponding email addresses to pose as the Complainant to perpetrate financial fraud and/or a phishing scam is indicative of bad faith registration and use of the Domain Name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, a Complainant is required to establish each of the following – (i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; The Complainant has proved this part of the Complaint. First, it is the owner of the registered trade mark and service mark ACCENTURE in the United States and in various other jurisdictions, and thus has “rights” in that mark. Secondly, the Domain Name is confusingly similar to that mark. The “.com” portion is generally not considered in the comparison required by paragraph 4(a)(i) of the Policy, and the Domain Name is both visually and phonetically very similar to the Complainant’s mark: the only difference is the addition of the letters “e” and “c” in the Domain Name. Many Internet users familiar with the Complainant would take (or mistake) the Domain Name to be that of the Complainant, or of an entity licensed by or associated with the Complainant. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy set out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The circumstances are – (i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or The WIPO Overview of WIPO Panel Views on selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states the following on the burden of proof under paragraph 4(a)(ii) of the Policy: “While the overall burden of proof in UDRP proceedings is on the Complainant, panels have recognised 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 this case, there is nothing to suggest that the Respondent (or any entity associated with her) has been commonly known by the Domain Name, and the Complainant has not licensed or authorised her to use the Domain Name. Nor is there any evidence of the Respondent having used (or made demonstrable preparations to use) the Domain Name, or any name corresponding to it, in connection with any bona fide offering of goods or services. The use of the (parked) Domain Name to provide links to third party websites does not evidence any bona fide offering of goods or services by the Respondent, and the Respondent’s sole purpose in registering the Domain Name appears to have been to create email addresses at the Domain Name which would permit her to pose as the Complainant for what appears to be anything but “bona fide” purposes. On the evidence produced, neither paragraphs 4(c)(i) or (ii) could provide a basis for a claim to a right or legitimate interest in respect of the Domain Name. Nor could the Respondent’s limited use of the Domain Name as disclosed by the evidence possibly support a claim to rights or interests based on a “legitimate” noncommercial, or “fair” use of the Domain Name under paragraph 4(c)(iii) of the Policy. Creating email addresses designed to facilitate the impersonation of the Complainant for nefarious purposes could never be described as “legitimate”, or “fair”. For those reasons the Panel is satisfied that the Complainant has made out a prima facie case under paragraph 4(a)(ii) of the Policy, sufficient to move the onus of showing that some right or legitimate interest exists to the Respondent. In the absence of a response, that onus has not been discharged, and the Complainant’s prima facie proof remains unrebutted. The Respondent has no rights or legitimate interests in respect of the Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, the following circumstances, without limitation, are deemed (if found by the Panel to be present) to be evidence of the registration and use of a domain name in bad faith – (i) Circumstances indicating that the holder has registered or has 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or The Panel accepts that the Complainant has also proved this element of the Complaint. The Domain Name is confusingly similar to the Complainant’s ACCENTURE marks, and the Panel has found that the Respondent has no rights or legitimate interests in respect of the Domain Name. Furthermore, the distinctiveness and widespread use of the Complainant’s ACCENTURE marks are such that the Respondent would have been aware of the ACCENTURE marks when she registered the Domain Name. That is unequivocally confirmed by the Respondent’s later creation of email addresses, using the Domain Name, to target the Complainant. In Carrefour v WhoisGuard, Inc, WhoisGuard Protected/Robert Jurek, Katrin Kafut, Purchasing Clerk, Starship Tapes and Records, WIPO Case No. D2017-2533, the panel found bad faith in circumstances where email addresses at the disputed domain name appeared to have been calculated to obtain an illegitimate benefit from the Complainant’s goodwill in its trade mark. The panel considered that the configuration of email servers at the disputed domain name suggested that the respondents were engaged in a phishing scheme, and that “the consequences of such a scheme can be detrimental not only to the company whose goodwill has been taken advantage of, but to third party staff and customers who may entrust what appears to be [the complainant] with sensitive information such as credit card details”. That is very similar to what occurred in this case. The complainant has produced a screenshot of an email header displaying three different “@accecenture” email addresses, reported to it by the email recipient as an attempt to impersonate the Complainant in order to seek to obtain the banking details of the Complainant’s client. The Respondent has not challenged that characterization of the intended use of one or more of the three email addresses, and in those circumstances the Panel accepts that it is sufficiently proved that the Respondent has used the Domain Name for phishing purposes. However, in the Carrefour case the disputed domain name had an invisible redirection to the Complainant’s official website, a factor not present in this case. On the evidence produced, it is clear that the Respondent has intentionally attempted, for commercial gain, to create a likelihood of confusion with the Complainant’s ACCENTURE marks, as to the source, sponsorship, affiliation or endorsement of the three “@accecenture” email addresses, but it is not so clear that the Respondent’s intention was to attract Internet users to any particular “website or online location” of the Respondent. In those circumstances, the situation might not be strictly within paragraph 4(b)(iv) of the Policy. But the subparagraphs of paragraph 4(b) of the Policy do no more than provide illustrative examples of bad faith registration and use, and the Panel has no difficulty in concluding that the use of the Domain Name to create email addresses for phishing purposes as alleged in this case amounts to bad faith use of the Domain Name. Paragraph 4(a)(iii) of the Policy requires proof of bad faith in both the registration and the subsequent use of a disputed domain name. In the absence of any response, the Panel considers it reasonable to infer that the Domain Name was registered for the same (bad faith) phishing purpose for which it was used very shortly after it was registered. That is enough to decide the Complaint in the Complainant’s favour. The Panel adds that even if there had been no evidence of the Respondent using the Domain Name as part of an apparent bad faith phishing scheme, he would have upheld the Complaint on the first ground advanced by the Complainant, namely “passive holding” of the Domain Name in circumstances where it is not possible to conceive of any plausible actual or contemplated active use of a disputed domain name by a respondent that would not be illegitimate (such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the complainant’s rights under trade mark law).1 The use of the “@accecenture” email addresses merely confirms the Panel’s view that the Domain Name was so clearly designed to create confusion with the Complainant’s mark that it could never have been intended to be used by the Respondent in good 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 Domain Name Warwick Smith 1 The consensus view of WIPO panels on bad faith by registering and passively holding a disputed domain name is summarised at WIPO Overview 3.0, section 3.3, as follows –
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
(ii) Where [the respondent] (as an individual business or other organisation) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly direct consumers or to tarnish the trade mark or service mark at issue.
(ii) The holder has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) The holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the holder’s website or location or of a product or service on the holder’s website or location.
Sole Panelist
Date: May 5, 2021
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include:
(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and
(iv) the implausibility of any good faith use to which the domain name may be put.”
In this case, all of those elements are present. The Complainant’s mark is a coined expression that has a high level of distinctiveness associated with the Complainant’s products, and the Respondent has not provided evidence of any actual or contemplated good faith use of the Domain Name. The Respondent appears to have endeavoured to conceal her identity, and given the apparent renown of the Complainant’s ACCENTURE mark, it is difficult to identify any plausible good faith use the Respondent might have made of the Domain Name.
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