WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Obaidur Kazi
Case No. D2018-2945
1. The Parties
The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America.
The Respondent is Obaidur Kazi of Dhaka, Bangladesh.
2. The Domain Name and Registrar
The disputed domain name <accenturedesign.com> 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 December 27, 2018. On December 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 28, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 24, 2019.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 29, 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
The Complainant is a well-known international business that provides management consulting, technology services, and outsourcing services under the name “Accenture”.
The Complainant is the holder of more than 1,000 registrations for the ACCENTURE mark in more than 140 countries, including Bangladesh and the European Union (e.g. Trademark No. 001958370 filed on November 16, 2000, and registered on August 8, 2002, in classes 9, 16, 35, 36, 37, 39, 41, and 42).
The Complainant also owns and operates the website at www.accenture.com.
The disputed domain name <accenturedesign.com> was registered on May 12, 2018, and resolves to an active website with no content besides the headers “Home”, “Projects”, “Services”, “Team”, and “About”, which redirect to empty pages, all of which contain a footer stating “Proudly powered by WordPress”.
5. Parties’ Contentions
The Complainant asserts the disputed domain name is confusingly similar to the trademarks in which the
Complainant has rights, since it contains the Complainant’s distinctive mark ACCENTURE in its entirety with the addition of the term “design”.
The Complainant further asserts thatthe Respondent has made no bona fide offering of goods or services in connection with the disputed domain name, that the Complainant has not authorized, licensed, or permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the mark, that the Respondent is not commonly known by the disputed domain name and, therefore, cannot claim a legitimate interest in the disputed domain name.
Finally, the Complainant asserts that the disputed domain name was registered and is used in bad faith. The term “accenture” is an invented word that has achieved significant worldwide recognition and, as such, is not a term that the Respondent would legitimately choose to register as domain name unless seeking to create an impression of an association with the Complainant. According to the Complainant, the website at the disputed domain name is merely a holding page, since no goods or services are offered in connection with the disputed domain name. As such, it appears that Respondent did not register the disputed domain name to offer services but, instead, registered and is using the disputed domain name for the bad-faith purpose of using the disputed domain name to intentionally attempt create a likelihood of confusion with the Complainant’s ACCENTURE mark as to source, sponsorship, affiliation or endorsement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <accenturedesign.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark ACCENTURE. The disputed domain name incorporates this mark in its entirety with the addition of the term “design”. The generic Top-Level Domain “.com” does not dispel a finding of confusing similarity in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, including the way that the Respondent has been and is using the disputed domain name, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances that shall be evidence of registration and use 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(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; or
(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 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 the respondent’s website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case, including the evidence on record including the distinctive nature and the reputation of the mark ACCENTURE, and the fact that the mark is registered and used in the country of residence of the Respondent, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and of the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name that could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Based on the actual use of the disputed domain name for a website, that has no real content, and on the fact that the Respondent did not file a response to the Complaint, the Panel finds it unlikely that the Respondent registered the disputed domain name to actually offer services. Instead, the Panel finds it more likely that the Respondent registered and is intentionally using the disputed domain name for the purpose of creating a likelihood of confusion with the Complainant’s ACCENTURE mark as to source, sponsorship, affiliation or endorsement of the Respondents website and thereby disrupt the business of the Complainant.
Consequently, the Panel finds that the conditions in paragraph 4(a)(iii) of the Policy are fulfilled.
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 <accenturedesign.com> be transferred to the Complainant.
Date: February 18, 2019