WIPO Domain Name Decision DCO2021-0092 for acccenture.co

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Accenture Global Services Limited v. Milen Radumilo Case No. DCO2021-0092 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 Milen Radumilo, British Virgin Islands, United Kingdom.

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 November 30, 2021. On December 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 2, 2021 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 December 6, 2021.

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 December 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2021.

The Center appointed Daniel Kraus as the sole panelist in this matter on January 18, 2022. 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 name ACCENTURE. It operates in 51 countries worldwide, using its trademark ACCENTURE since 2001.

The Complainant owns over 1,000 registrations for the trademarks ACCENTURE and ACCENTURE & Design, in more than 140 countries worldwide. Among these, the Complainant is the owner of United States trademark registration No. 3,091,811, registered on May 16, 2006, for various goods and services in classes 9, 16, 35, 36, 37, 41, and 42.

The Complainant has invested substantial amounts in the promotion of its ACCENTURE trademarks, which have been included among the “Best Global Brands” in several publications, since 2002. The Complainant has also heavily invested in its presence on the Internet and invests tens of millions of United States dollars in the advertising of its ACCENTURE trademarks. The trademark has been recognized as a leading global brand. The Complainant also supports numerous social development, sports, and cultural programs worldwide.

The disputed domain name was registered on July 28, 2020. At the time of the filing of the Complaint, depending on the Internet browser used, the disputed domain name leads in particular to a website displaying a security warning or a sponsored website displaying pay-per-click (“PPC”) links.

5. Parties’ Contentions A. Complainant

The Complainant arguments are the following:

First, the disputed domain name is identical and confusingly similar to the ACCENTURE trademark. The only difference in the disputed domain name when compared to the Complainant’s ACCENTURE trademark is the addition of a letter “c” in the middle, thereby constituting a typical case of typosquatting.

The ACCENTURE trademark is distinctive and famous. The ACCENTURE trademark consists of a coined term and, as such, should be afforded a wide scope of protection. Consumers associate this term exclusively with the Complainant, and its products and services owing to the international goodwill that the Complainant has developed in the ACCENTURE trademark over the years. Besides, the addition of the country code Top-Level Domain (“ccTLD”) “.co” to the disputed domain name is without legal significance. Therefore, the disputed domain name is confusingly similar to the Complainant’s ACCENTURE trademark.

Second, the Respondent has no legitimate interests in the disputed domain name. The Complainant’s ACCENTURE trademark is not a generic or descriptive term. Therefore, the Respondent should not have an interest in it. The Complainant’s ACCENTURE trademark is globally famous and has acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use in connection with the Complainant’s goods and services.

Besides, The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE trademark or any domain name incorporating the ACCENTURE trademark.

Further, the Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which the disputed domain name was registered. It is clear that the Respondent has chosen to use the disputed domain name to create a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent’s use of the disputed domain name to run click-through links or to redirect users to sponsored websites does not qualify as a bona fide offering of goods and services.

In summary, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and it appears that the Respondent has chosen the disputed domain name to trade off the reputation and goodwill associated with the Complainant’s ACCENTURE trademark, to cause confusion amongst Internet users and third parties.

It is hence clear that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. The Respondent had constructive notice that the ACCENTURE trademark was registered in the United States and many other jurisdictions worldwide. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE trademarks long prior to registering the disputed domain name.

The Respondent’s use of the disputed domain name to redirect Internet users to commercial websites through various advertisements or sponsored click-through links constitutes bad faith and indicates that the Respondent registered and is using the Domain Name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s ACCENTURE trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Additionally, the use of the disputed domain name for the distribution of malware or other security risks, is clear evidence of bad faith use and registration as suggested by certain websites to which the Domain Name resolves.

Given the well-known status of the Complainant’s ACCENTURE trademarks and the Complainant’s ownership and use of a 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 trademarks, in particular because the Respondent has already previously been ordered to transfer domain names to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings A. Identical or Confusingly Similar

The Complainant owns registrations for the ACCENTURE mark and ACCENTURE & Design mark in more than 140 countries. The Complainant owns more than 1,000 registrations for the marks ACCENTURE, ACCENTURE & Design and many other marks incorporating the ACCENTURE brand for a variety of products and services including its management consulting, technology services and outsourcing services.

The disputed domain name is almost identical and confusingly similar to the ACCENTURE marks. The only difference in the disputed domain name when compared to the Complainant’s ACCENTURE trademark is the addition of a letter “c” in the middle of the trademark.

The addition of a ccTLD to the disputed domain name is viewed as a standard registration requirement and as such is typically disregarded under the first element confusing similarity test.

Adding random characters or a descriptive term to a trademark in a domain name fails to negate confusing similarity. Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC. / Andy Salimon,WIPO Case No. D2019-2107 (finding the domain name confusingly similar to the “ACCENTURE trademark”). In the present case, the trademark ACCENTURE is clearly recognizable in the disputed domain name, and the addition of the letter “c” in the middle of the ACCENTURE trademark does not prevent a finding of confusing similarity with the Complainant’s marks.

Considering the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant’s ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. As mentioned, the Complainant’s ACCENTURE mark is a coined term that has become globally famous and has acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use of the marks in connection with the Complainant’s goods and services.

The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks. The Respondent is not licensed or otherwise authorized to use the disputed domain name, which supports a finding that the Respondent lacks any rights or legitimate interests in the disputed domain name (see CareerBuilder, LLC v. Stephen Baker,WIPO Case No. D2005-0251).

The Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which the Respondent registered the disputed domain name. The Respondent has chosen to use a nearly identical variation of the Complainant’s famous ACCENTURE trademark as the disputed domain name to create a false affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate, noncommercial fair use of the disputed domain name.

The Respondent is not using the disputed domain name for any valid purpose at this time. Amongst others, PPC links are being displayed. Prior UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the complainant’s trademark (as they do in this case). Thus, the Respondent’s use of the disputed domain name for PPC links does not confer on the Respondent any rights of legitimate interests in the disputed domain name.

On some browsers, when trying to access the website “www.acccenture.com”, a warning appears regarding a security threat. The use of a domain name for malicious web attack or malware purposes in no way confers on the Respondent any rights or legitimate interests in the disputed domain name. See Andrey Ternovskiy dba Chatroulette v. Goncharov Aleksei IUrevich,WIPO Case No. D2018-0372 (finding no legitimate interests in the respondent’s registration of the domain name when the domain name was found to be used as an exploitation to “spread malware and viruses to Internet users”).

Considering the above prima facie case put forward by the Complainant, which was not rebutted by the Respondent, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Bad faith registration and use of a domain name can be established by a showing of circumstances indicating, inter alia, that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location.

The ACCENTURE trademarks have become distinctive and famous globally and have enjoyed distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name.

Given the Complainant’s worldwide reputation and global presence of the ACCENTURE trademarks on the Internet and media, the Respondent was or should have been aware of the ACCENTURE trademarks long prior to registering the disputed domain name. See Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517 (finding that the Respondent registered the domain name in bad faith after it knew or should have known about the Complainant’s trademarks); see also Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, supra (finding that it was unlikely that the Respondent was not aware of the Complainant and its ACCENTURE trademark at the time the disputed domain name was registered, as the Complainant demonstrated that its mark is well-known globally and is vested with significant goodwill).

From the above circumstances, it appears that the Respondent has chosen the disputed domain name to take advantage of the reputation and goodwill associated with the Complainant’s ACCENTURE Marks, to cause confusion amongst Internet users and the Complainant’s customers, to benefit from misdirected Internet traffic, to potentially use the disputed domain name for malicious purposes, and to prevent the Complainant from owning the disputed domain name.

The Respondent’s use of the disputed domain name for PPC links and for potentially malicious websites are considered material elements of bad faith. Additionally, the use of the disputed domain name for potential distribution of malware or other security risks is evidence of bad faith registration and use of a domain name. See Meteosolutions S.r.l. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2017-1288. Given the well-known status of the Complainant’s ACCENTURE marks and the Complainant’s ownership of the domain name , there is no reason for the Respondent to have registered the disputed domain name other than to take unjustifiable advantage of the reputation and goodwill of the Complainant’s well-known marks. See Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403 (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”).

Considering the above, the Panel finds that the Respondent registered and is using the disputed domain name 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 be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Date: January 25, 2022

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