The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Marc Diks, France 1. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 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 May 7, 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 May 11, 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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 3, 2021. The Center appointed Antony Gold as the sole panelist in this matter on June 8, 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 an international business with its place of incorporation in Dublin, Ireland. It provides a wide range of management consulting and business process services, including the provision of supply chain, logistics, and outsourcing services. The Complainant has offices in more than 200 cities in 51 countries. The Complainant has been using the mark ACCENTURE in connection with the provision of its services since 2001 and it has registered more than 1,000 trade mark registrations in over 140 countries which comprise or include the word “accenture”. These include, by way of example only, United States service mark, registration number 3,091,811, for ACCENTURE in classes 9,16, 35 36, 37, 41, and 42, registered on May 16, 2006. The Complainant also owns the domain name The disputed domain name was registered on February 15, 2021. As at the date of the filing of the Complaint, the website to which the disputed domain name resolved was headed “Accenture Holdings France SAS”, and displayed, on the home page, a contact address which was the same as that of the Complainant’s Innovation Center in Paris, France. The website featured both English and French language content. The English language webpage included a section headed “Accenture Holdings France SAS at your service for all your industrial projects”. This made a number of claims in relation to the experience and expertise in the management of engineering products, including the claim: “Created in 2016, our Accenture Holdings France SAS oversees all of our clients’ industrial projects with the support of qualified and experienced players”. The disputed domain name does not presently resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant refers to its many service and trade marks for ACCENTURE and says that the disputed domain name is both confusingly similar both to its mark and identical to the official name of its business in France, namely Accenture Holdings SAS. The disputed domain name contains the Complainant’s trade mark in full and additionally contains two hyphens and the descriptive terms “holdings” and “SAS”. This second word will be perceived as the recognized abbreviation for a Société par actions simplifiée, that is a French-registered, simplified joint-stock company. The Complainant’s ACCENTURE mark is distinctive and famous. It is a coined term and should be afforded a wide measure of protection, particularly in view of the ubiquitous nature of the Complainant’s brand and its heavy advertising presence worldwide. When assessing the degree of confusing similarity, the addition of the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The addition of random characters or a descriptive term to a trade mark fails to negate confusing similarity; see by way of example Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC / David Teyssou,WIPO Case No. D2021-0233. The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant’s ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The Respondent is neither affiliated with, nor has it been licensed or permitted to use, the Complainant’s mark, nor any domain names which incorporate its mark. The Respondent registered the disputed domain name via a privacy proxy service in order to mask its identity. However, now that the details of the underlying registrant, namely “Marc Diks”, have been made available, it is evident that the Respondent is not commonly known by the disputed domain name. It appears that the Respondent has chosen to use the Complainant’s ACCENTURE trade mark and company name in the disputed domain name in order to suggest a direct affiliation with, or pass itself off as, the Complainant and its business. The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name. Rather, the Respondent is holding itself out as the Complainant, or as a provider of services relating to industrial and engineering projects which compete with the Complainant’s consultancy and related services in the fields of industry, high tech industry, and engineering. In particular, the Respondent is using the same address/physical location of the Complainant’s Paris Innovation Center and has also used a contact email address likely to be associated by Internet users with the Complainant. Accordingly, the Respondent is using the disputed domain name in order to pose falsely as the Complainant, in order to trade off the reputation and goodwill associated with its ACCENTURE marks, and to misleadingly divert Internet traffic from the Complainant’s website. Using a domain name which is confusingly similar to a complainant’s trade mark in order to offer competing goods and services comprises neither a bona fide offering of goods and services nor a legitimate noncommercial or fair use of it; see DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne,WIPO Case No. D2018-2565. Lastly, the Complainant says that the Respondent has registered and is using the disputed domain name in bad faith. Given the Complainant’s worldwide reputation and the ubiquitous presence of its ACCENTURE marks on the Internet, the Respondent was, or should have been, aware of the Complainant’s ACCENTURE marks prior to its registration of the disputed domain name. The Respondent is using the disputed domain name in order to mislead Internet users, who are searching for the Complainant but instead reach the Respondent’s website, where it is holding itself out either as the Complainant or as offering services, competing with the Complainant. Such competitive use of the disputed domain name is a disruption of the Complainant’s business and is in bad faith pursuant to paragraph 4(b)(iii) of the Policy. Bad faith also exists under paragraph 4(b)(iv) of the Policy where a respondent uses a confusingly similar domain name to resolve to a website featuring products and services that compete directly with the complainant; see Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc.,WIPO Case No. D2017-0481,WIPO Case No. D2017-0481. The Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant’s ACCENTURE marks as to the source, sponsorship, affiliation or endorsement of its website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark 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. A. Identical or Confusingly Similar The Complainant has provided evidence of its trade and service mark registrations for ACCENTURE, full details of one of these marks having been set out above. These establish its rights in the mark. For the purpose of considering whether the disputed domain name is identical or confusingly similar to the Complainant’s ACCENTURE mark, the gTLD “.com” is disregarded as this is a technical requirement of registration. The disputed domain name comprises the Complainant’s mark in full, followed by a hyphen, the word “holdings”, a further hyphen and finally the letters “sas”. The additional components of the disputed domain name do not prevent the disputed domain name from being found confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Section 1.8 of the WIPO Overview 3.0 also explains that: “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 the first element”. The Complainant’s entire mark is present within the disputed domain name and is clearly recognizable within it. The Panel accordingly finds that the disputed domain name is confusingly similar to trade and service marks in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. The distinctive component of both the trading style displayed on the Respondent’s website and the disputed domain name is the Complainant’s ACCENTURE mark. Having regard to the fact that the Respondent’s website shows a contact address which is identical to that of the Complainant’s Paris Innovation Center and promotes services which are similar in nature to those provided by the Complainant’s group of companies, the Respondent’s intention clearly is to mislead Internet users into thinking that the services it purportedly offers are either those of the Complainant or provided with its authorization. Irrespective of whether the Respondent is actually offering the services promoted on its website, it is using the Complainant’s repute in its ACCENTURE mark, without license or authority, in order to attract Internet users to its website. This does not comprise a bona fide offering of goods and services; see DPDgroup International Services GmbH & Co. KG v. Domain Admin, Privacy Protect, LLC / Richard Bothne (supra). Whilst the Complainant has provided some screen prints of the Respondent’s website, a panel’s evaluation as to whether a respondent’s website might be considered a bona fide offering of goods and services is often improved by visiting the website itself. The circumstances in which a panel might typically take this course are outlined at section 4.8 of the WIPO Overview 3.0; “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name”. The Panel has accordingly attempted to visit the Respondent’s website and has established that the disputed domain name no longer resolves to an active website. The inactive status of the disputed domain name does not comprise a bona fide offering of goods and services; see, by way of example, Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya,WIPO Case No. DCC2020-0003. The second circumstance can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable; the Respondent’s website is commercial in character and the composition of the disputed domain name is such that it carries a risk of implied affiliation with the Complainant, which prevents its use from being considered fair. As explained at section 2.5.1 of the WIPO Overview 3.0: “Even where a domain name consists of a trade mark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trade mark owner”. Once a Complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden. The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered approximately 20 years after the Complainant first started using its ACCENTURE mark and the Complainant’s evidence establishes extensive global use of its mark as at the date of registration of the disputed domain name. Given the confusing similarity between the disputed domain name and the Complainant’s mark, coupled with the content of the Respondent’s website, as more particularly described above, it is evident that the Respondent was aware of the Complainant and its ACCENTURE mark as at the date of registration of the disputed domain name and registered it in order to take unfair advantage of it. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel similarly finds the Respondent’s registration of the disputed domain name to have been in bad faith. Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance set out in paragraph 4(b)(iv) of the Policy is if a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website. The use to which the Respondent has put the disputed domain name falls within paragraph 4(b)(iv) of the Policy in that it resolves to a website which uses the Complainant’s ACCENTURE mark and which features content intended to mislead Internet users into thinking that it is operated by, or with the authority of, the Complainant. Such a belief will be reinforced because of the confusing similarity between the disputed domain name and the Complainant’s ACCENTURE mark. Furthermore, there is no conceivable good faith use which the Respondent could make of the disputed domain name, nor has the Respondent attempted to explain or justify its position, either through service of a response to these proceedings or otherwise. These factors collectively point to bad faith registration and use of the disputed domain name; see, in broadly similar circumstances, the decisions of the panels in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person,WIPO Case No. D2014-1447 and also Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc.,WIPO Case No. D2017-0481 (supra). To the extent that the disputed domain name no longer resolves to an active website. It is next necessary to consider whether the currently inactive status of the disputed domain name prevents a finding of bad faith under the doctrine of passive holding. The factors usually considered material to such an assessment have been set out in a number of earlier decisions of UDRP panels, including in Johnson & Johnson v. Daniel Wistbacka,WIPO Case No. D2017-0709. Each of these considerations points to the Respondent’s passive holding of the disputed domain name being in bad faith. Specifically; (i) the Complainant’s ACCENTURE mark is distinctive and well-established, (ii) the Respondent has failed to submit a response to the Complaint or provide any evidence of good-faith use, (iii) the Respondent has taken steps to conceal its identity through use of a privacy service, and (iv) there is no conceivable good faith use to which the disputed domain name could be put by the Respondent. The Panel therefore finds the Respondent to have registered and used the disputed domain name in bad 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 disputed domain name Antony Gold 1 The Complaint was initially filed against “Domain Administrator, See PrivacyGuardian.org”. In response to the Center’s registrar verification request, the Registrar disclosed the name and address of the entity in whose name the disputed domain name is currently registered. The amended Complaint names the underlying registrant as the Respondent.
Sole Panelist
Date: June 21, 2021
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