WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC, DomainsByProxy.com / I S, ICS INC
Case No. D2018-2726
1. The Parties
Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America (“United States”).
Respondent is Registration Private, Domains By Proxy, LLC, DomainsByProxy.com of Scottsdale, Arizona, United States / I S, ICS INC of Grand Cayman, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <accebture.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 November 28, 2018. On November 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 11, 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 Complainant on November 30, 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 November 30, 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 December 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 27, 2018.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on January 2, 2019. 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 is an international company providing various services, including management consulting, technology services and outsourcing services. Complainant has offices and operations in more than 200 cities in 56 countries.
According to the evidence submitted by Complainant, Complainant owns multiple registrations for the trademark ACCENTURE, including:
- European Union Trade Mark ACCENTURE No. 001925650, registered on October 9, 2002;
- United States Trademark ACCENTURE No. 3,091,811, registered on May 16, 2006.
In addition, Complainant has multiple websites consisting of the ACCENTURE mark.
The Domain Name <accebture.com> was registered on August 15, 2016. The Domain Name resolves to a website containing pay-per-click links.
The trademark registrations of Complainant were issued prior to the registration of the Domain Name.
5. Parties’ Contentions
Complainant submits that the Domain Name is confusingly similar to the ACCENTURE mark. The only difference between the Domain Name and Complainant’s ACCENTURE mark is that the Domain Name merely replaces the letter “n” with the letter “b” in the ACCENTURE mark. According to Complainant the ACCENTURE mark is distinctive and well-known. Complainant asserts that replacing one letter for another in a domain name generally constitutes “typosquatting” and is insufficient to materially distinguish a domain name from another’s trademark. According to Complainant Respondent’s registration of the Domain Name constitutes “typosquatting” and fails to meaningfully distinguish it from Complainant’s ACCENTURE mark.
According to Complainant Respondent has no legitimate interests in the Domain Name. Complainant submits that Respondent has made no bona fide offering of goods or services in connection with the Domain Name. The Domain Name automatically redirects to various third-party websites, including a website that attempts to trick consumers into downloading malware onto their computers. Complainant submits that a domain name that resolves to third-party websites does not constitute use in connection with a bona fide offering of goods or services. In addition Complainant has not licensed or otherwise permitted Respondent to use Complainant’s ACCENTURE mark or to apply for or use any domain name incorporating the mark. Moreover, Respondent is not commonly known by the Domain Name. There is also no indication that Respondent is making a legitimate non-commercial or fair use of the Domain Name.
Complainant submits that Respondent registered and is using the Domain Name in bad faith. Given Complainant’s worldwide reputation and the presence of the ACCENTURE mark on the Internet, Respondent was or should have been aware of the ACCENTURE mark prior to registering the Domain Name. According to Complainant Respondent’s Domain Name constitutes “typosquatting” because it merely replaces the letter “n” with the letter “b” in Complainant’s well-known ACCENTURE mark, and these letters are located directly adjacent on a standard computer keyboard. This act of “typosquatting” strongly demonstrates Respondent’s bad faith use and registration of the Domain Name. Complainant submits that a domain name that resolves to a third-party website which results in the downloading of malware on a visitor’s computer constitutes bad faith use and registration of a domain name. According to Complainant one of the websites to which the Domain Name automatically redirects attempts to fool visitors into downloading malware onto their computers.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint 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”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(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.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to that trademark or service mark.
Complainant has established that it is the owner of several trademark registrations for ACCENTURE. The Domain Name <accebture.com>, which replaces the letter “n” of the ACCENTURE trademark with the letter “b”, is a misspelling of this trademark and incorporates sufficiently recognizable aspects of it. Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name consists of a common, obvious or intentional misspelling of a trademark. See section 1.9 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The generic Top-Level Domain (“gTLD”) “.com” is disregarded under the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s trademarks under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its trademarks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the undisputed submission and evidence provided by Complainant the Domain Name resolves to a pay-per-click parking page with various sponsored links including to a website which according to the undisputed submission of Complainant attempts to trick consumers into downloading malware onto their computers. This parking page currently contains a German version of the following message:
“The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain name owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly, whose contact information can be found in the Whois.”
The Panel does not consider such use a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, the website under the Domain Name does not accurately and prominently disclose the relationship between Respondent and Complainant as the holder of the ACCENTURE trademark, in particular as there has never been any business relationship between Complainant and Respondent. Respondent is also not commonly known by the Domain Name nor has it acquired any trademark or service mark rights.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith.
Noting the status of the ACCENTURE mark and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew or should have known of Complainant’s ACCENTURE mark.
The Panel notes that the Domain Name resolves to a website containing sponsored pay-per-click links. The Panel also notes that the Domain Name is a misspelling of Complainant’s ACCENTURE trademark, which indicates, in the circumstances of this case, that Respondent registered and uses the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. As noted by previous UDRP panels, the fact that such links may be generated automatically does not prevent a finding of bad faith.
Apart from such use, Respondent currently is also offering to sell the Domain Name at a price (USD 299) which, in all likelihood, exceeds its out-of-pocket costs of registration.
The Panel finally notes that Respondent is a systematic cybersquatter who has been found to have registered and used domain names in bad faith in multiple other cases under the Policy, which suggests a pattern of such conduct on the part of Respondent (see, inter alia, Andrey Ternovskiy dba Chatroulette v. Registration Private, Domains By Proxy, LLC / I S, ICS INC, WIPO Case No. D2018-2532; Accor, SoLuxury HMC v. Registration Private, Domains By Proxy, LLC / I S, ICS Inc., WIPO Case No. D2018-1104; and W.W. Grainger, Inc. v. Registration Private, Domains By Proxy, LLC / I S, ICS INC., WIPO Case No. D2017-2603.)
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and 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 Domain Name <accebture.com> be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: January 8, 2019