The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Jay Sanghvi, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the following day, 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 July 30, 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 3, 2021. The Respondent sent two informal email communications to the Complainant and the Center on August 3 and August 5, 2021, respectively, regarding his registration and use of the disputed domain name.
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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent sent another informal email communication on August 6, 2021 and on August 10, 2021.
The Center appointed Matthew Kennedy as the sole panelist in this matter on September 20, 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 provides consulting services in five main areas (strategy, consulting, digital, technology and operations) under the name ACCENTURE. It operates in 52 countries around the world. It holds multiple trademark registrations in multiple jurisdictions, including Indian trademark registrations numbers 967046 and 967047, both for ACCENTURE, registered on November 8, 2008 and June 9, 2004, respectively, both with a priority date of October 30, 2000, and specifying goods in classes 9 and 16, respectively; and Indian trademark registration number 1008458 for ACCENTURE and device (in the form of a greater than “>” sign), registered on December 16, 2006, specifying goods in class 9. These trademark registrations remain current. According to evidence provided by the Complainant, the ACCENTURE brand was ranked 31st in Interbrand’s Best Global Brands 2020 Report.
The Complainant previously registered the disputed domain name on March 4, 2015. It used the disputed domain name to resolve to a website that displayed the ACCENTURE mark above the title “My D-Business”, which provided “insights, experts’ points of view and feedback” on digital business. No reason was advanced for the expiry of the Complainant’s registration in 2020.
The Respondent is an individual resident in India. He registered the disputed domain name on May 24, 2020, having acquired it at auction immediately after the expiry of the Complainant’s registration. The disputed domain name resolves to a website with the title “MYD Business Accenture” in which the “A” in “Accenture” is a greater than “>” sign turned 90 degrees. The site publishes blogposts on topics under the headings e-business, direct marketing, business, management and shipping.
5. Parties’ Contentions A. ComplainantThe disputed domain name is confusingly similar to the Complainant’s ACCENTURE mark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks. The Respondent is not commonly known by the disputed domain name. The Respondent is not making a legitimate noncommercial fair use of the disputed domain name. Rather, he is using it to hold himself out as the Complainant under what appears to be a sponsored blog or pay-per-click affiliate site with posts on topics in areas of business or services in which the Complainant operates. Certain links from the website at the disputed domain name direct to other third party websites, likely through a sponsored link or affiliate program.
The disputed domain name was registered and is being used in bad faith. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE marks on the Internet, the Respondent was or should have been aware of the ACCENTURE marks long prior to registering the disputed domain name. The Respondent uses the disputed domain name to redirect Internet users to commercial websites through various sponsored click-through links which indicates that he registered and is using the disputed domain name with the intent to attract Internet users to his website for commercial gain by creating a likelihood of confusion with the Complainant’s ACCENTURE mark as to the source, sponsorship, affiliation or endorsement of his website.
B. RespondentThe Respondent submits that he purchased the disputed domain name at the Registrar’s auction on the basis of search engine optimization (“SEO”) metrics. He has no interest in buying or selling any goods or services on the associated site, he is not in the same business as the Complainant and he is just providing information. He did not register and is not using the disputed domain name in bad faith. It is just a coincidence that some other company name is involved in the disputed domain name.
The Respondent asks why the Complainant did not contact the Registrar when it listed the disputed domain name for public bidding at auction. He also asserts that the Registrar knows the rules better than the Respondent. If the Respondent has to give up the disputed domain name, he asks who will refund the price that he paid the Registrar for it and who will pay him for the time that he has spent developing his blog. The Respondent does not believe that there was any mistake from his side, especially when he has not gained any benefit from the disputed domain name by selling any kind of services or product.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that a complainant must prove each of the following elements:
(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.
A. Identical or Confusingly SimilarBased on the evidence presented, the Panel finds that the Complainant has rights in the ACCENTURE mark.
The disputed domain name wholly incorporates the ACCENTURE mark. It also includes, as its initial elements, the letters “myd” and the word “business”, with the three elements separated by hyphens. However, as the mark remains clearly recognizable within the disputed domain name, the Panel does not consider that these other elements avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
The disputed domain name includes a generic Top-Level Domain (“gTLD”) suffix (“.com”), which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use 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) [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 trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As regards the first and third circumstances above, the disputed domain name, which wholly incorporates the ACCENTURE mark, resolves to a website that publishes blogposts, some of which promote third party products and others of which include hyperlinks to commercial third party websites. The website either operates for the commercial benefit of the Respondent (if he is paid to promote third party products and link to third party websites) or for the commercial benefit of the relevant third parties, or both. The Complainant submits that the Respondent is neither affiliated with, nor has it been licensed or permitted to use, the Complainant’s ACCENTURE mark or any domain names incorporating the ACCENTURE mark. Accordingly, the Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services nor is he making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain.
As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Jay Sanghvi”, not the disputed domain name. There is no evidence indicating that the Respondent has been commonly known by the disputed domain name.
In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Turning to the Respondent’s arguments, he submits that he is not buying or selling any goods or services on the site associated with the disputed domain name but is just providing information. However, the evidence shows that certain blogposts on his site promote third party products, such as an open source e-commerce plugin for WordPress and automated social media management tools, while other posts include in-text hyperlinks to commercial third party sites, including an affiliate marketing and blogging expert, a SEO agency, and various attorneys. These blogposts are for the commercial gain of the Respondent himself or the relevant third parties, or both. The Panel does not consider that to be a legitimate noncommercial use of the disputed domain name without intent for commercial gain within the terms of paragraph 4(c)(iii) of the Policy. The Respondent does not allege any other rights or legitimate interests in respect of the disputed domain name. Accordingly, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case.
Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:
(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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 respondent’s] website or location or of a product or service on [the respondent’s] website or location.
With respect to registration, the disputed domain name was registered in 2020, years after the registration of the Complainant’s ACCENTURE trademark, including in India, where the Respondent is resident. The disputed domain name wholly incorporates the ACCENTURE mark, which is a coined word with no apparent meaning other than as a trademark. The disputed domain name resolves to a website that displays a title in which the greater than sign “>” in the Complainant’s ACCENTURE and device mark has been rotated 90 degrees to form the “A” in Accenture. The Panel does not consider these circumstances to be a coincidence, contrary to the Respondent’s submission. Moreover, the Complainant has acquired a considerable reputation in its ACCENTURE mark in its service sectors through longstanding use and promotion. The Panel is persuaded that the Respondent was aware of the Complainant and its ACCENTURE mark at the time that he registered the disputed domain name.
With respect to use, the disputed domain name wholly incorporates the ACCENTURE mark, combined with the letters “myd” and the word “business”, and resolves to a site that publishes blogposts, including some that promote third party products and others that include hyperlinks to commercial third party websites. Given these circumstances and the findings in Section 6B above, the Panel finds that the Respondent is using the disputed domain name intentionally to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy.
The Respondent argues that the Complainant should have contacted the Registrar when the disputed domain name was listed for auction and that the Registrar who conducted the auction should know the rules better than he does. However, in the Registration Agreement, the Respondent acknowledged and accepted that, even if the disputed domain name was accepted for registration, his entitlement to register the disputed domain name may be challenged by others who claim to have an entitlement to the disputed domain name. He also agreed to indemnify the Registrar. See the Registration Agreement, section 2, paragraphs 2(d) and 5.
The Respondent also asserts that he is not in the same business as the Complainant. However, this assertion is not borne out by the evidence, which shows that, among other things, the Respondent’s blogposts promote products in the area of digital business, an area in which the Complainant provides services. In any case, any dissimilarity between the Parties’ respective services does not prevent a finding of use in bad faith under the Policy as the disputed domain name is confusingly similar to the ACCENTURE mark, so that by the time Internet users realize that the Respondent’s site is not affiliated with the Complainant, they have already been diverted to it.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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
Matthew Kennedy
Sole Panelist
Date: September 24, 2021