Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States” or “US”).
Respondent is Sahana K, India.
2. The Domain names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names and on that same date, the Registrar transmitted by email to the Center its verification response disclosing the registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 14, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amended Complaint. Complainant filed an amended Complaint on October 16, 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”).
On October 16, 2021, the Center received an informal communication from Respondent to which the Center acknowledged receipt.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. Respondent did not submit any response. Accordingly, the Center started the Commencement of Panel Appointment Process on November 9, 2021.
The Center appointed José M. Checa as the sole panelist in this matter on November 15, 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.
Respondent sent a supplemental filing to the Center, copied to Complainant, on November 16, 2021. The Center, as directed by the Panel, informed the Parties of the possibility to jointly request the suspension of proceedings in case settlement discussions were needed. No request for suspension was received within the deadline provided by Center.
On November 25, 2021, the Center received another supplemental filing from the Respondent to which the Center acknowledged receipt. In the Panel’s discretion, Respondent’s submission is declared inadmissible and will not be part of the case record; the Parties were previously given an opportunity to suspend proceedings in case settlement negotiations were needed. Accordingly, the Center informed the Parties that a Decision would be issued as scheduled.
4. Factual BackgroundSince 2001, Complainant uses the trademark ACCENTURE in commerce in connection with various services and specialties, including management consulting and business process services, which comprises various aspects of business operations such as supply chain and logistics services, as well as technology services and outsourcing services. At present, Complainant has offices and operations in more than 200 cities in 51 countries.
Complainant owns numerous trademark registrations in the United States for ACCENTURE, including US trademark registration No. 3,091,811, registered on May 16, 2005 in classes 9, 16, 35, 36, 37, 41, and 42 and trademark registration No. 2,884,125, registered on September 14, 2004 in classes 18, 25, and 28. Complainant also owns trademark registrations in more than 140 countries including, among others, trademark registration in India for ACCENTURE No. 967046, registered on October 30, 2000 in class 9, trademark registration No. 967047, for ACCENTURE registered on October 30, 2000 in class 16 and trademark registration No. 1240312 for ACCENTURE, registered on September 29, 2003 in classes 35, 36, 37, 41, and 42.
The disputed domain names were registered on September 8, 2021. At the time of filing the Complaint, the disputed domain name resolves to the Registrar’s holding page and the disputed domain name
Complainant has provided evidence of trademark registrations for ACCENTURE around the world.
Complainant’s brand has been widely advertised globally and has received multiple accolades and awards internationally. Complainant also supports social development and cultural projects worldwide in connection with the ACCENTURE Marks, such as its SKILLS TO SUCCEED initiative to help more than 3 million people around the world with the skills to find a job or build a business or with Louvre Museum to develop new technological programs designed to support the Louvre’s initiatives to spread culture, enhance its image and reach new segments of the public. Complainant is also a partner of sports organizations, such as the Golden State Warriors basketball team and, in the past, it was the Official Technology Partner for the RBS 6 Nations Rugby Championship and sponsored the World Golf Championships. As a consequence, Complainant has developed substantial goodwill in its ACCENTURE brand, which has been recognized as a leading global brand.
According to the Complaint, the domain names are confusingly similar to the trademark ACCENTURE, the addition descriptive terms such as “covidteam” or “info” being insufficient to avoid similarity, especially given the fact that ACCENTURE is a coined word (and therefore should have a wide scope of protection) and famous. The addition of the generic Top-Level-Domain (“gTLD”) “.com” to the disputed domain names is completely without legal significance.
Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s ACCENTURE Marks or any domain names incorporating the ACCENTURE Marks. Further, Respondent is not commonly known by the disputed domain names, nor was it known as such prior to the date on which Respondent registered the disputed domain names. Respondent has chosen to use Complainant’s famous ACCENTURE trademark in its domain names to create a direct affiliation with Complainant and its business and therefore, Respondent is not making a legitimate, noncommercial fair use of the disputed domain names. As the disputed domain names are inactive, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, or for any legitimate purpose at this time
Complainant argues that Respondent – given Complainant’s worldwide reputation and the presence of the ACCENTURE Marks on the Internet – was or should have been aware of the ACCENTURE trademark prior to registering the disputed domain names. It has long been held in UDRP decisions that the passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate purpose, may indicate that the domain name is being used in bad faith. Respondent’s failure to use the disputed domain names for any purpose is evidence of bad faith registration and use of the disputed domain names.
B. RespondentRespondent did not reply to Complainant’s contentions. In an email of October 16, 2021, Respondent stated:
“Hi Everyone ,
Please guide us . These domains are inactive , we just bought without knowing concequence. These domains was available at GoDaddy.com.
We just bought and we don't have knowledge about them.
Please advise. We do not want to use them.”
On November 16, 2021, Respondent sent the following message to the Center:
“we dont have any idea about this. all domains deactivated”
This latter email includes all contact information for Respondent, including its website.
6. Discussion and Findings A. Identical or Confusingly SimilarComplainant has provided evidence of its trade and service mark registrations for ACCENTURE establishing clear trademark rights in the mark.
The Panel finds that for the purpose of considering whether the disputed domain names are identical or confusingly similar to Complainant’s ACCENTURE mark, the gTLD “.com” is disregarded under the first element confusing similarity test (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.1). The Panel also finds that the addition of terms such as “covidteam” or “info” do not prevent a finding of similarity between Complainant’s trademark and the disputed domain names (WIPO Overview 3.0, section 1.8).
Complainant’s entire mark is included at the beginning of each of the disputed domain names, it is fully recognizable, and it is followed in each case by an additional term or terms. The Panel accordingly finds that the disputed domain names are confusingly similar to Complainant’s trademark as required by paragraph 4.(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant has put forward unrebutted assertions that it has not granted any authorization to Respondent to register the domain names or otherwise make use of its trademark.
In addition, Respondent’s email of October 16, 2021 (reproduced above) makes it clear that it does not have any rights or legitimate interest to the disputed domain names. In particular, Respondent states:
“We just bought [the disputed domain names] and we don’t have knowledge about them. […] We do not want to use them.”.
By its own assertion, Respondent admits that it cannot avail itself of any of the circumstances included in paragraph 4(c) of the Policy (i.e., (i) before any notice of the dispute, Respondent used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name; or (iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.).
Respondent did not put forward any other circumstance that would indicate any right or legitimate interest to the disputed domain names.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAs pointed out in the Complaint, based on the wide use of Complainant’s corporate brand, it is very unlikelythatRespondent was not aware of Complainant’s brand. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0, section 3.1.4).
The Panel also refers to Respondent’s email to the Center of November 16, 2021. That email included Respondent’s contact details along with its website. The Panel undertook limited research on Respondent’s website and Facebook profile and found the following statements regarding Respondent’s business:
“Namma wellness conducted more than 1200+ Medical camps at Corporate companies. We will be the one point contact for all medical needs.” [from Respondent’s website]; and
“Namma Wellness aims to be the largest, most comprehensive and most convenient healthcare service for Corporate companies & Healthcare Startups through innovative health promotion events.” [from Respondent’s Facebook profile]
Namma Wellness appears to be the name Respondent is trading under.
The Panel finds the reference in Respondent’s website and Facebook profile to “Corporate companies” particularly relevant to cast serious doubt on Respondent’s assertions that it had no knowledge of Complainant’s brand. In fact, such reference suggests that Respondent is targeting corporate companies to develop its business (in and of itself a perfectly legitimate activity) albeit it strengthens the evidence that Respondent indeed had or should have had knowledge of Complainant’s trademark.
Based on the above, the Panel finds that Respondent’s intention to register the disputed domain names (and subsequently use them) was likely to intentionally attempt to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location, in accordance with paragraph 4(b)(iv) of the Policy.
In addition, even if the disputed domain names are inactive, circumstances present in this case such as (i) the nature of the domain names (widely used corporate brand followed by descriptive terms), (ii) a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the disputed domain names, (iii) the failure of the Respondent to provide any evidence of actual or contemplated good-faith use, (iv) the implausibility of any good faith use to which the disputed domain names may be put further support a finding that Respondent’s registration and use of the disputed domain names was in bad faith (WIPO Overview 3.0, section 3.3).
Accordingly, the Panel finds that the disputed domain names have been registered and are being used in bad faith in accordance with 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 names
José M. Checa
Sole Panelist
Date: November 29, 2021