ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Accenture Global Services Limited v. Vicente Valdez Case No. D2024-3105 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 Vicente Valdez, United States. 2. The Domain Name and Registrar The disputed domain name
is registered with Nicenic International Group Co., Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2024. On July 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 31, 2024, 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 (“REDACTED FOR PRIVACY”) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 2024, 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 9, 2024. 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 13, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 4, 2024.
page 2 The Center appointed Naciri Bennani as the sole panelist in this matter on September 13, 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. 4. Factual Background The Complainant is an Irish company that has offices in 49 countries and provides services and solutions in strategy, consulting, digital, technology and operations. The Complainant owns numerous trademark registrations for ACCENTURE including: - United States trademark registration number 2665373 registered on December 24, 2002, for various goods and services related to consulting, computer software and educational services among other services, - United States trademark registration number 3091811 registered on May 16, 2006 for various goods and services related to consulting, computer software and design and developing of computer hardware among other services, - Egyptian trademark registration number 138277 registered on January 15, 2007, for manufacturers, merchants and services renderers, and - Indian trademark registration number 1240312 registered on September 29, 2003, for business management consultancy, educational services and installation, implementation, maintenance and repair services with respect to computer hardware systems. The Complainant owns the following domain name: , registered since August 29, 2000. The Complainant advertises the ACCENTURE trademark all over the world on the Internet, using various media and press, as well as in different locations. The Complainant provided evidence of the above. According to the WhoIs records, the disputed domain name was registered on May 18, 2024. The disputed domain name is inactive, resolving to a security warning webpage. 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 domain name is confusingly similar to the ACCENTURE marks in both sight and sound. According to the Complainant, the use of the trademark ACCENTURE paired with a hyphen and the generic term “help” suggests that the disputed domain name may serve as a contact portal for assistance from the Complainant. The Complainant argues that the ACCENTURE mark is distinctive and famous and that it started the use of this mark 23 years before the disputed domain name registration.
page 3 The Complainant contends that the addition of a generic Top-Level Domain (gTLD) and a descriptive term to the disputed domain name is without legal significance and will not prevent a finding of confusing similarity. The Complainant asserts that the Respondent has no legitimate interests in respect of the disputed domain name and that he is not using the disputed domain name for any valid purpose at this time. According to the Complainant, the ACCENTURE trademark is not a generic or descriptive term in which the Respondent may have interest and the respondent is neither affiliated, licensed or otherwise authorized to use the disputed domain name. The Complainant argues that the Respondent was or should have been aware of the ACCENTURE marks long prior to registering the disputed domain name. Therefore, the Complainant asserts that the Respondent registered and used the disputed domain name in bad faith. The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (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 was registered and is being used in bad faith. There are no exceptional circumstances within paragraph 5(f) of the Rules to prevent the Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. 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 showed rights in the mark ACCENTURE by virtue of its trademark registrations and as a result of the reputation the Complainant acquired over the years under the ACCENTURE mark throughout many countries.
page 4 It is well accepted that in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar. See e.g. Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb, WIPO Case No. D2017-0209. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The disputed domain name comprises the Complainant mark ACCENTURE in addition to the word “help”, a hyphen, and the gTLD “.com ”. The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other term [here, “help”] may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark 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. This includes the following: (i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. 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. In this case, there are no elements asserting that the Respondent uses the disputed domain name with a bona fide offering and the Respondent did not demonstrate a plan for such use as the disputed domain name simply resolves to a security warning webpage. Moreover, the Respondent is not commonly known by the disputed domain name and does not demonstrate a legitimate noncommercial or fair use of the disputed domain name. Further, the Panel finds that the composition of the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1.
page 5 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 Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Such circumstances include the respondent’s likely knowledge of the Complainant’s rights, the distinctiveness of the Complainant’s mark, or the failure of the Respondent to present a credible evidence-backed rationale for registering the disputed domain name. 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.): (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, 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 its website or location. In the present case, the Panel notes that the Respondent is not using the disputed domain name in good faith. The disputed domain name directs towards a security warning webpage without any demonstrable preparation to use the disputed domain name to create an operational website with a bona fide offering of goods or services. See e.g. OSRAM GmbH. v. Mohammed Rafi/Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, WIPO Case No. D2015-1149. Panels have found that the non-use of a domain name 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 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. See e.g. “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246. The Panel finds that the Complainant has established the third element of the Policy.
page 6 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. /Zineb Naciri Bennani/ Zineb Naciri Bennani Sole Panelist Date: September 27, 2024
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