WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Mack Wilson
Case No. D2018-1347
1. The Parties
The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper LLP, United States of America (“United States”).
The Respondent is Mack Wilson of Kent, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <accenture-corp.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2018. On June 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 20, 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 June 21, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 22, 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 June 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2018.
The Center appointed Edoardo Fano as the sole panelist in this matter on July 24, 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.
Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), “to employ reasonably available means calculated to achieve actual notice to Respondent”. Therefore, the Panel shall issue its decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.
The language of the proceeding is English, being the language of the Registration Agreement, as per paragraph 11(a) of the Rules.
4. Factual Background
The Complainant is Accenture Global Services Limited, a leading international company providing management consulting, technology services and outsourcing services since 2001 in more than 200 cities in 56 countries.
The Complainant owns more than 1,000 trademark registrations for ACCENTURE in more than 140 jurisdictions, including:
- United States Trademark Registration No. 3,091,811 for ACCENTURE, registered on May 16, 2006;
- United States Trademark Registration No. 2,665,373 for ACCENTURE and design, registered on December 24, 2002;
- European Union Trade Mark Registration No. 001958370 for ACCENTURE and design, registered on August 14, 2002.
The Complainant operates its website at “www.accenture.com”.
The Complainant provided evidence in support of the above.
The disputed domain name <accenture-corp.net> was registered on May 24, 2018. At the time of filing the Complaint and at the time of this decision, the website at the disputed domain name was not active.
5. Parties’ Contentions
The Complainant states that the disputed domain name <accenture-corp.net> is confusingly similar to its trademark ACCENTURE, since it fully incorporates the Complainant’s trademark.
Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name since it has not been authorized by the Complainant to register the disputed domain name or to use its trademark within the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant asserts that the Respondent has not intended to use or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, as the disputed domain name is currently inactive.
The Complainant submits that the Respondent has registered the disputed domain name in bad faith, since the Complainant’s trademark ACCENTURE is distinctive and well known all around the world. Therefore, the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the disputed domain name and registered it for the bad faith purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the disputed domain name's source, sponsorship, affiliation or endorsement.
The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(e) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.
A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn (see, e.g., Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441; Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International PLC v. MARK FREEMAN, WIPO Case No. D2000-1080; ALTAVISTA COMPANY v. GRANDTOTAL FINANCES LIMITED et. al., WIPO Case No. D2000-0848; Confédération Nationale du Crédit Mutuel, Caisse Fédérale du Crédit Mutuel Nord Europe v. Marketing Total S.A., WIPO Case No. D2007-0288.)
6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant is the owner of the trademark ACCENTURE both by registration and acquired reputation and that the disputed domain name <accenture-corp.net> is confusingly similar to the trademark ACCENTURE.
Regarding the addition of the corporate designation “corp”, the Panel notes that it is now well established that the addition of descriptive terms or letters to a domain name does not avoid a finding of confusing similarity between a domain name and a trademark (see, e.g., Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037; Red Bull GmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713). The addition of the designation “corp” does not therefore prevent the disputed domain name from being confusingly similar to the Complainant’s trademark, which is clearly recognizable in the disputed domain name.
It is also well accepted that a generic Top-Level Domain (“gTLD”) suffix, in this case “.net”, may be ignored when assessing the similarity between a trademark and a domain name (see, e.g., VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607).
The Panel finds that the Complainant has therefore met its burden of proving that the disputed domain name is confusingly similar to the Complainant’s trademark, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Respondent has failed to file a response in accordance with the Rules, paragraph 5.
The Complainant in its Complaint and as set out above has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. It asserts that the Respondent is not using the disputed domain name for a legitimate noncommercial or fair use or in connection with a bona fide offering of goods or services.
The prima facie case presented by the Complainant is enough to shift the burden of production to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name. However, the Respondent has not presented any evidence of any rights or legitimate interests it may have in the disputed domain name, and the Panel is unable to establish any such rights or legitimate interests on the basis of the evidence in front of it.
The Panel therefore finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that “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 trademark 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) that [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; or
(iii) that [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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] web site or location or of a product or service on [the respondent’s] website or location.”
Regarding the registration in bad faith of the disputed domain name, the reputation of the Complainant’s trademark ACCENTURE in the fields of management consulting, technology services and outsourcing services is clearly established and the Panel finds that the Respondent likely knew of the Complainant and deliberately registered the disputed domain name, <accenture-corp.net>, because it is confusingly similar to the Complainant’s trademark.
Regarding the use in bad faith of the disputed domain name, pointing to an inactive website, the Panel considers that bad faith may exist even in cases of so-called “passive holding”, as found in the landmark UDRP decision Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the circumstances of this case, and in the absence of any Response to the Complaint, the Panel finds that such passive holding amounts to bad faith use.
The Panel finds that the Complainant has presented sufficient evidence to satisfy its burden of proof with respect to the issue of whether the Respondent has registered and is using the disputed domain name in bad faith.
The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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.net> be transferred to the Complainant.
Date: July 31, 2018