The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper LLP, United States of America.
The Respondent is Jack Martinez of Dubai, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (“.aeDA”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2018. On the same date, the Center transmitted by email to .aeDA a request for registrar verification in connection with the disputed domain name. On January 21, 2018, .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was February 12, 2018. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on February 13, 2018.
The Center appointed Torsten Bettinger as panelists in this matter on March 2, 2018. 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 international business that provides management consulting, technology services and outsourcing services under the name “Accenture” and is the owner of the ACCENTURE mark and similar company name. The Complainant has offices and operations in more than 200 cities in 56 countries, including in Dubai and Abu Dhabi in the United Arab Emirates.
The Complainant began using the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services on January 1, 2001.
The Complainant is the owner of several mark registrations for ACCENTURE, which have been registered in 144 countries all over the world, including the United Arab Emirates, where the Complainant filed trademark applications for the marks ACCENTURE and ACCENTURE (in Arabic), covering among other services, computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services. These applications matured to registration in 2002 (for example, Registration No. 29979 for ACCENTURE, registered on January 2, 2002). The Complainant provided a representative sample of certificates of registration for the Complainant’s trademark ACCENTURE in jurisdictions worldwide, including in the United Arab Emirates.
Before the filing of the Complaint the disputed domain name resolved to a Word Press website without substantive content. The registration date of the disputed domain name, as confirmed by .aeDA, is April 21, 2017.
At the time of rendering this decision, the disputed domain name is used for a website which offers services competing with ACCENTURE products.
On September 8, 2017, the Complainant contacted the Respondent by email, requesting information regarding the disputed domain name. The Respondent did not reply to this email. 5. Parties’ Contentions A. Complainant
The Complainant describes itself as a provider of management consulting, technology services and outsourcing services. The Complainant has submitted evidence that it is the owner of the domain name registered on August 30, 2000.
The Complainant contends that:
- it has extensively used and continues to use the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services since January 2001;
- the ACCENTURE mark has been recognized as a leading global brand by reputable brand consulting companies in the industry and has been recognized in Interbrand’s Best Global Brands Report since 2002;
- for the past 14 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies;
- as a result of extensive use and promotion, the ACCENTURE mark has become distinctive and well-known globally and has enjoyed such distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name.
The Complainant provided evidence that, before notice of the dispute, the disputed domain name was resolving to a Word Press website without substantial content. The screen capture was taken on December 29, 2017.
With regard to the requirement of identity or confusing similarity between the trademark and the domain name pursuant to paragraph 6(a)(i) of the Policy, the Complainant submits that the disputed domain name is confusingly similar to a trademark in which it has rights as the disputed domain name incorporates the Complainant’s ACCENTURE trademark in its entirety and only differs from the Complainant’s trademarks by the addition of the descriptive term “tech”.
The Complainant argues that the addition of this term does not serve to distinguish the disputed domain name in any material way but actually reinforces the confusing similarity with the Complainant’s trademark as the term “tech” is descriptive of the Complainant’s technical services.
The Complainant further argues that it is generally accepted that the addition of a country code Top-Level Domain (“ccTLD”) suffix is irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark.
With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:
- the Complainant has not licensed or otherwise permitted the Respondent to use its ACCENTURE mark, or to apply for or use any domain name incorporating the mark;
- the Respondent cannot assert that, prior to having notice of this dispute, it was using, or had made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services in accordance with paragraph 6(c)(i) of the Policy, as the disputed domain name redirected to a website without any offerings of goods and services or any other substantive content;
- the Respondent cannot claim that it is commonly known by the Complainant’s trademarks, in accordance with paragraph 6(c)(ii) of the Policy;
- the Respondent cannot assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to paragraph 6(c)(iii) of the Policy,
Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:
- the Complainant’s ACCENTURE trademark is an invented word that has achieved worldwide recognition and, as such, is not a term that a domain name registrant would legitimately choose unless seeking to create an impression of an association with the Complainant;
- given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE mark on the Internet, and goodwill worldwide, it would be inconceivable for the Respondent to argue that it did not have knowledge of the Complainant’s ACCENTURE trademark at the time of registration of the disputed domain name;
- the Respondent had constructive notice that the ACCENTURE mark was a registered trademark in the United Arab Emirates and many other jurisdictions;
- the Respondent could simply not have chosen the disputed domain name for any reason other than to deliberately cause confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation;
- there is no reasonable explanation for the Respondent’s selection of the disputed domain name other than that the Respondent was intentionally attempting to trade off of the goodwill the Complainant has established in its ACCENTURE mark;
- the Respondent did not register the disputed domain name to actually offer services but, instead, registered and is using the domain name for the bad-faith purpose of appearing associated or affiliated with the Complainant;
- even if the Respondent intended or intends to offer services under a domain name that incorporates the Complainant’s trademark such use would demonstrate that the Respondent acted in bad faith in registering a domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
It is well established that the test of identity or confusing similarity under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the disputed domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah,WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar,WIPO Case No. D2003-0327; BWT Brands, Inc and British American Tobacco (Brands), Inc. v. NABR,WIPO Case No. D2001-1480; see also section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The test of identity or confusing similarity under the UDRP is identical with the standard under the Policy. Accordingly, the Panel has drawn on authority concerning the UDRP, in relation to similar terms under this element and other elements of the Policy.
In this case, the disputed domain name only differs from the Complainant’s trademarks by the addition of descriptive the term “tech”.
The addition of merely descriptive wording to a trademark in a domain name is insufficient to distinguish a domain name from a complainant’s trademark and in itself to avoid a finding of confusing similarity under the first element of the UDRP. (See, for instance, Facebook Inc. v. Sleek Names, SL Names, VSAUDHA,WIPO Case No. D2015-0547 (“The disputed domain names contain as a first and/or dominant element the Complainant’s famous trademark FACEBOOK, combined with a variety of descriptive terms, for example, ‘account’, ‘password’, ‘hacker’, ‘analytics’, ‘survey’ et cetera. The addition of these terms do not serve to distinguish the disputed domain names in any material way.”); see also, for instance, Dropbox, Inc. v. Mohd Shariq, Techinspire,WIPO Case No. D2016-1194 (“The domain name consists of the Complainant’s registered mark DROPBOX plus the generic words ‘support’ and ‘number’ separated by hyphens. The addition of these generic words and hyphens do not serve to distinguish the domain names from the Complainant’s DROPBOX marks and the Panel finds that the domain names are confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.”); see also section 1.9 of WIPO Overview 3.0).
Finally, it has been long established in decisions under the UDRP and the Policy that the specific ccTLD designation such as “.ae” is typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable suffix may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).
For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark ACCENTURE in which the Complainant has exclusive rights. B. Rights or Legitimate Interests
Pursuant to paragraph 6(c) of the Policy the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:
“(i) before any notice to you [the Respondent] of the dispute, your 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) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the Respondent] are 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”.
The Complainant has asserted that it never licensed or permitted the Respondent to use its ACCENTURE trademark, that the Respondent has no trademark rights that correspond to the disputed domain name and that the Respondent has not been commonly known by the disputed domain name.
Furthermore, the Complainant has provided a screen capture of the Respondent’s website that shows that before notice of the dispute the disputed domain name was not used in connection with any business activities.
These assertions are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See (WIPO Overview 3.0, section 2.1.)
The Respondent has elected not to respond to the Complainant’s statements and has not provided any evidence that, before notice of this dispute, it has made use or prepared to use of the disputed domain name in connection with a bona fide offering of goods or services, or raised any other basis on which it might have a right or legitimate interest in the disputed domain name.
The fact that, after the filing of the Complaint, the disputed domain name redirects to a website which appears to offer services such as app development, web development or digital marketing does not discharge the Respondent’s evidentiary onus. In fact, even if the Respondent intended to use the disputed domain name in connection with the offering of these services under the disputed domain name, such use would not have been a bona fide use pursuant to paragraph 6(c)(i) of the Policy.
It is a common view that a respondent will be unable to demonstrate rights or legitimate interests where the respondent is using the disputed domain name to sell goods or services intentionally competitive with the complainant and it is evident in this case that the disputed domain name was chosen in order to capitalize on Internet user confusion and to increase exposure to the Respondent’s competing goods.
The services offered on the website to which the disputed domain name redirects after the commencement of this proceeding are competing with or at least similar to those for which the Complainant’s mark is protected. It is therefore evident that the use of the disputed domain name would create the false impression that the Respondent is associated or affiliated with the Complainant.
The Panel therefore concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 6(a)(ii) of the Policy. C. Registered or is Being Used in Bad Faith
Paragraph 6(b) of the Policy provides four, non-exclusive circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the Respondent has registered the disputed 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) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted 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 the Respondent’s website or location.
Based on the record in this proceeding, the Panel is satisfied that the Complainant’s ACCENTURE mark is highly distinctive and famous throughout the world, including in the United Arab Emirates where the Respondent is based.
Given the Complainant’s renown and goodwill worldwide, including in United Arab Emirates, it is inconceivable that the Respondent did not have knowledge of the Complainant’s ACCENTURE trademark at the time of registration of the disputed domain name.
As the disputed domain name reproduces the mark in its entirety with the mere addition of the descriptive term “tech”, the Respondent, on the balance of probabilities, has registered the disputed domain name with the purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the Complainant’s goodwill and reputation.
The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.
Further, paragraph 6(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith use.
The Panel finds that, at the time of rendering the decision, the disputed domain name is used for a website which offers services competing or at least similar with those for which the Complainant’s trademark ACCENTURE is protected. The use of the disputed domain name by the Respondent therefore invariably creates a false association with the Complainant that results in misleading diversion and taking unfair advantage of the Complainant’s rights. This is a strong indication that the Respondent registered and is using the disputed domain name with the intent of appearing associated or affiliated with the Complainant and to trade off the value of the Complainant’s trademark.
Based on the evidence presented to the Panel, the Respondent’s registration and use of the disputed domain name with no conceivable explanation for doing so and the Respondent’s lack of response to the Complaint, the Complainant has also satisfied its burden on paragraph 6(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Torsten Bettinger
Panelist
Date: March 16, 2018
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