The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / AIDAN CHIEN, Australia.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same 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 August 20, 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 23, 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 August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2021.
The Center appointed Kateryna Oliinyk as the sole panelist in this matter on September 29, 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 BackgroundAccording to the Complaint, the Complainant is an international business headquartered in Ireland that has been providing a broad range of services and solutions in strategy, consulting, digital, technology and operations under the name ACCENTURE since 2001. The Complainant has offices and operations in more than 200 cities in 51 countries.
The Complainant holds a series of the trademark registrations in various jurisdictions, filing its first trademark application on October 26, 2000 in United States (Application Serial No. 76/154,620) for the ACCENTURE trademark, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services. This application matured to registration (Reg. No. 3,091,811) on May 16, 2006. The Complainant's trademark portfolio in the United States also covers other registrations of the ACCENTURE trademarks, including the following ones:
Trademark
Goods and Services
Registration No.
Registration Date
ACCENTURE
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42
3,091,811
May 16, 2006
ACCENTURE
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42
2,665,373
December 24, 2002
ACCENTURE
Various goods in Classes 18, 25 and 28
2,884,125
September 14, 2004
ACCENTURE
(& Design)
Various services in Classes 35 and 36
3,862,419
October 19, 2010
According to the Complaint, the Complainant has the large portfolio of international filings in more than 140 countries. The Complainant owns more than 1,000 registrations for the ACCENTURE and ACCENTURE & Design trademarks and many other trademarks incorporating the ACCENTURE trademark for a variety of products and services including, but not limited to, its management consulting, technology services and outsourcing services.
The Complainant operates the official website under the domain name
The ACCENTURE trademark has been advertised in connection with various media and have been written about in the press. The Complainant has made the considerable investments into the promotion of the ACCENTURE trademark.
As a Fortune Global 500 company, the Complainant has 505,000 employees with 200 cities with the Complainant's locations and operations across 51 countries. The ACCENTURE trademark and the Complainant has been highly ranked in various prestigious international listings, including the following ones:
- Interbrand’s Best Global Brands Report;
- Kantar Millward Brown’s BrandZ – Top 100 Brand Ranking;
- Fortune Global 500 and in various other top rankings by Fortune.
The Complainant has received numerous awards for its business, products and services provided under the ACCENTURE trademark. The Complainant runs various promotional, social and sponsorship campaigns.
The disputed domain name
The Complainant contends that the disputed domain name
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for the ACCENTURE trademark. The Complainant’s ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The Respondent is identified as AIDAN CHIEN. Therefore, the Respondent is neither commonly known by the disputed domain name, nor he was known as such prior to the date on which the Respondent registered the disputed domain name. Inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Respondent, therefore, has no rights or legitimate interests in the disputed domain name.
Registered and used in bad faithThe Complainant submits that the Respondent had constructive notice that the ACCENTURE trademark was a registered trademark in the United States and many other jurisdictions worldwide. Given the Complainant’s worldwide reputation and the ubiquitous presence of the Complainant's ACCENTURE trademark on the Internet, it is highly likely that the Respondent was aware of the ACCENTURE trademark long prior to registering the disputed domain name. The passive or inactive holding of the disputed domain name that incorporates a registered trademark, without a legitimate Internet purpose, may indicate that the domain name is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarOwnership of a nationally or regionally registered trademark serves as a prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted evidence that the ACCENTURE trademark has been registered in various jurisdictions. Thus, the Panel finds that the Complainant’s rights in the ACCENTURE trademark have been established pursuant to the first element of the Policy.
The disputed domain name is comprised of the terms "accenture" and "australia" combined with the generic Top-Level Domain (“gTLD”) “.com”.
Thus, the Panel finds that the disputed domain name incorporates the Complainant’s ACCENTURE trademark entirely.
According to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, 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”.
The Panel finds that the Complainant’s ACCENTURE trademark is clearly recognizable within the disputed domain name. Once the gTLD is ignored as a standard registration requirement, as reflected in section 1.11.1 of the WIPO Overview 3.0, the addition of the geographical reference “australia” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the ACCENTURE trademark in which the Complainant has rights.
The first element of paragraph 4(a) of the Policy is therefore satisfied.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ACCENTURE trademark. Thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong,WIPO Case No. D2014-1875).
Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the disputed domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name, which could demonstrate right or legitimate interest of the Respondent. (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe,WIPO Case No. D2008-0642).
Furthermore, the nature of the disputed domain name, including additional terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.
The disputed domain name resolves to a page displaying an Internet browser error message stating that "[t]his site can’t be reached". Prior UDRP panels have found that the passive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See, by way of example, Skyscanner Limited v. WhoisGuard Protected, WhoisGuard, Inc. / petrov petya,WIPO Case No. DCC2020-0003.
In the Panel's view, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate non-commercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the ACCENTURE trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati,WIPO Case No. D2014-1839. Under such circumstances the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The second element of paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad FaithThe Policy establishes that, for purposes of Paragraph 4(a)(iii), bad faith registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location. See Policy, Paragraph 4(b)(iv).
As it was established by the Panel, the disputed domain name was created on June 4, 2021 and resolves to a page displaying an Internet browser error message stating that "[t]his site can’t be reached".
Under section 3.3 of the WIPO Overview 3.0, the non-use of a domain name (including a “coming soon” page), would not prevent a finding of bad faith under the doctrine of passive holding. Previous UDRP panels have held that the passive holding of a domain name that incorporates a well‑known trademark may confirm the bad faith use of a disputed domain name (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 “The lack of use [of a domain name] by itself does not indicate anything”).
While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado,WIPO Case No. D2018-0082.
The Complainant has produced evidence showing that it owns registrations for the ACCENTURE trademark in various countries, which dates of registration significantly precede the date of the registration of the disputed domain name.
In addition, the Complainant has credibly submitted that over the years it has developed substantial goodwill in the “Accenture” name and the ACCENTURE trademark. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and goodwill in its trademark near worldwide. See, e.g., Accenture Global Services Limited v. IC Inc./PrivacyProtect.org,WIPO Case No. D2013-2098, Accenture Global Services Limited v. Carl Mazzanti, eMazzanti Technologies,WIPO Case No. DCO2017-0013, Accenture Global Services Limited v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2019-2318.
The Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use of the disputed domain name.
The Panel has also established that the Respondent has concealed his identity by using the privacy service. While the use of a privacy shield is not necessarily objectionable itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler,WIPO Case No. D2016-1357.
Because the Complainant’s ACCENTURE trademark is the coined word and has the high degree of awareness among the public, it is implausible to believe that the Respondent was not aware of that mark when he registered the disputed domain name.
Furthermore, according to section 3.1.4 of the WIPO Overview 3.0, the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.
The Complainant submits that is well-settled that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. The Panel endorses that view. Given the reputation of the ACCENTURE trademark, registration in bad faith can be inferred. See, e.g., Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
The Respondent’s bad faith is also emphasized by the fact that the disputed domain name incorporates the geographical term "australia" in the disputed domain name which refers to the territory where the Complainant has the local presence, and this fact increases the risk of confusion. See Accenture Global Services Limited v. Super Privacy Service LTD c/o Dynadot,WIPO Case No. D2019-2318.
Taking the above facts into consideration, it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In light of the aforesaid, the Panel establishes that, by using the disputed 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, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The third element of paragraph 4(a) of the Policy is therefore satisfied.
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
Kateryna Oliinyk
Sole Panelist
Date: October 13, 2021