The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is WhoisGuard, Inc., Panama / hamzaki suleman, 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 Domain Name. On March 16, 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 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2021. The Center appointed Warwick Smith 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. Following his appointment, the Panel asked the Center to confirm with the courier company details of its attempts to serve written notice of the Complaint at the Respondent’s Atlanta address as supplied by the Registrar. The courier company had advised in its delivery report that delivery could not be effected, noting simply “bad address”. In response to the Center’s further enquires, the courier company advised that, notwithstanding some confusion over the correct postcode, the named Atlanta Street address does exist: the problem was that the driver could not find the Respondent at the address. When it could not locate the Respondent, the courier company sent an email to the Respondent (at the email address provided by the Registrar) noting that an apartment / suite and floor number were missing from the address provided, and seeking the Respondent’s assistance. It appears that no response was received to that email. It appears from the courier company’s advices that the street address provided by the Respondent was incomplete and inadequate, but the notification of the Complaint given to the Respondent at his email address does appear to have been effective. In the circumstances described above, the Panel is satisfied that the Center has employed reasonably available means calculated to achieve actual notice of the Complaint to the Respondent, and that it is more likely than not that the Respondent has received that actual notice (at his email address). The Center has sufficiently complied with Rule 2 of the Rules, relating to the communication of the Complaint to the Respondent. 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, business process 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 marks registered in the United States 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 & Design Various goods and services in classes 9, 16, 35, 36, 37, 41, and 42 2,665,373 December 24, 2002 ACCENTURE & Design Various goods in classes 6, 8, 9, 14, 16, 18, 20, 21, 24, and 28 3,340,780 November 20, 2007 ACCENTURE & Design Various services in classes 35 and 36 3,862,419 October 19, 2020 The design aspect of the registered design marks listed above all feature a “greater than” (“>”) sign immediately above the letter “t” in “Accenture”. In addition to its ACCENTURE marks registered in the United States, the Complainant holds registrations for its ACCENTURE and ACCENTURE & Design marks in more than 140 countries. The Complainant registered the domain name The Complainant’s ACCENTURE mark has been recognized 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 marks. 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 Nations 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 February 27, 2021. The Complainant produced some pages from the website to which the Domain Name resolved when the Complaint was filed (“the Respondent’s website”). The webpages produced all displayed a stylized “Accenture Investment” logo, with the word “Investment” in a different color immediately below the word “Accenture”, and a stylized “greater than” sign immediately above the first “e” in “Accenture”. One of the webpages contained a picture of a large office tower, with what appears to be the Complainant’s ACCENTURE design mark near the top of the tower. The webpages produced by the Complainant contained headings such as “Action is the real Measure of Intelligence – with Artificial Intelligence Trading”, “The Best Business Solutions for You”, and “Our Investment Plans”. Under the “Our Investment Plans” heading there were sub-headings (which appeared to be click-on links) headed “Basic Plan”, “Standard Plan”, “Premium Plan” and “Exclusive Plan”. There were also icons on which the site visitor could click to make various calculations, including “Calculate Profit”, for each of the investment plans offered. The Panel has endeavoured to visit the Respondent’s website, but the Domain Name no longer appears to resolve to an active website. 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 generic Top Level Domain (“gTLD”) “.live” can be disregarded, and the Complainant’s ACCENTURE mark is reproduced in full in the Domain Name. Adding the hyphen and the descriptive term “investment” serves only to create a direct reference to the Complainant’s strategy and consulting services in the fields of banking, capital markets, insurance, financial growth, financial risk, and financial technology (“FinTech”). Consumers associate the term “accenture” exclusively with the Complainant and its products and services, and the addition of the descriptive term “investment” fails to negate confusing similarity. The Domain Name is likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Name. The Complainant next 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 not commonly known by the Domain Name. Nor is the Respondent affiliated with or licensed by the Complainant to use its mark, whether in a domain name or otherwise. That combination of circumstances provides prima facie evidence that the Respondent lacks rights or legitimate interests in respect of the Domain Name. The Respondent’s use of the Complainant’s registered logo on the Respondent’s website confirms that the Respondent has been holding himself out as the Complainant, in an effort to obtain financial “investments” under the Complainant’s famous mark. The use of a confusingly similar domain name to offer competing goods and services is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Domain Name, particularly as the Respondent’s website does not make it clear that there is no commercial connection between the Respondent and the Complainant. The Respondent has been using the Complainant’s ACCENTURE mark to trick consumers into sending money to the Respondent. 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 in the United States and other jurisdictions worldwide. The Respondent’s use of the Domain Name to compete with the Complainant’s goods and services is a disruption of the Complainant’s business, and constitutes bad faith use under paragraph 4(b)(iii) of the Policy. The Respondent has also been guilty of bad faith use of the Domain Name under paragraph 4(b)(iv) of the Policy, as the Respondent has intentionally attempted to attract for commercial gain Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s ACCENTURE marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Respondent also appears to be connected with the named respondent in several other WIPO cases where other domain names containing the term “accenture” have been used by the named respondent to pass itself off as the Complainant. The Respondent has thus engaged in a pattern of registering “accenture” formative domain names for the purpose of preventing the Complainant from reflecting its trade mark in a corresponding domain name. That constitutes bad faith registration and use under paragraph 4(b)(ii) of the Policy. 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 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 gTLD (in this case “.live”) is generally not considered in the comparison required by paragraph 4(a)(i) of the Policy, and the Panel accepts that adding a hyphen and the descriptive term “investment” in the Domain Name does not prevent the Complainant’s mark from being recognizable in the Domain Name.1 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 (ii) Where [the respondent] (as an individual business or other organization) [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. Section 2.1 of the 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 recognized 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 him) has been commonly known by the Domain Name, and the Complainant has not licensed or authorized him to use the Domain Name. There appears to be no possible claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy. 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 apparent copying (or near copying) of the Complainant’s ACCENTURE & Design mark on the Respondent’s website creates the clear impression that the Respondent was trying to portray the Respondent’s website as either that of the Complainant or that of an entity associated or affiliated in some way with the Complainant. The aim appears to have been to ride on the back of the Complainant’s reputation in its ACCENTURE marks, to attract investment money. That could never have been a bona fide offering of a service. On the face of it, then, the Respondent could not have argued for a right or legitimate interest in respect of the Domain Name under paragraph 4(c)(i) of the Policy. Nor, on the evidence produced, could the Respondent’s use of the Domain Name 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. Deliberate, unauthorized use of a trade mark owner’s mark in a domain name for commercial gain could not, at least in normal circumstances, amount to a “fair” use of a disputed domain name, and nor could such use be described as a legitimate noncommercial use. There does not appear to be any arguable right or legitimate interest under paragraph 4(c)(iii) of the Policy. 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 shift the burden of production on this element to the Respondent to show that some right or legitimate interest exists to the Respondent. In the absence of a response, the Respondent has failed to come forward with such relevant evidence, and the Complainant’s prima facie proof remains unrebutted. The Panel therefore finds that 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 (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. 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 Panel accepts the Complainant’s submission that, by February 2021, the distinctiveness and widespread use of its ACCENTURE marks were such that the Respondent must have been aware of the ACCENTURE marks when he registered the Domain Name. Indeed, any possible question about that was effectively removed when the Respondent chose to use a logo on the Respondent’s website which incorporated the “greater than” sign immediately above the middle letters of the term “Accenture”, thus very nearly duplicating the Complainant’s ACCENTURE & Design mark referred to above. In the absence of any response, the Panel has no difficulty concluding that the circumstances fall squarely within paragraph 4(b)(iv) of the Policy. The Respondent has sought to attract Internet users to the Respondent’s website by using the Domain Name, and the “investment” products offered through the Respondent’s website are clearly commercial in nature. The inference that the Respondent’s website has been operated for commercial gain is inescapable. The evidence leaves no room for doubt that, in using the Domain Name, the Respondent created a likelihood of confusion with the Complainant’s ACCENTURE word and “greater than” design marks. Any Internet user familiar with the Complainant would have immediately recognized the Complainant’s ACCENTURE word mark within the Domain Name, and would likely have assumed that a website at the Domain Name would be owned, sponsored or endorsed by, or affiliated with, the Complainant. That mistaken view would have been reinforced on arrival at the Respondent’s website, by the repeated use of an “Accenture” logo that was almost identical to the Complainant’s ACCENTURE design mark, and the apparent absence of any disclaimer making it clear that the Respondent’s website had no connection with the Complainant. The circumstances therefore clearly establish bad faith use under paragraph 4(b)(iv) of the Policy, and there is no basis to conclude that the Respondent’s purpose in registering the Domain Name was anything other than the bad faith purpose for which the Domain Name was used very shortly after it was registered. The Respondent’s very choice of a made-up word like “Accenture” as the dominant part of the Domain Name, considered with the content of the Respondent’s website at the time the Complaint was filed, make it clear that the Respondent was targeting the Complainant and its ACCENTURE marks when he registered the Domain Name. The fact that the Domain Name no longer appears to resolve to an active website does not prevent a finding of bad faith. Having regard to my conclusion on the application of paragraph 4(b)(iv) of the Policy, there is no need to consider the Complainant’s alternative submissions based on paragraphs 4(b)(ii) and (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 Domain Name Warwick Smith 1The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the general consensus of WIPO panel views on this issue 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
Sole Panelist
Date: May 11, 2021
“1.8 Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) would not prevent a finding of confusing similarity under [paragraph 4(a)(i) of the Policy]. The nature of such additional term(s) may however bear on assessment of the second and third elements [of paragraph 4(a) of the Policy].”
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