WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Domains By Proxy, LLC / Norman Shaaban
Case No. D2018-0731
1. The Parties
The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America (“United States”).
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States / Norman Shaaban of Beirut, Lebanon.
2. The Domain Name and Registrar
The disputed domain name <accenturemedia.com> (the “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 April 2, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 4, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 5, 2018 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 April 6, 2018.
The Center verified that the Complaint together with the amended Complaint (hereafter 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 April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2018.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 4, 2018. 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 headquartered in Ireland that provides management consulting, technology and outsourcing services under the name and mark ACCENTURE (“ACCENTURE Mark”). The Complainant has used the ACCENTURE Mark since 2001 and operates from offices in 200 cities in 56 countries. The Complainant has received significant media attention for its services and its annual worldwide advertising expenditure has exceeded USD 65 million for every year since 2009. The Complainant operates its main corporate website from the domain name <accenture.com>, which it registered in August 2000.
The Complainant holds registered trade marks in over 140 countries for the ACCENTURE Mark, including United States registration number 3,091,811, having been filed in 2000 and registered on May 16, 2006. In the United States the ACCENTURE Mark is registered for various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42.
The Domain Name was created on July 5, 2017 and according to the verification provided by the Registrar, has been registered by the Respondent since at least April 4, 2018. It presently redirects to a website (the “Respondent’s Website”) that purports to be for an entity called “Accenture Media”, being an advertising agency located in Dbayeh, near Beirut, that provides digital marketing and display advertising services and has operated since 2015. However, as discussed below, the Complainant raises questions of whether the “Accenture Media” entity actually exists. The Respondent’s Website does not contain a complete address or phone number, details of the employees of the purported entity or examples of the work completed. The Respondent has also provided the Registrar with an obviously fake or incomplete set of contact details, with the address of the Respondent being “Beirut, Beirut, Beirut” and the Respondent’s phone number consisting of a Lebanon area code and a number of zeros.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ACCENTURE Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ACCENTURE Mark, having registered the ACCENTURE Mark in 140 jurisdictions including the United States and Lebanon, the location of the Respondent. The Domain Name consists of the ACCENTURE Mark and the word “media” which does not materially distinguish the Domain Name from the Accenture Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor has the Complainant provided a licence or authorization to register the Domain Name or any domain name incorporating the ACCENTURE Mark. The Domain Name is not being used for a legitimate noncommercial purpose. Upon information and belief, the Respondent has made no 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. The Respondent’s Website refers to an entity that is purportedly named “Accenture Media”. It does not list a phone number or a complete address of this entity. The Complainant has engaged an investigator to locate the Respondent but was unable to identify an entity known as “Accenture Media”. There are no corporate, company or trade mark registrations in Lebanon which appear to be associated or affiliated with the Respondent. Finally both the Complainant and the Complainant’s investigator have attempted to contact the Respondent but have received no response.
The Domain Name was registered and is being used in bad faith. The Respondent had knowledge of the ACCENTURE Mark by virtue of the Complainant’s global reputation and ubiquitous presence on the Internet. Such knowledge is an indication of bad faith registration. The Respondent has registered and used the Domain Name to take predatory advantage of the worldwide fame and renown of the ACCENTURE Mark. Such use amounts to use in bad faith under the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ACCENTURE Mark, having registrations for the ACCENTURE Mark as a trade mark in numerous jurisdictions including the United States.
The Domain Name consists of the ACCENTURE Mark in its entirety and the descriptive term “media”. The addition of a descriptive term does not negate the confusing similarity between the Domain Name and the Complainant’s ACCENTURE Mark.
The Panel finds the Domain Name is confusingly similar to the Complainant’s ACCENTURE Mark. Consequently the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 trade mark 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 trade mark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. The Respondent has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ACCENTURE Mark or a mark similar to the ACCENTURE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Domain Name presently resolves to a website that purports to offer advertising services under the name “Accenture Media”. However the Complaint provides compelling evidence, unrebutted by the Respondent, that no such entity actually exists. This is supported by the content of the Respondent’s Website itself. The Respondent’s Website does not provide a phone number, a complete address, details about the identity of the supposed employees or examples of the work that “Accenture Media” supposedly does. The Panel is satisfied that the Complainant has established a prima facie case that the Respondent is not using or making 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
Given that the existence of the “Accenture Media” entity has been raised as an issue in the Complainant, presumably it would not be difficult for an entity using the Domain Name to make a bona fide offering of goods or services years to put on evidence of its existence. Such evidence has not been provided by the Respondent, who has chosen not to participate in this proceeding in any way. The Respondent has failed to rebut the prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. (Policy, paragraph 4(b)).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ACCENTURE Mark at the time the Respondent registered the Domain Name. At the time the Domain Name was registered the Complainant had a significant global reputation. The Domain Name consists of the coined word “accenture” along with the descriptive term “media”. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name containing “accenture” (a word with no meaning in the English language), unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its ACCENTURE Mark. The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s reputation and lacked rights and legitimate interests of its own is registration in bad faith.
The Respondent’s Website purports to offer advertising and digital marketing services however, as discussed above, it appears that no trading entity offering advertising and digital marketing services exists. The Panel notes that the Respondent has offered no plausible good faith explanation for the registration of the Domain Name, nor is any plausible good faith use obvious. The Respondent provides fake or incomplete contact details both as part of its Domain Name registration and on the Respondent’s Website.
The Panel, noting that the circumstances set out in Policy, paragraph 4(b) are not exhaustive, finds that the Respondent is using the Domain Name in bad faith. On the balance of probabilities the Panel finds that the Respondent is using the Domain Name either to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ACCENTURE Mark or is simply holding the Domain Name in the hope of disrupting the Complainant’s business or prompting an offer from the Complainant to purchase the Domain Name for a sum greater than the Respondent’s out-of-pocket costs.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under 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 Domain Name <accenturemedia.com> be transferred to the Complainant.
Date: May 7, 2018