The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States” or “US”).
The Respondent is Domain Admin,Whoisprotection.cc, Malaysia / Hoy Ng, Singapore
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 August 9, 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 August 13, 2021.
The Center verified that the Complaint 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 August 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 12, 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 BackgroundThe Complainant is an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology, and operations under the name “Accenture”. It is the owner of the trade mark and company name ACCENTURE, and has rights in marks which fully incorporate the trade mark ACCENTURE.
The Complainant began using ACCENTURE in connection with various services including management consulting, technology services, and outsourcing services on January 1, 2001. Since then it has extensively used and continues to use ACCENTURE in connection with various services and specialities, including management consulting and business process services, which comprise various aspects of business operations such as supply chain and logistic services, as well as technology services and outsourcing services.
The Complainant sets out a representative list of US trade mark registrations for ACCENTURE and ACCENTURE & Design in the Complaint. At Annex D to the Complaint it exhibits true copies of the certificates of registration.
These marks are;
ACCENTURE
No. 3,091,811
dated
May 16, 2006
Classes 9, 16, 35, 36, 37, 41, 42.
ACCENTURE
No. 2,665,373
dated
December 24, 2002
Classes 9, 16, 35, 36, 37, 41, 42.
ACCENTURE
No. 3,340,780
dated
November 20, 2007
Classes 6, 8, 9, 14, 16, 18, 20, 21, 24, 28.
ACCENTURE
No. 2,884,125
dated
September 14, 2004
Classes 18, 25, 24.
ACCENTURE & Design
No, 3,862,419
dated
October 19, 2010
Classes 35, 36.
The Complainant draws attention to an earlier Panel decision in Accenture Global Services Limited v. Domains By Proxy, LLC / Name Redacted,WIPO Case No. D2013-2099, in which that Panel found that the Complainant owned rights in the US in the mark ACCENTURE.
The Complainant also owns registered marks for ACCENTURE and ACCENTURE & Design as well as other marks incorporating ACCENTURE in more than 140 countries. Sample certificates of registration are exhibited at Annex E to the Complaint.
The Complainant has developed substantial goodwill in its trading name ACCENTURE, its marks ACCENTURE, and its official domain name
The Complainant draws attention to its promotion of its services on the Internet using the ACCENTURE marks and the domain name
The ACCENTURE marks have been advertised widely in the media and the press. In 2020, its worldwide advertising expenditure totaled USD 32 million. A sample of its global advertisements and press clippings featuring the ACCENTURE marks is exhibited at Annex H.
ACCENTURE has been recognized as a leading global brand. In 2020 it ranked 31st in Interbrand’s Best Global Brands Report. This can be seen at Annex I to the Complaint. It has also been recognized by Kantar Millward Brown as its 21st highest BrandZ ranking. It has been listed for the past 19 years in the Fortune Global 500 list and other Fortune rankings.
The Complainant has received numerous awards for its business, products, and services which are detailed on a chart in the Complaint.
The Complainant promotes social development projects worldwide under the ACCENTURE marks including the “skills to succeed” initiative details of which are set out in Annex K. At Annex L are set out details of its high-level sports sponsorship including, for example, the RBS 6 Nations Rugby Championship. It has collaborated on cultural initiatives across the world, for example, with the Louvres museum and Cannes Lions Festival as set out in Annex L.
The Complainant, as a result of its extensive use and promotion of ACCENTURE, submits that the marks ACCENTURE have become distinctive and famous globally since long prior to the date of registration of the disputed domain name on June 12, 2021. According to the Complainant, the disputed domain name resolves to a page displaying an Internet browser error message stating, “[t]his site can’t be reached.” and is connected to a fraudulent email scheme.
5. Parties’ Contentions A. ComplainantThe Complainant submits;
i. The disputed domain name is nearly identical and confusingly similar to the mark ACCENTURE in which the Complainant has prior rights;
ii. On the evidence the Respondent has no rights or legitimate interests in the disputed domain name;
iii. On the evidence the Respondent registered and is using the disputed domain name in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant submits that the disputed domain name is “nearly identical” and confusingly similar to the trade mark ACCENTURE. The dominant part of the disputed domain name is spelt “accnenture” which misspells the trade mark ACCENTURE by inserting an extra letter “n” in the middle of the mark. This has the effect of forming a “nearly identical” version, which does not prevent a finding of confusing similarity between the disputed domain name and the trade mark.
The Panel agrees with this submission. It is supported in its view by a similar finding in another Panel decision cited by the Complainant and in which the present Complainant was complainant; Accenture Global Services Limited v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1922, where that Panel found the typo-squatted domain name
The Complainant also rightly points out that the Respondent’s use of a generic Top-Level Domain, in this case “.com”, is irrelevant in considering confusing similarity.
Accordingly, the Panel finds that the disputed domain name
The Complainant refers to Paragraph 4(c) of the Policy whereby a respondent can demonstrate a legitimate interest in a domain name by proving one of the following;
i. that before notice of the dispute, it had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services;
ii. it is commonly known by the domain name;
iii. it is making a legitimate, noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trade marks of another.
The Complainant points out that on the evidence and in the Panel’s view, considering the absence of a Response, the Respondent has not been able to demonstrate that it qualifies for any of these criteria.
The evidence adduced by the Complainant shows that the disputed domain name is not being used for any purpose at this time. A screenshot of the website accessed by the disputed domain name and exhibited at Annex U to the Complaint shows that the disputed domain name resolves to a page displaying an Internet error message stating;
“this site can’t be reached”.
It is well-established that the inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate, noncommercial or fair use within Paragraph 4(c)(iii) of the Policy.
The Complainant’s evidence shows that the Respondent has used the disputed domain name in relation to at least eight different “[...]@accenenture.com” email addresses. At Annex Y to the Complaint, the Complainant exhibits copies of emails and attachments sent from the Respondent at these addresses which have been doctored to appear, contrary to the fact, sent from genuine employees of the Complainant. The content of the emails are attempts to collect payment of several invoices totaling over USD 780,000 from third parties to whom the emails were sent. It is also apparent from Annex Y that the email signature used in connection with some of the emails featured active links to the Complainant’s own social media pages.
Given the absence of a Response and this clear evidence of fraudulent use of the disputed domain name by the Respondent, the Panel is satisfied that the Respondent has no legitimate rights or interests in the disputed domain name within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Complainant relies upon Paragraph 4(b)(iv) of the Policy which provides that “bad faith” registration and use of a domain name, can be established if by using the domain name 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 mark as to the source, sponsorship, affiliations, or endorsement of its website or location or of a product or service on its website or location.
Given the evidence of the Complainant’s worldwide reputation and the evidence of its fraudulent use of the disputed domain name set out in section 6B above, the Respondent would have had constructive notice and knowledge of the Complainant’s trade mark rights at the date of registration of the disputed domain name on June 12, 2021, and subsequently used the disputed domain name for fraudulent purposes. It is well established that such use whereby the Respondent used the disputed domain name to represent itself as the Complainant and to perpetuate a fraud/phishing scam constitutes bad faith within Paragraph 4 (b)(iv) of the Policy.
As submitted by the Complainant, there was no reason for the Respondent to have registered the disputed domain name and to have used it for fraudulent purposes other than to trade off the reputation and goodwill of the Complainant’s marks.
The panel is supported in its findings by earlier decisions such as Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533, which is cited by the Complainant, where that Panel found bad faith in the respondent’s registration of the disputed domain name when configuration of email servers at the domain appeared to be calculated to obtain an illegitimate benefit from the Complainant’s goodwill.
In these circumstances and taking into account the absence of a Response the Panel finds that the disputed domain name was registered and used in bad faith within Paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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,
Clive Duncan Thorne
Sole Panelist
Date: October 26, 2021