WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Freelive Invest Ltd.
Case No. D2014-0302
1. The Parties
The Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America and Dublin, Ireland, represented by DLA Piper US LLP, United States of America.
The Respondent is Freelive Invest Ltd. of Stafford, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <emailaccenture.com> is registered with PSI-USA, Inc. dba Domain Robot (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2014, 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. In response to a notification by the Center, the Complainant filed an amended Complaint on March 7, 2014.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 3, 2014.
The Center appointed Sir Ian Barker as the sole panelist in this matter on April 29, 2014. 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 company, centered in Ireland that provides management consulting, technology services and outsourcing services internationally. It markets its services under the name "accenture" worldwide. In the fiscal year of 2009, over USD 77 million was spent on global advertising. In the fiscal year 2010, over USD 67 million and in the fiscal year 2011, more than USD 66 million. The Complainant's advertising material, sponsorships, billboards and television advertisements use the word "Accenture".
The Complainant owns a number of United States registered trademarks ACCENTURE having filed its first trademark application in the United States Patent and Trademark Office on October 6, 2000, achieving its first registration on May 16, 2006.
The Complainant owns more than 1,000 registrations worldwide for the mark ACCENTURE and ACCENTURE (and design) as well as for other marks incorporating the ACCENTURE brand for a variety of products and services, including but not limited to, its management consulting, technology services and outsourcing services.
The Complainant relies on the Internet as a forum to promote and disseminate information concerning the various offerings under the ACCENTURE mark. It registered the domain name <accenture.com> on August 30, 2000. At the website accessible by this domain name, is found detailed information about the Complainant's services and its global offices. The Complainant operates an active subdomain of its primary website at <email.accenture.com> whereby its employees may access corporate email remotely via an email portal.
The Complainant has been recognized as a leading global brand by a number of brand consulting companies. Its mark has become well-known globally and enjoys distinctiveness and notoriety.
The Respondent registered the disputed domain name on July 7, 2011. The Complainant did not authorize the Respondent to register the disputed domain name. It has no relationship with the Respondent.
The Respondent operates on the website accessed by the disputed domain name "click-through" links to third party websites.
5. Parties' Contentions
The disputed domain name is confusingly similar to the Complainant's registered trademark. The addition of the generic or descriptive term "email" does not lessen the likelihood of confusion between the disputed domain name and the Complainant's ACCENTURE mark. Rather, the addition of the word exacerbates the likelihood of confusion because the term "email" is descriptive in the context of the Complainant's electronic mail system. Moreover, the disputed domain name is almost identical to the Complainant's subdomain, the only difference being that there is a full stop between the terms "email" and "accenture" in the Complainant's subdomain. Accordingly, the Respondent is guilty of typosquatting.
None of the provisions of paragraph 4(c) of the Policy apply to the Respondent. Accordingly, the Respondent can have no rights nor legitimate interests in the Disputed Domain Name. Diversion of Internet traffic to receive 'click-through' fees is not a legitimate non-commercial or fair use of a domain name under paragraph 4(c)(iii) of the Policy. The Respondent receives 'click-through' fees to operate a website featuring links to other commercial websites, some of which compete with the Complainant.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the Domain Name intentionally to attempt to attract for commercial gain, Internet users to its website, thus creating a likelihood of confusion both with the Complainant's mark and as to the source, sponsorship affiliation or endorsement of the Respondent's website. Given the Complainant's worldwide reputation and presence of the ACCENTURE mark on the Internet, the Respondent should have been aware of the ACCENTURE mark when registering the disputed Domain Name.
By providing links to third party websites, the Respondent is using the disputed domain name for the bad faith purpose of intentionally attempting to attract users to its website by creating a likelihood of confusion with the Complainant's ACCENTURE trademark. The Respondent has registered the disputed domain name in order to prevent the Complainant as owner of the trademark reflecting the mark in a corresponding domain name.
This Respondent has been found by previous UDRP panels to have engaged in the inappropriate registration of domain names by incorporating the trademarks of third parties thereby preventing trademark owners from registering their marks in the domain names. See Intesa Sanpaolo SpA v. Freelive Invest Ltd, WIPO Case No. D2012-0097 and The Net-A-Portar Group Limited v. Freelive Invest Ltd., WIPO Case No. D2013-0614. In both these cases, the same Respondent was found to have registered and to have used a domain name confusingly similar to the Complainant's registered trademark.
There is no reasonable explanation of the Respondent's selection of the disputed domain name other than that the Respondent was intentionally attempting to trade off the goodwill of the Complainant's ACCENTURE mark.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant's registered trademark. The addition of the generic term "email" does not lessen the likelihood of confusion but it exacerbates the likelihood of confusion because the term "email" is descriptive in the context of the Complainant's electronic mail system.
The disputed domain name appears to the casual observer to be a legitimate link to the Complainant's email system. The Complainant's email for its staff is accessed by a domain name which is identical except for the provision of a full stop between the words "email" and "accenture". Although the disputed domain name "emailaccenture.com" does not constitute a trademark, it does indicate the confusion that the disputed domain name generates. Given the large number of users of the Complainant's email services, the addition of the term "email" in the disputed domain name is clearly going to exacerbate confusion.
Consequently, the Complainant has established the first limb of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Complainant gave the Respondent no rights whatsoever to reflect its trademark in the disputed domain name. That is sufficient in this area, since the Respondent has not filed a Response. In the particular circumstances of the case and based on the Panel's findings bellow, the Panel need not consider paragraph 4(c) of the Policy that sets out a number of defenses which a Respondent can plead in regard to the allegation that the respondent has no rights or legitimate interests in a disputed domain name.
Consequently, the Complainant has proved the second limb of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
It is not difficult to infer bad faith registration and continuing bad faith use of the disputed domain name for all or any of the following reasons:
(a) The worldwide fame of the Complainant's mark makes it highly likely that the Respondent knew of the Complainant and its mark at the time when it registered the disputed domain name some 11 years after the Complainant first filed for trademark protection in the United States where the Respondent appears to be located. The typosquatting evident on the Complainant's website for its employees of <email.accenture.com> is a clear indication that the Respondent knew of the Complainant. It attempted to "typosquat" by omitting the full stop between "email" and "Accenture".
(b) The "click-through" website of the Respondent shows that the Respondent is using the disputed domain name intentionally to attract for commercial gain Internet users to its website by creating a likelihood of belief by the Internet user as to the source of sponsorship, affiliation or endorsement by the Complainant of the Respondent's website.
(c) The Respondent is clearly intending to divert traffic away from the Complainant's business when its website is directed to the Complainant's competitors monetary gain comes through the "click-through" fees.
(d) Under paragraph 4(a)(iii) of the Policy bad faith registration and use can be inferred where the respondent has registered a domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. The Respondent has engaged in such conduct.
(e) The two cases referred to earlier in the record of the Complainant's submission show that the Respondent is adopting a similar course of inappropriate conduct.
For all these reasons the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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 <emailaccenture.com> be transferred to the Complainant.
Sir Ian Barker
Date: May 7, 2014