ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Accenture Global Services Limited v. Edwin Santino Case No. D2024-3027 1. The Parties The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”). The Respondent is Edwin Santino, Nigeria. 2. The Domain Name and Registrar The disputed domain name
is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2024. On July 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 25, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2024. The Center appointed Mireille Buydens as the sole panelist in this matter on September 17, 2024. 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.
page 2 4. Factual Background The Complainant is a company registered in Ireland and has used the ACCENTURE trademark since 2001 in connection with various services, including management consulting, technology and outsourcing services. The Complainant has operations in at least 49 countries. The Complainant provides evidence that it owns a large international portfolio of trademark registrations for the word ACCENTURE and for the stylized word ACCENTURE (together referred to herein as “the ACCENTURE Trademark”). These registrations include: - United States Trademark 2,665,373 for ACCENTURE (stylized word), registered on December 24, 2002; - United States Trademark 3,091,811 for ACCENTURE, registered on May 16, 2006; - Indian Trademark no. 967046 for ACCENTURE (word mark), registered on October 30, 2000; and - Egyptian Trademark no. 142523 for ACCENTURE (stylized word) registered on December 11, 2006. The substantial filed evidence establishes that the ACCENTURE Trademark is very well known and is a leading global brand. The Complainant has been recognized and awarded many times for its business services and brand recognition. The Complainant owns and operates the domain name , which was registered on August 29, 2000. The disputed domain name was registered on February 7, 2024. According to the Complaint, the disputed domain name results in a security warning website stating “[a]ttackers on the site you’re trying to visit might trick you into installing software or revealing things like your password, phone, or credit card number. [Internet Browser] strongly recommends going back to safety.” At the time of this decision, the disputed domain name resolves to a blank page mentioning “Proudly Served by LiteSpeed Web Server at www.accentureassetmgt.com Port 443”. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that the disputed domain name is confusingly similar to the ACCENTURE Trademark. It notes that the disputed domain name contains the ACCENTURE Trademark paired with the generic term “asset” and the letters “mgt,” which, when paired with the term “asset”, suggests a reference to the term “management.” The Complainant further argues that the ACCENTURE Trademark is famous and a word invented by the Complainant that is associated exclusively with the Complainant. The ACCENTURE Trademark is recognizable within the disputed domain name and the mere addition of the descriptive term “asset” and the acronym “mgt” (for “management”) to the ACCENTURE Trademark does not negate similarity. On the contrary, Internet users are highly likely to be confused as to whether an association exists between the disputed domain name and the Complainant. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name since the Respondent is neither affiliated with the Complainant nor authorized to use the ACCENTURE Trademark. The Respondent’s name is “Edwin Santino” and it is not therefore commonly known by the disputed domain name. The Complainant further contends that the Respondent is not using the disputed domain name for any bona fide offering of goods or services or fair use as it results in a
page 3 webpage displaying a security warning stating that the site is not safe. Use of the disputed domain name for a malicious web attack or for malware purposes in no way confers on the Respondent any rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent, given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE Trademark on the Internet, was or should have been aware of the ACCENTURE Trademark prior to registering the disputed domain name. The Complainant further contends that the use of the disputed domain name to redirect Internet users to a malicious website is evidence of bad faith registration and use of the disputed domain name. Given the well-known status of the Complainant’s ACCENTURE Trademark, 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 Trademark. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the Complainant prove each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trademarks or service marks in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the ACCENTURE Trademark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the ACCENTURE Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms, here the term “asset” and the letters “mgt” (which, when paired with the term “asset,” suggests a reference to the term “management.”), may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain name and the ACCENTURE Trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Respondent is not licensed by or affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known by the disputed domain name, nor is there any evidence of use or demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. There is no evidence of legitimate noncommercial or fair use of the disputed domain name, either. On the contrary, the Panel notes that (a) the disputed domain name reproduces the ACCENTURE Trademark with the mere addition of the descriptive term “asset” and the letters “mgt” (which, when paired with “asset” is to be understood as an acronym of “management”); (b) the evidence filed with the Complaint shows that the disputed domain name resolved to a website displaying a warning message stating “[a]ttackers on the site you’re trying to visit might trick you into installing software or revealing things like your password, phone, or credit card number. [Internet Browser] strongly recommends going back to safety.” This indicates that the website to which the disputed domain name resolved was likely to contain malicious software. Should the website at the disputed domain name indeed contain malicious software, panels have held that such use would never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Moreover, the composition of the disputed domain name, which incorporates the the ACCENTURE Trademark with the term “asset” and the letters “mgt” (possibly for “management”) identifying the Complainant’s business, would mislead Internet users into believing that the disputed domain name may be associated with the Complainant. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. In the present case, the Panel notes that the Respondent has composed the disputed domain name by combining the Complainant’s ACCENTURE Trademark with the descriptive word “asset” and the acronym “mgt” for “management”. The ACCENTURE Trademark is not descriptive nor even evocative of the consulting, technology and outsourcing services. A quick search for the term Accenture online would have revealed to the Respondent the existence of the Complainant and its Trademark. As a result, the Panel finds that the Respondent was more likely than not aware of the Complainant’s Trademark at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.
page 5 Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, the Panel notes that the disputed domain name which reproduces the ACCENTURE Trademark with the mere addition of the descriptive word “asset” and the acronym “mgt” (for “management”), combined with the generic Top-Level Domain (“gTLD”) “.com”, falsely suggests that Internet users will find a website affiliated with the Complainant and proposing asset management services (or technology services related to assets management). The Respondent has sought to create a misleading impression of association with the Complainant, which is a famous company in the consulting field, when registering the disputed domain name. The Panel notes that the Complainant has provided evidence that the disputed domain name resolved to a website displaying a security warning message at the time of filing of the Compliant. Were the disputed domain name used for illegal activity, panels have held that such use would constitute bad faith under the Policy. WIPO Overview 3.0, section 3.4. The disputed domain name currently resolves to an error page. Panels have found that the non-use of a domain name (including a blank or error page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s ACCENTURE Trademark, and the composition of the disputed domain name, and finds that in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy. Furthermore, the failure of the Respondent to submit a response is further evidence of bad faith, given all the circumstances of the case. The Panel finds that the Complainant has established the third element of the 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. /Mireille Buydens/ Mireille Buydens Sole Panelist Date: October 1, 2024
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