The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / William Douglas, 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 16, 2021. On March 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 16, 2021, 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 March 17, 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 22, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2021. The Center appointed Federica Togo as the sole panelist in this matter on April 28, 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 the registered owner of several trademarks worldwide consisting and/or containing the term ACCENTURE, e.g. European Union trademark registration No. 001958370 ACCENTURE registered on August 14, 2002 for goods and services in the classes 9, 16, 35, 36, 37, 39, 41 and 42. This trademark has been duly renewed and is in force. It results from the information disclosed by the Registrar that the disputed domain name was registered on February 20, 2021. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant It results from the Complainant’s undisputed allegations that it is an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations. It has offices and operations in more than 200 cities in 51 countries. Since January 2001, the Complainant has used the mark ACCENTURE in connection with various services and specialties, including management consulting and business process services, which comprises various aspects of business operations such as supply chain and logistics services, as well as technology services and outsourcing services. In addition, the Complainant owns and operates the domain name The Complainant contends that its trademarks ACCENTURE are distinctive and enjoy a worldwide reputation. The Complainant further contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks, since the only difference in the disputed domain name when compared to the Complainant’s distinctive and famous trademark is the addition of the descriptive term “works” following the mark. The latter does not change the overall impression produced by the disputed domain name and is not sufficient to distinguish the disputed domain name from the Complainant’s marks. Furthermore, the addition of a generic Top-Level-Domain (“gTLD”) to the disputed domain name is “completely without legal significance.” The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, its trademarks ACCENTURE are not a generic or descriptive term in which the Respondent might have an interest. The Respondent is neither affiliated with, nor has the Respondent been licensed or permitted to use the Complainant’s trademarks or any domain names incorporating the trademarks. The Respondent is not commonly known by the disputed domain name. Therefore, the Respondent has chosen to use the Complainant’s famous ACCENTURE trademark as his disputed domain name to create a direct affiliation with the Complainant and his business. The Respondent is not making a legitimate, noncommercial fair use of the disputed domain name nor is using the disputed domain name in connection with a bona fide offering of goods or services, or for any legitimate purpose. Instead, the disputed domain name resolves to a page displaying an Internet browser error message stating, “[t]his site can’t be reached.” Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant submits that given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, it is highly likely that the Respondent was aware of the ACCENTURE trademarks long prior to registering the disputed domain name. In addition, the Complainant contends that it is implausible that the Respondent registered the disputed domain name independently and in good faith, for his own purposes since the ACCENTURE trademark is distinctive and well known throughout the world; the Respondent’s identity is concealed by redacted WhoIs information; and in view of the Respondent’s failure to use the disputed domain name for any legitimate purpose. Furthermore, according to the Complainant, the Respondent has configured the disputed domain name for email functions; in fact the Respondent has connected the disputed domain name to a mail server responsible for accepting email messages on behalf of the disputed domain name. Thus, the ability to send and receive emails from the disputed domain name suggests that the Respondent may intend to use the disputed domain name for malicious purposes, such as phishing or fraud. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (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. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the mark ACCENTURE. Reference is made in particular to European Union trademark registration No. 001958370 ACCENTURE registered on August 14, 2002 for goods and services in the classes 9, 16, 35, 36, 37, 39, 41 and 42. This trademark has been duly renewed and is in force. UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g. Compagnie Générale des Etablissements Michelin v. Milen Radumilo,WIPO Case No. DCO2020-0090; LEGO Juris A/S v. ken Teo,WIPO Case No. D2020-2380; Sanofi v. WhoisGuard Protected, WhoisGuard, Inc. / Todd Peter,WIPO Case No. D2020-2060; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-1923; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com, Inc.,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; and Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademark ACCENTURE is fully included in the disputed domain name, followed by the term “works”. Furthermore, it is the view of this Panel that the addition of the term “works” in the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark since the Complainant’s trademark is clearly recognizable in the disputed domain name. Finally, the gTLD “.com” of the disputed domain name may be disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.11.1). In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademark ACCENTURE, e.g., by registering the disputed domain name comprising the said trademark entirely. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Moreover, the Panel notes that the disputed domain name contains the Complainant’s registered and well-known trademark ACCENTURE and that the trademark ACCENTURE is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. The Panel finds it most likely that the Respondent selected the disputed domain name with the intention to take advantage of the Complainant’s reputation by registering a domain name fully containing the Complainant’s trademark and trade name with the intent to attract Internet users for commercial gain (e.g.,Carrefour SA v. Matias Barro Mares, WIPO Case No. D2020-3088; Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello,WIPO Case No. D2020-1955; Koc Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-0886; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847). It is acknowledged that once the panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. Based on the evidence submitted by the Complainant, the Panel shares the view of other UDRP panels and finds that the Complainant’s trademark ACCENTURE is widely known. Therefore, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant’s trademark when he registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed ACCENTURE mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see, e.g., Banca Mediolanum S.p.A. v. Domains By Proxy, LLC / Marzia Chiarello, supra; Virgin Enterprises Limited v. Domains By Proxy LLC, Domainsbyproxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, supra; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, supra; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; Koc Holding A.S. v. VistaPrint Technologies Ltd, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies, supra; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100). Moreover, the Complainant provided evidence that an email server has been configured on the disputed domain name and thus, there is a risk that the Respondent is engaged in a phishing scheme aiming to deceive Internet users to believe they were dealing with the Complainant. The use of an email address with the disputed domain name presents a significant risk where the Respondent could aim at stealing valuable information such as credit cards from the Complainant’s clients or employees. Such risk has been recognized by prior UDRP panels (e.g., Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225). The disputed domain name does not resolve to an active website. In this regard, the Panel notes that the current passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In fact, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith: (1) the Complainant’s trademark ACCENTURE is widely known; (2) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use; (3) the Respondent originally used a privacy service hiding his identity; and (4) the implausibility of any good faith use to which the disputed domain name may be put (see WIPO Overview 3.0 at section 3.3). In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 Federica Togo
Sole Panelist
Date: May 11, 2021
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