WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc / Jerry Megan
Case No. D2018-1091
1. The Parties
Complainant is Accenture Global Services Limited of Dublin, Ireland represented by DLA Piper US LLP, United States of America (“the United States”).
Respondent is WhoisGuard Protected, WhoisGuard, Inc of Panama / Jerry Megan of Kidderminster, Worcestershire, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <accentureus.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 May 16, 2018. On May 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 16, 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 Complainant on May 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 26, 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 Respondent of the Complaint, and the proceedings commenced on May 28, 2018. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 19, 2018.
The Center appointed Leon Trakman as the sole panelist in this matter on July 6, 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
Complainant adduces evidence that it began using the mark ACCENTURE (the “ACCENTURE Mark”) in connection with various services, including management consulting, technology services and outsourcing services, on January 1, 2001. See Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted, WIPO Case No. D2013-2099). A WIPO decision confirming Complainant’s rights (finding that Complainant has rights in the mark ACCENTURE). Complainant has offices and operations in more than 200 cities in 56 countries.
On October 6, 2000, Complainant filed a United States trademark application (Application Serial No. 76/154,620) for the mark ACCENTURE, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other services. This application led to registration (Reg. No. 3,091,811) on May 16, 2006. Complainant provides a further list of United States trademark registrations for the ACCENTURE Mark and ACCENTURE & Design Mark, and variations thereof, from May 16, 2006 to October 19, 2018. These registrations remain valid and subsisting, and serve as prima facie evidence of Complainant’s ownership of the ACCENTURE Mark and the validity of its ACCENTURE Mark. Complainant has also registered its trademark right internationally, owning registrations for the ACCENTURE Mark and ACCENTURE & Design Mark in more than 140 countries. Complainant provides a representative sample of its certificates of registration for Complainant’s trademark registrations in jurisdictions worldwide between 2009 and 2017.
Complainant also verifies that it owns and operates the website at “www.accenture.com” and the domain name <accenture.com> which it registered on August 30, 2000. The website includes detailed information about the management consulting, technology services, outsourcing and other services offered by Complainant and its global offices in connection with the ACCENTURE Mark, as identified, inter alia,through the <accenture.com> domain name.
Complainant demonstrates that the ACCENTURE Mark is recognized internationally, such as in Interbrand’s Best Global Brands Report since 2002 where it ranked 53rd. The ACCENTURE Mark ranked 37th in the 2017 Interbrand’s Best Global Brands Report. The ACCENTURE Mark has also been recognized by Kantar Millward Brown, a leading market research and brand valuation company, in its annual BrandZ – Top 100 Brand Ranking since 2006 when it was ranked 58th. In 2017, the ACCENTURE brand ranked 32nd, its highest Brandz ranking ever. Complainant’s business services and brand are also widely acknowledged, such as its ranking in the Fortune Global 500, which ranks the world’s largest companies, from 2009 to 2017. It has also won awards for its business, products and services.
Complainant also supports social development projects worldwide in connection with its ACCENTURE Mark, including but not limited to its “Skills to Succeed” initiative. The ACCENTURE Mark is also extensively used in promoting sports championships, such as Nations Rugby Championship from 2012-2017 and World Golf Championships. Complainant also has collaborated in various cultural initiatives globally, such as in cultural programs such as in support of the Louvre Museum and as concert sponsor for the Rheingau Musik Festival in Germany since 1997.
Respondent is identified as Jerry Megan located in the United Kingdom. Respondent registered the disputed domain name on April 16, 2018. Prior to the filing of the Complaint, the disputed domain name <accentureus.com> did not resolve to an active website. At the time of the notification of Complaint, the disputed domain name resolved to a website displaying pay-per-click links. Complainant has submitted evidence indicating that the disputed domain name has been used in connection with a fraudulent email scheme, namely, to send emails to vendors of Complainant requesting updated banking information.
5. Parties’ Contentions
Complainant contends that (1) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, contrary to Policy, paragraph 4(a)(i) and Rules, paragraphs 3(b)(viii), (b)(ix)(1); (2) Respondent has no rights or legitimate interests in respect of the disputed domain name, contrary to Policy, paragraph 4(a)(ii) and Rules, paragraph 3(b)(ix)(2), and (3) the disputed domain name was registered and is being used in bad faith, contrary to Policy, paragraphs 4(a)(iii), 4(b) and Rules, paragraph 3(b)(ix)(3).
Regarding the use of the disputed domain name, Complainant states that on April 16, 2018, one of Complainant’s vendors received an email, which purports to be from Complainant having been sent from an email address incorporating the disputed domain name and listing the address of one of Complainant’s offices. That email claims that Complainant changed its bank account, and provides instructions with a request that Complainant’s vendor deliver future invoices to Complainant’s new bank account. Complainant states that Respondent registered the disputed domain name in order to mislead Complainant’s vendor, and to obtain ill-gotten gains from such deception.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
In determining whether the disputed domain name is identical or confusing similar to Complainant’s Mark, it is reasonable to first examine how prior UDRP WIPO decisions have dealt with the first element. See section 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
As a general observation, the well-known global nature and distinctive reputation of Complainant’s ACCENTURE Mark are irrelevant for the purposes of the first element as such issues are decided under the second and third elements. See section 1.7 of the WIPO Overview 3.0.
In the instant case, there are various reasons for holding that the disputed domain name is confusingly similar to Complainant’s mark.
Firstly, the addition of a generic Top-Level Domain (“gTLD”) in the instant case is well recognized by WIPO UDRP decisions as being “completely without legal significance”, taken by itself, in demonstrating whether a disputed domain in confusingly similar to a Complainant’s Mark. See PepsiCo, Inc. v. PEPSI, SRL and EMS Computer Industry, WIPO Case No. D2003-0696, (holding that the respondent’s addition of a gTLD such as “.com” to domain names incorporating the term “Pepsi” is insufficient to distinguish the respondent’s domain names from the complainant’s mark PEPSI). See also section 1.11 of the WIPO Overview 3.0.
Secondly, the addition of a geographic identifier does not materially distinguish the disputed domain name from Complainant’s mark. See Accenture Global Services Limited v. Kimberly Moreland, WIPO Case No. D2017-2189, (holding that the domain name <accenture-us.com> confusingly similar to Complainant’s ACCENTURE mark and finding that the addition of “US” did not distinguish the disputed domain name from the trademark.). As stated in section 1.8 of the WIPO Overview 3.0: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Moreover, the similarities between Complainant’s well- known ACCENTURE Mark and the disputed domain name well outweigh the differences between them. As was held in Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219, “points of similarity are weighed more heavily than points of difference” in determining whether a disputed domain name is confusingly similar to a complainant’s mark. (finding the domain name <pokemon-games.com> was confusingly similar to the complainant’s POKEMON trademark). See too Accenture Global Services Limited v. Whois Privacy Protection Service, Inc./Robert Green, WIPO Case No. D2013-2100, (finding the domain name <accenture-uk.com> confusingly similar to Complainant’s ACCENTURE mark and that the addition of “UK” is purely descriptive did not distinguish the domain name from the trademark.)
As a result, the Panel holds that the disputed domain name is confusingly similar to Complainant’s Mark in fully incorporating the latter’s ACCENTURE Mark. The addition of a geographic indication like “US” in the disputed domain name does not distinguish in a meaningful manner the disputed domain name from Complainant’s ACCENTURE mark.
The Panel therefore concludes that the disputed domain name is confusingly similar to Complainant's ACCENTURE mark.
B. Rights or Legitimate Interests
It is evident that Respondent has no rights or legitimate interests in the disputed domain name. In particular, Respondent is not authorized to use the disputed domain name. Complainant has neither licensed nor expressly permitted Respondent to use Complainant’s Mark. Nor is there evidence that Respondent had implied or ostensible authority to do so. Nor, too, has Complainant ratified Respondent’s action. The absence of a respondent having a right or legitimate interest in these circumstances is well attested to by WIPO UDRP decisions. See, e.g., Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003, (finding that the respondent had no rights or legitimate interest in the domain name where the complainant did not license or permit the respondent to use any of its trademarks).
Moreover, there is no evidence on record to suggest that Respondent has a right or legitimate interest in the disputed domain name on grounds that Respondent is commonly known by the domain name.
Accordingly, the Panel determines, in accordance with paragraph 4(c) of the Policy, that Respondent has not satisfied any of the following grounds to demonstrate the legitimacy of its registration and use of the disputed domain name. First, Respondent did not, at any time prior to being notified of this Complaint, make any demonstrable use the disputed domain name in connection with a bona fide offering of goods or services. Second, there is no evidence on record that Respondent is personally or otherwise known by the disputed domain name. Third, Respondent it not making a legitimate noncommercial or fair use of the disputed domain name without seeking commercial gain. The Respondent is, instead, misleading Internet users, including actual and potential vendors of Complainant, as it is appears to be engaged in a fraudulent email scheme, whereby it purports to be an officer of Complainant. As stated in section 2.13 of the WIPO Overview 3.0, use of a domain name for illegal activity, such as fraud, can never confer rights or legitimate interests on a respondent.
The Panel therefore concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel holds that Respondent deliberately registered a domain name that is identical to Complainant’s ACCENTURE Mark for the purpose of misleading Complainant’s legitimate vendors into believing that that Respondent is, or represents, Complainant. A reasonable inference to draw from this is that Respondent is seeking to securing financial gain through its registration of the disputed domain name.
The Policy establishes that, for purposes of paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to the respondent’s 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 respondent’s website or location. SeePolicy, paragraph 4(b)(iv).
In applying this Policy provision, it is reasonable to infer that Respondent had reasonable notice that the ACCENTURE Mark was a registered trademark in the United States and in other jurisdictions worldwide, and that Complainant therefore had a global presence. See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517, (holding that the respondent registered the domain name <caesarspalacepoker.com> in bad faith after it knew or should have known about the complainant’s trademarks); see also Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, supra (holding that it was unlikely that the respondent was not aware of Complainant and its ACCENTURE mark at the time the disputed domain name was registered, as Complainant demonstrated that its mark was well known globally and is vested with significant goodwill).
WIPO UDRP panels have also established that bad faith registration and use of a domain name arises when a respondent falsely simulates an association or affiliation with a complainant in order to cybersquat for the purpose of subsequently selling the domain name or otherwise benefit from its use. See, e.g., The Prudential Assurance Co. Ltd. v. Prudential Securities Ltd., WIPO Case No. D2009-1561) (finding bad faith registration where the respondent used the domain name to attempt to obtain bank account and other personal information from third parties); MasterCard International Inc. v. Jose Carlos Bisognin Panzenhagen, WIPO Case No. D2009-0864) (finding bad faith registration where the respondent appeared to attempt to induce people into believing he was connected with a legitimate MasterCard website for “phishing” and/or “identity-theft purposes”).
The fact that Respondent in the instant case did not use the disputed domain name, such as to direct Internet traffic to its own website at which it sold competitive products, nor use it for the purpose of selling it to Complainant or a third party, does not derogate against bad faith use. These factors may well constitute evidence that may gainsay that Respondent used the disputed domain name in bad faith. However, attempts by a respondent to secure profits, such as by contacting and misleading Complainant’s supplies in order to extract money from them while posing as Complainant, constitute bad faith uses of the disputed domain name. See, e.g., The Prudential Assurance Co. Ltd. v. Prudential Securities Ltd., supra. In particular, there is evidence, albeit not conclusive, to demonstrate that Respondent sent an email to Complainant’s vendors in which Respondent poses as a senior officer of Complainant (email sent on April 16, 2018 to one of Complainant’s vendors, appearing to be from Complainant because it incorporated the address of one of Complainant’s offices. That email asserted that Complainant had changed its bank account, and provided wire instructions with a request that Complainant’s vendor deliver future invoices to Complainant’s new bank account. Given the facts and evidence provided in the Complaint it is reasonable to infer that the source of the email is likely to have been the named Respondent. It is noteworthy that, in Accenture Global Services Ltd. v. Christophe Eck, WIPO Case No. D2017-0557, the disputed domain name <accenture-group.tech> was transferred to Complainant following its registration and use, including the registrant using an email address that incorporated Complainant’s chairman and chief executive officer’s name. See too Total Temperature Inc. v. Bob Lee / Dlsvls LLC, WIPO Case No. D2015-0818 (finding bad faith where the respondent sent an email claiming to be the complainant’s chief executive officer).
Furthermore, the very fact that Respondent in this case hid her/his identity by using a privacy service is further reasonable evidence of bad faith. See, e.g., TDS Telecommunications Corporation v. Registrant  Nevis Domains and Registrant  Moniker Privacy Services, supra. The bad-faith use of the disputed domain name here includes, but is not limited to, Respondent hiding her/his identity in order to appear to be associated or affiliated with Complainant, for the purpose of financial gain, or for other bad-faith use. See, e.g., The Prudential Assurance Co. Ltd. v. Prudential Securities Ltd., supra.
The Panel therefore concludes that Respondent registered and used 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 <accentureus.com> be transferred to the Complainant.
Date: July 9, 2018