WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Patel Holdings
Case No. D2016-0367
1. The Parties
The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America (“USA”).
The Respondent is Patel Holdings of Hyderabad, India.
2. The Domain Name and Registrar
The disputed domain name <accenturejobs.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 23, 2016. On February 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2016, 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 sent an email communication to the Complainant on February 29, 2016 requesting a clarification of the Complaint regarding the mutual jurisdiction. The Complainant filed an amendment to the Complaint on February 29, 2016.
The Center verified that the Complaint together with the amendment to the Complaint (hereinafter named together as 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 March 15, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2016.
The Center appointed Gonçalo M. C. Da Cunha Ferreira as the sole panelist in this matter on April 18, 2016. 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
Accenture is an international company, well known all over the world. It has won several prizes and awards recognizing its business, products and services. Currently it has clients in more than 120 countries and serves over 40 industries and it offers services in five major areas: strategy, consultancy, digital, technology and operations.
The Complainant is the owner of the ACCENTURE trademark and company name, and marks fully incorporating the ACCENTURE trademark. The Complainant started using the name ACCENTURE in 2001. The ACCENTURE mark was firstly registered in the USA on May 16, 2006, covering several goods and services. Afterwards, the mark was also registered in many other countries, including Malaysia, Pakistan, Indonesia, Sri Lanka, Australia, amongst others.
The Complainant also owns and operates the website at the domain name <accenture.com>, registered on August 29, 2000. At this website, Internet users can find detailed information about management consulting, technology services, outsourcing and myriad other services offered by the Complainant and its global offices in connection with the ACCENTURE mark.
The disputed domain name <accenturejobs.com> was created with the Registrar on January 22, 2016. The disputed domain name does not resolve to any website.
5. Parties’ Contentions
The Complainant contends that the three requirements of paragraph 4(a) of the Policy are met:
1. The Domain Name is confusingly similar to the ACCENTURE mark. The Complainant alleges the disputed domain name is highly similar to the Complainant’s well-known ACCENTURE mark and that it fully incorporates the Complainant’s ACCENTURE mark, as well as the generic term “jobs”. The Complainant claims the ACCENTURE mark is not only a distinctive and well-known mark but it is also a coined term, which consumers associate specifically with the Complainant. Consequently, the addition of the term “jobs” does contribute to exacerbate the likelihood of confusion, given that consumers will tend to perceive the disputed domain name as a location to get information regarding employment with the Complainant thus getting confused as to whether an association exists between the Complainant and the Respondent.
2. The Respondent has no legitimate interests in the disputed domain name. The Complainant alleges the Respondent has no legitimate interests in the disputed domain name once it fails to provide evidence to meet the Paragraph 4(c) of the Policy criteria. Firstly, the Complainant claims the Respondent has made no bona fide offering of goods and service: despite the disputed domain name has been inactive, an email account hosted on that website has been in use. The Complainant reported a fraudulent scheme worked out using the email “email@example.com”. In this scheme, the Respondent contacted individuals via LinkedIn, offering career opportunities in Accenture and requesting their current cv. Following this, the individual received an email offering to interview him/her upon the payment of GBP 468. This email was sent from an individual posing as Accenture’s current Chief Leadership & Human Resources officer. The Complainant claims to have received emails from more than one individual reporting this situation and intending to confirm who have endorsed those communications. Additionally, the Complainant states it 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 and argues that the Respondent in not commonly known by the disputed domain name. Finally, the Complainant argues that the Respondent has created the disputed domain name clearly intending to mislead consumers into believing it was somehow connected with the Complainant, thus not making a legitimate noncommercial or fair use of the domain name.
3. The Respondent registered and is using the disputed domain name in bad faith. The Complainant argues that the Respondent had constructive notice that the ACCENTURE mark was a registered trademark and adding this to the Complainant’s solid reputation worldwide and its ubiquitous presence on the Internet, the Respondent had certainly been aware of the Complainant’s rights by the time it created the disputed domain name. The Complainant alleges that the Respondent created the disputed domain name in a clear attempt to seem somehow related with the Complainant. Therefore, the disputed domain name’s registration seemed to have the clear intention of creating a likelihood of confusion with ACCENTURE mark and thus confusing consumers and have them sending personal information and/or money.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three Policy elements, regardless of whether the respondent files a response to the complaint. The first element is that the “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Policy, paragraph 4(a)(i). The second element a complainant must prove is that the respondent has “no rights or legitimate interests in respect of the domain name”. Policy, paragraph 4(a)(ii). The third element a complainant must establish is that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii).
A. Identical or Confusingly Similar
The Complainant owns the mark ACCENTURE and its global website is under the domain name <accenture.com>.
The Panel finds ACCENTURE to be an undoubted well-known mark all over the world, with an outstanding reputation and recognized through the years for its business and services.
The disputed domain name comprises the mark “accenture” in its entirety and the generic term “jobs”.
The Panel accepts that ACCENTURE is a coined term and thus distinctive mark and according to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, “the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”
Consistent with previous UDRP decisions, the addition of a generic term, in this case the word “jobs”, as well as the generic Top-Level Domain (“gTLD”) “.com” is typically irrelevant in order to distinguish a disputed domain name from the complainant’s mark. In this case, the Panel finds that the word “jobs” contributes to increase the confusing similarity because the word “jobs” is a generic commercial term, used in relation to employment offers and career opportunities. The disputed domain name is then likely to mislead consumers into thinking this would be a recruiting website for the Complainant (see amongst others Teleperformance v. ICS INC. / Contact Privacy Inc. Customer 0131175994, WIPO Case No. D2013-0035; Saudi Arabian Oil Company v. PrivacyProtect.org/saudiaramco/hussein haziem, WIPO Case No. D2012-2509; and LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679).
In light of the above, the Panel finds that the first element of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel finds that the Complainant holds rights in the mark ACCENTURE and marks fully incorporating the ACCENTURE trademark.
It is clear to the Panel that, in this case, there is no evidence that the Respondent has ever been commonly known by the disputed domain name and the Respondent has not presented any proof or argument that could lead this Panel to conclude that the Respondent could have any rights or legitimate interests.
In order for a complainant to prove that a respondent has no rights or legitimate interests in a disputed domain name, previous UDRP panels have consistently held that it is sufficient for a complainant to make a prima facie case (see, amongst others, Croatia Airlines, d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown by the complainant, the burden of production shifts to the respondent to produce evidence of its rights or legitimate interests in a disputed domain name.
The Panel accepts the Complainant’s allegations and proof about the Respondent not making a bona fide offering of goods and service and making an illegitimate use of the disputed domain name through the email “firstname.lastname@example.org.”
Therefore, the Panel accepts that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name.
The Panel finds that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Based on the record, the Panel finds it highly unlikely that the Respondent was not aware of the Complainant’s rights by the time it registered the disputed domain name, and accepts the Complainant allegation that the Respondent was aware that the ACCENTURE mark was a registered trademark at the time of the registration of the disputed domain name.
The Complainant’s trademark ACCENTURE, used in its entirety in the disputed domain name, is well-known all over the world and, as previously stated, the Panel finds no evidence that the respondent has ever had any connection or has ever been commonly known by the disputed domain name. As decided in Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, WIPO Case No. D2005-1085, the registration of a well-known trademark by a party with no connection to the owner of the trademark, no authorization and no legitimate purpose to use the mark is a strong indication of bad faith. The Panel agrees with this view concerning this case.
Additionally, although the disputed domain name does not resolve to an active website, the Panel accepts the Complainant’s allegation and proof that the Respondent is making an illegitimate use of the disputed domain name through an email address associated with the same.
In light of the above and the lack of a Response, the Panel finds that the disputed domain name has been registered and used in bad faith and therefore finds that the third element of the Policy has been satisfied.
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 <accenturejobs.com> be transferred to the Complainant.
Gonçalo M. C. Da Cunha Ferreira
Date: April 29, 2016