The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Mohamed Binaouf, Saudi Arabia. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2020. On February 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2020, 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 February 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2020. The Respondent sent emails to the Center on March 5, 2020 and on March 8, 2020. On March 16, 2020, the Center informed the Parties that it will proceed to panel appointment. The Center appointed Assen Alexiev as the sole panelist in this matter on March 18, 2020. 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 a broad range of services and solutions in strategy, consulting, digital, technology and operations under the mark ACCENTURE, which it adopted in 2001. The Complainant is included in the Fortune Global 500 list of companies. The Complainant is the owner of the following trademark registrations of the sign ACCENTURE (the “ACCENTURE trademark”): - the United States trademark ACCENTURE with registration No. 2,665,373, registered on December 24, 2002 for goods and services in International Classes 9, 16, 35, 36, 37, 41, and 42; The ACCENTURE trademark was ranked at number 31 in the 2019 Interbrand’s Best Global Brands Report, and at number 36 in the 2019 Forbes World’s Most Valuable Brands. The Complainant maintains its official website at the domain name The disputed domain name was registered on November 11, 2019. The disputed domain name resolves to a blank webpage with a “website coming soon” notice. 5. Parties’ Contentions A. Complainant The Complainant submits that the disputed domain name is confusingly similar to the ACCENTURE trademark, as the only difference in the disputed domain name is the addition of the descriptive word “group” following the ACCENTURE trademark, which does not negate confusing similarity, but rather suggests an affiliation with the Complainant. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. It points out that the disputed domain name was registered more than 17 years after the Complainant first registered its ACCENTURE trademark, which is not a descriptive or generic term but was coined by the Complainant, and consumers associate this term exclusively with it and with its products and services. The Complainant further states that the Respondent is not affiliated with the Complainant or licensed by it to use the ACCENTURE trademark, and the Respondent is not commonly known by the disputed domain name. The Complainant submits in this regard that on November 21, 2019, it contacted the Respondent inquiring as to the Respondent’s purpose for registering the disputed domain name. On the same day, the Respondent replied alleging that it is in the business with cosmetic tools and had a registered company in Sudan by the name of “Accenture for Business Development.” The Complainant investigated the business records in Sudan and South Sudan but did not identify any registered company by such name or any “Accenture” business name affiliated with the Respondent. The Complainant also points out that the disputed domain name does not resolve to an active website. The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the Respondent was aware of the ACCENTURE trademark when it registered the disputed domain name, and registered it to create a direct affiliation with the Complainant and its business, to trade off the reputation and goodwill associated with ACCENTURE trademark, to cause confusion amongst Internet users and the Complainant’s customers, and to prevent the Complainant from owning the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent sent two informal email communications to the Center on March 5 and 8, 2020. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (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 Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]” The Respondent has however not submitted a formal Response and has thus not disputed the Complainants’ statements and evidence in this proceeding. In its email messages to the Center of March 5 and 8, 2020 it has not taken a position on any substantive aspect of the dispute. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the ACCENTURE trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the country code Top-Level Domain (“ccTLD”) of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.co” ccTLD of the disputed domain name. As discussed in sections 1.7 and 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between the textual components of the complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name. Where the relevant trademark is recognizable within the disputed domain name, the addition of other descriptive terms would not prevent a finding of confusing similarity under the first element. The disputed domain name incorporates the ACCENTURE trademark in its entirety in combination with a non-distinctive element – the dictionary word “group”. This difference between the disputed domain name and the ACCENTURE trademark is not significant, and the latter remains easily recognizable in the disputed domain name. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the ACCENTURE trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the disputed domain name was registered more than 17 years after the Complainant first registered its ACCENTURE trademark and that the Respondent is not affiliated with the Complainant or licensed by it to use the ACCENTURE trademark. The Complainant points out that the Respondent has not used the disputed domain name for an active website and that there is no registered company in Sudan or South Sudan whose name includes “Accenture”. Thus, 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 disputed the above statements of the Complainant; it has not alleged that it has rights or legitimate interests in the disputed domain name and has not submitted any evidence for such rights or legitimate interests. In particular, the Respondent has not submitted any evidence in support of its allegation made in the correspondence between the Parties prior to the dispute, that it has a company in Sudan under the name “Accenture for Business Development”, or that it is known under the disputed domain name. The disputed domain name incorporates the ACCENTURE trademark, which has substantial goodwill across the globe, as shown by the evidence submitted by the Complainant, and does not resolve to an active website. There is nothing to suggest that the Respondent has bona fide rights or legitimate interests in the disputed domain name. In view of the above, and in the absence of any denial by the Respondent or evidence to the contrary, the Panel finds that the Respondent has failed to rebut the prima facie case made by the Complainant that the Respondent has no rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent. The scenarios described in paragraph 4(b) are non-exclusive and merely illustrative. As summarized in section 3.3 of the WIPO Overview 3.0, from the inception of the UDRP, panelists have found that the non-use of a domain name, including a blank or “coming soon” page, would not prevent a finding of bad faith under the doctrine of passive holding. Factors that have been considered relevant in applying the passive holding doctrine include the degree of distinctiveness or reputation of the complainant’s mark, the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, the respondent’s concealing its identity or use of false contact details, and the implausibility of any good faith use to which the domain name may be put. The Panel finds that most of these factors are present in the case at hand and support a finding of bad faith passive holding of the disputed domain name. The ACCENTURE trademark is a distinctive coined term and has been extensively used by the Complainant as a brand and for its own domain name since 2000. It seems to the Panel that the Complainant’s mark has developed a very high degree of renown as a result of this very substantial use, and the Respondent is more likely than not to have been aware of the ACCENTURE trademark when it registered the disputed domain name incorporating this trademark. It is also more likely that the Respondent has targeted the ACCENTURE trademark, since its combination with the dictionary word “group” in the disputed domain name may suggest an affiliation with the Complainant. The Respondent has not submitted a Response and has not provided any evidence of actual or contemplated good-faith use of the disputed domain name or evidence in support of its allegation in the pre-dispute correspondence between the Parties that it operates a company whose name includes “Accenture”, which it could have easily done if it was true. The disputed domain name does not resolve to an active website. Therefore, the Panel finds that the disputed domain name was registered and has been used in bad faith. 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 Assen Alexiev
- the United States trademark ACCENTURE with registration No. 3,340,780, registered on November 20, 2007 for goods in International Classes 6, 8, 9, 14, 16, 18, 20, 21, 24, and 28;
- the European Union Trade Mark ACCENTURE with registration No. 001958370, registered on August 14, 2002 for goods and services in International Classes 9, 16, 35, 36, 37, 39, 41, and 42; and
- the International trademark ACCENTURE with registration No. 828118, registered on February 24, 2004 for goods and services in International Classes 9, 16, 18, 25, 28, 35, 36, 37, 41, 42, and 45.
Sole Panelist
Date: April 1, 2020
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