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 Whois Privacy Protection Service by onamae.com / xiansheng chen, chenxiansheng, Singapore.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 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 November 24, 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 in English on November 25, 2021.
On November 24, 2021, the Center transmitted an email communication to the Parties in English and Japanese regarding the language of the proceeding. On November 25, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Japanese of the Complaint, and the proceedings commenced on December 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2021.
The Center appointed Keiji Kondo as the sole panelist in this matter on December 30, 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 and is the owner of the ACCENTURE trademark.
On October 26, 2000, the Complainant filed a United States trademark application (Application Serial No. 76/154,620) for the trademark ACCENTURE, 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 also holds other United States trademark registrations for the ACCENTURE trademark and a combination of ACCENTURE and design, among which United States Trademark Registration No. 2,665,373 was registered on December 24, 2002.
Marks fully incorporating the ACCENTURE trademark, namely the ACCENTURE Marks, have been advertised in connection with various media and have been written about in the press. The Complainant’s annual advertising expenditures amounted to USD 77 million in 2009, and ranged between USD 66 million and USD 70 million from 2010 to 2018. The Complainant’s annual advertising expenditures were respectively USD 33 million and USD 32 million in 2019 and 2020. Millions of sports fans encounter the ACCENTURE Marks, as the Complainant has served as partner or sponsor for many sports events, such events including the Accenture Match Play Championship of golf.
According to the Whois record, the disputed domain name,
The disputed domain name is identical and confusingly similar to the ACCENTURE trademark. The only difference in the disputed domain name when compared to the Complainant’s ACCENTURE trademark is the addition of the descriptive terms “HR” and “Services” to the end of the mark, with “HR” suggesting the common acronym or reference for “human resources”.
The ACCENTURE trademark is distinctive and famous. The ACCENTURE trademark consists of a coined term and, as such, should be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand (as demonstrated by the heavy advertising presence worldwide). Consumers associate this term exclusively with the Complainant, and its products and services owing to the international goodwill that the Complainant has developed in the ACCENTURE trademark over the years.
The addition of a generic Top-Level Domain (“gTLD”) to a domain name is “completely without legal significance.” Adding random characters or a descriptive term to a trademark in a domain name fails to negate confusing similarity, especially when the descriptive term suggests an affiliation with the Complainant. The inclusion of “HR” and “Services” in this case appears to refer to the Complainant’s own human resources or careers/hiring division, and, thus, suggests affiliation with the Complainant.
Therefore, the disputed domain name is virtually identical to and is confusingly similar to the Complainant’s ACCENTURE trademark.
The Complainant’s ACCENTURE trademark is not a generic or descriptive term. Therefore, the Respondent should not have an interest in it. The Complainant’s ACCENTURE trademark is globally famous and have acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use in connection with the Complainant’s goods and services.
The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE trademark or any domain name incorporating the ACCENTURE trademark.
The Respondent is identified as xiansheng chen / chenxiansheng. Therefore, the Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which the disputed domain name was registered. It is clear that the Respondent is not commonly known by the disputed domain name and it appears that the Respondent has chosen to use the disputed domain name to create a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, either.
The disputed domain name resolves to a page displaying an Internet browser error message stating, “[t]his site can’t be reached.” Prior UDRP panels have found that passive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. As of the filing date of the Complaint of this case, the Respondent has held the disputed domain name for over two months and has failed to make any developments or “demonstrable preparations” to use the disputed domain name with a bona fide offering of goods or services.
In summary, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and it appears that the Respondent has chosen the disputed domain name to trade off the reputation and goodwill associated with the Complainant’s ACCENTURE trademark, to cause confusion amongst Internet users and third parties, and to prevent the Complainant from owning the disputed domain name.
It is clear that the Respondent has no rights or legitimate interests in the disputed domain name.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.3, describes the circumstances under which the passive holding of a domain name will be considered to be a bad faith registration: “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) (Annex CC).
In the present case, the Complainant has demonstrated that the ACCENTURE trademark is distinctive and well-known throughout the world, and it is highly unlikely that the Respondent registered the disputed domain name independently for its own purposes. A high degree of renown attaches to the Complainant’s ACCENTURE trademark as a result of its extensive use and promotion of the trademark in relation to its world-renowned business management consulting, technology services and outsourcing services, such that it is implausible for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s ACCENTURE trademark. Moreover, the Whois information for the disputed domain name previously was private and the identity of the real owner was concealed. Each of these facts are indicative of the disputed domain name being held in bad faith.
The Respondent’s failure to use the disputed domain name for any purpose is evidence of bad faith registration and use of the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1. Language of the ProceedingIn its email transmitted to the Center on November 24, 2021, the Registrar confirmed that the language of the Registration Agreement is Japanese. The Complainant filed the Complaint in English, and requested that English be the language of the proceeding in the communication to the Center on November 25, 2021. Considering the following circumstances, the Panel, exercising its authority to determine the language of the proceeding under paragraph 11(a) of the Rules, has decided English as the language of the proceeding:
- The Complaint was filed in English;
- The Complainant is an Irish entity, and represented by a US law firm;
- The Respondent’s address is in Singapore;
- The website at the disputed domain name only displays a message in English, reading “this site can’t be reached.”;
- On November 24, 2021, the Center sent a communication to the Parties, in English and Japanese, regarding the language of the proceeding, but the Respondent did not comment on the language of the proceeding;
- The Respondent did not reply to the Complainant’s contentions;
- The disputed domain name contains “services”, which is an English word, suggesting that the Respondent has some ability to communicate in English; and
- Ordering the translation of the Complaint would only result in extra delay of the proceeding and additional cost for the Complainant.
The Complainant owns a United States Trademark Registration for ACCENTURE. The disputed domain name consists of “accenture”, “hr”, “services” and a gTLD, “.com”. Therefore, the Panel finds that the disputed domain name entirely incorporates the Complainant’s trademark ACCENTURE.
The similarity test of the first UDRP element serves as a standing requirement. In the present case, the Complainant’s trademark ACCENTURE is clearly recognizable in the disputed domain name. The addition of the terms “hr” and “services”, in the present case, does not prevent a finding of confusing similarity under the first element.
It is well-established that the gTLD, “.com”, should be disregarded in the similarity test.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark within the meaning of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsThe Complainant has never authorized the Respondent to register a domain name incorporating its trademark. The Respondent’s name is in no way similar to the Complainant’s trademark ACCENTURE, and, therefore, it is inconceivable that the Respondent has been commonly known by the disputed domain name.
The Respondent does not use the disputed domain name actively. The website directed by the disputed domain name only displays a message reading “this site can’t be reached.” Such a use would not be regarded as use in connection with a bona fide offering of goods or services, nor as a legitimate noncommercial or fair use.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe disputed domain name was registered on August 23, 2021. It is nearly 19 years after one of the Complainant’s early trademark registrations, United States Trademark Registration No. 2,665,373 for ACCENTURE, was registered on December 24, 2002.
Considering that the Complainant’s ACCENTURE trademark is distinctive, and “Accenture” is a coined word without carrying any meaning in English or any other language, it is inconceivable that the Respondent was not aware of the Complainant’s trademark ACCENTURE when the disputed domain name was registered. Further, the Respondent did not reply to the Complaint’s contentions. Moreover, the Respondent, using a privacy proxy service, conceals its identity. These facts support the finding that the Respondent intentionally chose the disputed domain name to prevent the Complainant from acquiring it, or to cause confusion with the Complainant’s trademark ACCENTURE. Accordingly, the Panel concludes that the disputed domain name was registered in bad faith.
Based on the facts discussed in the previous section, it is clear that the Respondent has no intention to use the disputed domain name in any active manner. It is well-established that non-use of the disputed domain names effectively amounts to bad faith use for the purposes of the Policy under the passive holding doctrine. Therefore, the Panel finds that the disputed domain name is being used in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith within the meaning of 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
Keiji Kondo
Sole Panelist
Date: January 9, 2022