WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Kelvin Lau
Case No. D2018-2524
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 WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Kelvin Lau of Bangsa, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <accenture-grp.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 November 5, 2018. On November 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 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 November 12, 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 November 13, 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 November 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 6, 2018.
The Center appointed Zoltán Takács as the sole panelist in this matter on December 17, 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.
The language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant is a global management consulting and professional services firm that provides strategy, consulting, digital, technology and operations services.
The Complainant has offices and operations in more than 200 cities in 56 countries.
For the past 16 years the Complainant has been listed in the Fortune Global 500, which ranks the world’s largest companies.
The Complainant owns registrations for the ACCENTURE mark in more than 140 countries, including the United States (“US”) Trademark Registration No. 3091811 filed for on October 26, 2000 and registered on May 16, 2006 for goods and services of Classes 9, 16, 35, 36, 37, 41 and 42 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
Since August 30, 2000 the Complainant owns the domain name <accenture.com> at which website Internet users can find detailed information about the services offered by the Complainant and its global offices in connection with the ACCENTURE mark.
The disputed domain name was registered on September 24, 2018.
The website at the disputed domain name resolves to a website which is purportedly for a company named Accenture Group Management. This website is simply a sign-in page, no goods and services are offered in connection with the dispute domain name.
5. Parties’ Contentions
The Complainant contends that the disputed domain name <accenture-grp.com> is confusingly similar to its ACCENTURE trademark since it reproduces the trademark in its entirety and addition of the generic corporate designation “grp” is not sufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant states that the Respondent incorporated its ACCENTURE trademark in the disputed domain name with obvious bad faith intent to illegitimately capitalize on its global reputation.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As noted in many previous UDRP panel decisions, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that he has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant proved that it holds registered rights in the trademark ACCENTURE, and for the purpose of this proceeding the Panel establishes that the Complainant’s US Trademark Registration No. 3091811 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the ACCENTURE mark, the Panel next assessed whether the disputed domain name <accenture-grp.com> is identical or confusingly similar to the ACCENTURE trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0, “[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.”
According to section 1.8 of the WIPO Overview 3.0, “[w]here 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”.
According to section 1.11.1 of the WIPO Overview 3.0, “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
The disputed domain name incorporates the Complainant’s famous ACCENTURE trademark in its entirety.
The only element in the disputed domain name that differ from it is the addition of the letters “grp” (that could be an acronym for “group”), which is not sufficient to prevent a finding of confusing similarity under the first element of the Policy.
The applicable generic Top-Level Domain (“gTLD”) suffix in the disputed domain name “.com” should in relation to this administrative proceeding be disregarded under the first element.
On the basis of facts and circumstances discussed above the Panel finds that the disputed domain name <accenture-grp.com> is confusingly similar to the ACCENTURE trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that he holds well‑established prior rights in the ACCENTURE trademark.
The Complainant has never authorized the Respondent to use its ACCENTURE trademark in any way, and the Complainant’s prior rights in the ACCENTURE trademark long precede the date of the registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counters the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant presented undisputed evidence which convinces the Panel that the Respondent has registered and is using the disputed domain name in bad faith.
The ACCENTURE trademark of the Complainant has no dictionary meaning; it’s a term invented by the Complainant and therefore distinctive for the corresponding goods and services.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (see section 3.1 of the WIPO Overview 3.0).
According to section 3.1.4 of the WIPO Overview 3.0, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can itself create a presumption of bad faith.
As the ACCENTURE trademark of the Complainant has achieved significant worldwide recognition it is implausible to presume that the Respondent choose to incorporate it in the disputed domain name for any other reason than to create a false impression of an association with the Complainant and trade off of the goodwill the Complainant has established in its ACCENTURE trademark. This qualifies as bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The disputed domain name resolves to a website that is allegedly for a company named Accenture Group Management. The website depicts an image of the London skyline, yet the Complainant’s search of the corporate registry of the United Kingdom revealed that no such company exists.
It is unclear why the disputed domain name was initially registered and subsequently used to attract Internet users by creating a likelihood of confusion with the Complainant’s mark. Given the absence of any conceivable good faith use it’s only the Respondent could have provided plausible, or as a matter of fact any explanation for adopting a domain name including the famous ACCENTURE trademark of the Complainant and using it in the way described above. However, the Respondent has not only failed to respond to the Complaint in this proceeding, it also did not respond to repeated cease-and-desist letters of the Complainant.
In view of the Panel it is reasonable to expect a good faith business to respond to allegations of cybersquatting and the Respondent’s such failure in addition to use of a privacy shield is to this Panel further indication of presence of bad faith at the Respondent’s side.
The Panel finds that the disputed domain name has been registered and is being used in bad faith and the paragraph 4(a)(iii) of the Policy is 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-grp.com> be transferred to the Complainant.
Date: December 28, 2018