WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / David Tracey
Case No. D2018-0811
1. The Parties
The Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America (“United States”), represented by DLA Piper US LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / David Tracey of Burntisland, Fife, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <accenture-corp.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2018. On April 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2018, 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 April 16, 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 16, 2018.
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 April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2018.
The Center appointed Cherise Valles as the sole panelist in this matter on May 22, 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 business that provides management consulting, technology services and outsourcing services under the name Accenture. It has offices and operations in more than 200 cities in 56 countries. The Complainant has been using the mark ACCENTURE extensively in connection with various services, including management consulting, technology services and outsourcing services, since January 1, 2001.
The Complainant owns registrations for the ACCENTURE mark, and the ACCENTURE design mark, in more than 140 countries. It owns more than 1,000 registrations for the marks ACCENTURE and many other marks incorporating the term ACCENTURE for a variety of products and services. Such registrations include the following:
- United States trademark registration No. 3091811 for ACCENTURE, registered on May 16, 2006, in classes 9, 16, 35, 36, 37, 41 and 42;
- United States trademark registration No. 2665373 for ACCENTURE, registered on December 24, 2002, in classes 9, 16, 35, 36, 37, 41 and 42;
- United States trademark registration No. 3340780 for ACCENTURE, registered on November 20, 2007, in classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28;
- United States trademark registration No. 2884125 for ACCENTURE, registered on September 14, 2004, in classes 18, 25 and 28; and
- United States trademark registration No. 3862419 for ACCENTURE and design, registered on October 19, 2010, in classes 35 and 36.
The ACCENTURE mark has been recognised as a leading global brand by reputable brand consulting companies. For example, it ranked 37th in Interbrand’s Best Global Brands Report in 2017. For the past 16 years, the Complainant has been listed in the Fortune Global 500, which ranks the world’s largest companies. It also ranked 36th in the Fortune 100 Most Admired Companies Ranking. In addition, the Complainant has received numerous awards for its business, products and services provided under the ACCENTURE mark.
The Complainant owns and operates the website <accenture.com>, which it registered on August 30, 2000. The disputed domain name <accenture-corp.com> was registered on March 23, 2018. The website at the disputed domain name is currently inactive.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
- The disputed domain name is confusingly similar to the Complainant’s registered trademark, ACCENTURE, in light of the fact that it wholly incorporates the Complainant’s mark.
The Respondent lacks rights or legitimate interests in the disputed domain name.
- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.
The disputed domain name has been registered and is being used in bad faith.
- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The website at the disputed domain name is inactive and the Complainant asserts that the disputed domain name was used for sending fraudulent emails pretending to be associated with the Complainant.
The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:
(i) the domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a Response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant is the sole and exclusive owner of multiple registrations worldwide for the trademark ACCENTURE, as indicated in section 4 above.
The disputed domain name wholly incorporates the Complainant’s ACCENTURE mark. The disputed domain name differs from the Complainant’s ACCENTURE mark only in that the disputed domain name contains the additional designation “corp”. Previous UDRP panels have found that corporate designations are generic and do not materially distinguish a domain name from another’s trademark.
Previous UDRP panels have held that the ACCENTURE mark is well known and distinctive and that the term ACCENTURE was coined by the Complainant. See Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098. Internet users associate the term ACCENTURE with the Complainant, and therefore are likely to be confused as to whether an association exists between the disputed domain name and the Complainant.
Moreover, the disputed domain name is identical to the corporate name of one of the Complainant’s affiliates. This increases the likelihood of confusion among Internet users familiar with the Complainant’s ACCENTURE mark and business.
Previous UDRP panels have held that the generic Top-Level Domain (“gTLD”) “.com” is irrelevant when assessing whether a domain name is identical or confusingly similar to a trade mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I. and EMS COMPUTER INDUSTRY, WIPO Case No. D2003-0696.
In the light of the foregoing, the Panel finds that the disputed domain name <accenture-corp.com> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the complainant, then the burden of production shifts to the respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “[a]ny 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 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 Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has neither authorised, nor given its consent to the Respondent to use its ACENTURE mark, or to register any domain name incorporating that mark. The Respondent is not commonly known by the name Accenture. In the absence of any license or permission from the Complainant to use such a widely known trademark, no actual or contemplated bona fide or legitimate use of the domain name can reasonably be claimed.
On March 27, 2018, one of the Complainant’s vendors received an email purporting to be from the Complainant (bearing the Complainant’s ACCENTURE mark and claiming to be signed by a “Senior Manager” for the Complainant). This email stated that the Complainant had changed its bank account, and requested that the Complainant’s vendor deliver all invoices due to the Complainant to a new bank account. The email demonstrates that the Respondent registered the disputed domain name in an effort to mislead the Complainant’s vendors and others into believing that the disputed domain name and the Respondent are affiliated with the Complainant, for the purpose of obtaining ill-gotten commercial gains.
In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(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 on-line 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 its website or location.
The disputed domain name was registered more than 16 years after the Complainant first registered its ACCENTURE mark. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE mark on the Internet, the Respondent was or should have been aware of the mark long prior to registering the disputed domain name. Previous UDRP panels have found that where a respondent knew or should have known about a complainant’s trademarks, registration of a domain name making use of those trademarks is in bad faith. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517.
Registration of a domain name in an attempt to appear associated or affiliated with another to obtain money or other materials constitutes bad faith use and registration. See, e.g., The Prudential Assurance Company Limited v. Prudential Securities Limited, WIPO Case No. D2009-1561. The Respondent has registered and is using the disputed domain name for the bad faith purpose of intentionally misleading and confusing the Complainant’s vendors into believing that the Respondent is actually the Complainant and/or is affiliated with the Complainant, in order to obtain payments from the Complainant’s vendors.
Furthermore, previous UDRP panels have found that sending a fraudulent email pretending to be associated or affiliated with a complainant is evidence of bad faith. See, e.g., Total Temperature Inc. d/b/a Instrumart v. Bob Lee, Dlsvls LLC, WIPO Case No. D2015-0818.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name 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 disputed domain name <accenture-corp.com> be transferred to the Complainant.
Date: June 1, 2018