WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Kimberly Moreland
Case No. D2017-2189
1. The Parties
Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America, represented by DLA Piper US LLP, United States.
Respondent is Kimberly Moreland of East Hills, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <accenture-us.com> is registered with PDR Ltd., doing business as PublicDomainRegistry.com ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on November 7, 2017. On November 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact information and other details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for the Policy ("Rules"), and the WIPO Supplemental Rules for the Policy ("Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint and the proceedings commenced on November 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 13, 2017.
The Center appointed Debra J. Stanek as the sole panelist in this matter on January 5, 2018. The Panel finds that it was properly constituted and 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
Complainant is an international business that provides services in the fields of management consulting, technology and outsourcing and owns a United States federal trademark for the mark ACCENTURE, which was issued on May 16, 2006. Complainant also owns the domain name <accenture.com>, which is used for its website.
It appears that the disputed domain name was registered on October 31, 2017. The disputed domain name does not appear to be used with an active website, but it has been used to in email addresses used to send messages directing purchase orders to third parties.
5. Parties' Contentions
1) Identical or Confusingly Similar
Complainant is an international business that provides management consulting, technology, and outsourcing services under the name ACCENTURE and is the owner of the ACCENTURE mark and company name. Complainant began using the mark on January 1, 2001.
Complainant owns a federal registration for the mark ACCENTURE for a variety of goods and services, including software, books, management consulting, educational, and other services, along with other registrations for variations of the mark in the United States and internationally. In addition, Complainant owns and operates a website at "www.accenture.com".
The disputed domain name is confusingly similar to Complainant's mark because it merely adds the geographic designation "US." The additional identifier does not materially distinguish the disputed domain name; to the contrary, it exacerbates the likelihood of confusion, since consumers will assume that the disputed domain name is associated with Complainant's products and services in the United States.
2) Rights or Legitimate Interests
Complainant has not authorized Respondent to use the ACCENTURE mark.
Respondent is not commonly known by the disputed domain name.
Upon information and belief, Respondent has made no bona fide offering of goods or services in connection with the disputed domain name; there is no active website associated with the disputed domain name.
3) Registered and Used in Bad Faith
In October and November 2017, Respondent sent email messages to two of Complainant's vendors requesting quotes for and purporting to order various equipment. In each case, the email messages purported to be from Complainant, identified the sender's email addresses using the disputed domain name (e.g., "[name]@accenture-us.com"), used the title "Procurement Manager" above the phrase "Accenture Federal Service" followed by an address that is in fact the address of one of Complainant's offices.
Respondent had constructive notice that ACCENTURE was a registered trademark in the United States and many other jurisdictions worldwide.
It appears that Respondent did not register the disputed domain name to actually offer services but, instead, registered and is using it in bad faith – deliberately attempting to appear to be associated or affiliated with Complainant in an effort to obtain money or materials from Complainant's vendors.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To prevail, a complainant must prove, as to a disputed domain name, that:
(i) it is identical or confusingly similar to a mark in which complainant has rights.
(ii) the respondent has no rights or legitimate interests in respect to it.
(iii) it has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
Not responding to a complaint does not automatically result in a finding for the complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.3. A complainant continues to have the burden of establishing each element. The Panel may, however, draw such inferences from Respondent's default as appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Respondent's domain name is not identical to Complainant's marks. As a general matter, the Panel subscribes to the consensus view that the test for confusing similarity is satisfied where the relevant mark is recognizable as such within the domain name, regardless of the addition of descriptive, geographical, pejorative, meaningless, or other terms. See WIPO Overview 3.0, section 1.8. Here, the disputed domain name differs only as to the addition of a hyphen followed by the descriptive abbreviation "us." The Panel agrees that the addition is most likely to be understood as an abbreviation for a geographic location – United States – and does little to nothing to differentiate the disputed domain name from Complainant's mark.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (once complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent). Paragraph 4(c) of the Policy sets out examples of how rights and legitimate interests may be established:
"(i) before any notice to you 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 (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 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 Panel finds that Complainant has made a prima facie showing under this element.
It does not appear that Respondent is commonly known by the disputed domain name. Complainant has not authorized Respondent's use of the disputed domain name. On this record, it does not appear that Respondent has used the disputed domain name in connection with a bona fide offering, quite the opposite, in fact. Respondent appears to be using the disputed domain name for illegitimate purposes, as discussed below.
The Panel concludes that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name was registered and is being used in bad faith.
The documentary evidence submitted by Complainant consists of copies of redacted email messages using the disputed domain name as part of the sender's email address.2 The messages identify the sender as "[name]@accenture-us.com" and close with the individual's name, and the title "Procurement Manager" directly above the name "Accenture Federal Service" followed by an address that is fact the address of one of Complainant's offices. This use suggests that Respondent registered and is using the disputed domain name as part of a scheme to defraud. The email communications show that Respondent actually knew of Complainant's mark and domain name and adopted and used the disputed domain name in the senders' email address intending the recipients to believe that the communications were from Complainant.
In light of these facts and the adverse inferences that arise from Respondent's failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith.
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, <accenture-us.com> be transferred to Complainant.
Debra J. Stanek
Date: January 16, 2018
1 The United States registrations on which Complainant relies appear to identify one of its affiliates as the owner of the mark; however, information in the United States Patent and Trademark Office online Trademark Electronic Search System ("TESS") database discloses that Complainant is now listed as the owner of the mark. See WIPO Overview 3.0, section 4.8 (panel may undertake limited factual research into matters of public record).
2 The Complaint is signed only by Complainant's outside counsel and does not include any information that suggests that the assertions in the Complaint are based on his personal knowledge; nor are the assertions supported by an affidavit or declaration of one of Complainant's representatives. Nonetheless, Complainant provided documentary evidence in the form of copies of the email messages described above (albeit redacted to remove the identity of the recipients).