ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Accenture Global Services Limited v. yi wan Case No. D2023-0339 1. The Parties The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America. The Respondent is yi wan, China. 2. The Domain Name and Registrar The disputed domain name
is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 25, 2023. On January 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 25, 2023, 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 (Registration Private, Domains By Proxy) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 26, 2023 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 January 31, 2023. 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 February 2, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 24, 2023. The Center appointed Shwetasree Majumder as the sole panelist in this matter on March 3, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is an international business that provides services and solutions under the name ACCENTURE and is the owner of the ACCENTURE mark. ACCENTURE is a coined mark. The Complainant has registered its trademark ACCENTURE in several jurisdictions. Some of the earliest registrations of the Complainant's mark ACCENTURE in United States of America (USA) are as below: - ACCENTURE, USA No. 3,091,811, registered on May 16, 2006; - ACCENTURE, USA No. 2,665,373, registered on December 24, 2002; - ACCENTURE, USA No. 3,340,780, registered on November 20, 2007; - ACCENTURE, USA No. 2,884,125, registered on September 14, 2004; - ACCENTURE & Design, USA No. 3,862,419, registered on October 19, 2010. The Complainant owns the domain name which was registered on August 30, 2000. The Complainant's website for business activities is "www.accenture.com" The disputed domain name was registered on December 23, 2022. The disputed domain name resolves to a parked page. 5. Parties' Contentions A. Complainant The Complainant claims trademark rights in ACCENTURE since the year 2001. The Complainant has relied on several trademark registrations for its mark ACCENTURE. Some of the earliest trademark registrations for ACCENTURE have been obtained by the Complainant in the USA and are registration Nos. 3,091,811 and 2,665,373 with registration dates of May 16, 2006 and December 24, 2002 respectively. Certificates of registration for the trademark ACCENTURE in jurisdictions worldwide has been submitted as Annex E to the Complaint. The Complainant states that in Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted, WIPO Case No. D2013-2099, the Panel has found that Complainant has rights in the mark ACCENTURE. The Complainant claims that reputable brand consulting companies in the industry have recognized the ACCENTURE mark as a leading global brand. The support of its claims of fame and goodwill, the Complainant has relied on and submitted advertising expenditure, list of awards and rankings, and details of its collaborative and promotional initiatives under the mark ACCENTURE. The Complainant claims that its mark ACCENTURE has become distinctive and famous globally long prior to the date on which the Respondent registered the disputed domain name. The Complainant has brought this Panel's attention to Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098. In this case, the panel made a finding that Complainant's mark ACCENTURE has been extensively used, is well-known globally, is vested with significant goodwill and carries distinction. The Complainant's case is that the disputed domain name is nearly identical and confusingly similar to the Complainant's famous ACCENTURE trademark. The disputed domain name is comprised of the ACCENTURE trademark paired with a hyphen and the letters "sg," which may be intended as a reference to Singapore using the geographic abbreviation "sg". The Complainant submits that adding a descriptive or geographic term to a trademark in a domain name fails to negate confusing similarity. The Complainant has placed reliance on Accenture Global Services Limited v. Kimberly Moreland, WIPO Case No. D2017-2189. In this case, the panel found the domain name confusingly similar to Complainant's trademark ACCENTURE. page 3 Regarding the second element of the Policy, the Complainant submits that the Respondent has not used the disputed domain name with a bonafide offering of goods or services. The Respondent is yi wan and is not commonly known by the disputed domain name. Further, the disputed domain name is a parked page and this cannot be considered a legitimate non-commercial use or fair use. The Complainant argues that given the well-known status of its ACCENTURE mark and its ownership of the domain name , there is no reason for the Respondent to have registered the disputed domain name other than to trade off of the reputation and goodwill of the Complainant's ACCENTURE Marks. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings As per paragraph 5(e) of the Rules where a Respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the Complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the panel may draw such inferences as it considers appropriate. Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements required under by a preponderance of evidence: i. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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 Similar Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has produced trademark registration certificates in the USA, and other jurisdictions, in respect of the mark ACCENTURE. The disputed domain name incorporates the Complainant's mark ACCENTURE in its entirety, paired with a hyphen and the letters "sg". Referring to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), sections 1.7 and 1.8, this Panel notes that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element. In the present case, the Complainant's mark ACCENTURE is clearly recognizable in the disputed domain name and therefore the addition of "sg" does not prevent a finding of confusing similarity. (See Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316). The WIPO Overview 3.0, section 1.7, provides the consensus view of UDRP panels: "While each case is judged on its own merits, 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." page 4 Further, this Panel agrees with the finding in Accenture Global Services Limited v. Kimberly Moreland, WIPO Case No. D2017-2189, which has been cited by the Complainant. The addition of "sg" in the disputed domain name can be most likely be understood as an abbreviation for a geographical location reference to Singapore. The letters "sg" does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's mark ACCENTURE. The generic Top-Level Domain ("gTLD") ".com" is generally disregarded for the purposes of comparison under this element. In view of the above-mentioned findings, the Panel concludes that the disputed domain name is confusingly similar to the Complainant's trademark and that the requirement of paragraph 4(a)(i) of the Policy stands satisfied. B. Rights or Legitimate Interests The consensus view of the second element under paragraph 4(a) of the Policy requires the Complainant to establish on a prima facie basis that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has already submitted evidence that it holds exclusive rights in the trademark ACCENTURE by virtue of statutory registrations and by common law use, which rights have accrued in the Complainant's favour. Furthermore, the disputed domain name is a parked page. This constitutes neither a bona fide offering of goods or services, nor a legitimate non-commercial or fair use in the present circumstances. The view of previous UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy has been summarized in section 2.1 of the WIPO Overview 3.0, which states: "While the overall burden of proof in UDRP proceedings is on the complainant, [.] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence to demonstrate its rights or legitimate interest in the domain name." The Respondent has failed to file a response to rebut the Complainant's prima facie case or to advance any claim as to rights or legitimate interests in the disputed domain names (particularly, in accordance with paragraph 4(c) of the Policy). Accordingly, the Panel finds the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In order to prevail, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith according to paragraph 4(a)(iii) of the Policy. Bad faith is understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark (see section 3.1 of the WIPO Overview 3.0). The Panel has considered the Complainant's submissions and the documentary evidence filed with the Complaint. The Panel finds that the Complainant has extensively used its ACCENTURE trademark for a long time before the registration of the disputed domain name, including using it on the Internet. The Respondent's probable purpose in registering the disputed domain name which incorporates the entire mark of the Complainant is, in the Panel's view, to capitalize on the reputation of the Complainant's mark. The disputed domain name is passively held by the Respondent. However, this does not prevent a finding of bad faith under the doctrine of passive holding. (see section 3.3 of the WIPO Overview 3.0).As set out in the WIPO Overview 3.0, section 3.1.4, UDRP panels have consistently found that 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. Here, there is no doubt that the Complainant's mark ACCENTURE is a recognised and popular mark. In fact, a previous UDRP panel in Accenture Global page 5 Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098, has found that "ACCENTURE mark can be considered as well-known globally and vested with significant goodwill". This Panel agrees with the finding. Hence, the Panel is satisfied that the Respondent knew, or in any event ought to have known, of the Complainant's mark ACCENTURE. The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith. Absent any formal response from the Respondent, little is known about the Respondent. The Respondent has not availed himself of the opportunity to present any case of good faith that it might have had, and, in view of the circumstances, the Panel cannot conceive of any. The Panel finds that on the balance of probabilities, the Respondent's conduct in registering and using the disputed domain name constitutes opportunistic bad faith under the Policy. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of Policy. 7. Decision For 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 be transferred to the Complainant. /Shwetasree Majumder/ Shwetasree Majumder Sole Panelist Date: March 17, 2023
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