WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Francois Babicu
Case No. D2019-0898
1. The Parties
The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States” or “US”).
The Respondent is Francois Babicu, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <acxenture.com> is registered with RegistryGate GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2019, the Registrar transmitted by email to the Center its verification response confirming that the language of the registration agreement is in German and disclosing the registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint.
On May 14, 2019, the Center sent a communication to the Parties, in English and German, regarding the language of the proceeding and provided the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 17, 2019, in which it confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and German of the Complaint, and the proceedings commenced on May 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2019.
The Center appointed Theda König Horowicz as the sole panelist in this matter on June 25, 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 an international business based in Ireland that provides management consulting, technology services and outsourcing services under the name ACCENTURE.
The Complainant is the owner of US ACCENTURE trademark including:
ACCENTURE, in Classes 9, 16, 35, 36, 37, 41 and 42, No 3,091,811, registered on May 16, 2006
ACCENTURE & Design in Classes 9, 16, 35, 36, 37, 41 and 42, No 2,665,373, registered on December 24, 2002
ACCENTURE & Design in Classes 16, 18, 21, 24 and 28, No 3,340,780, registered on November 20, 2007
ACCENTURE & Design in Classes 18, 25 and 28, No 2,884,125, registered on September 14, 2004
ACCENTURE & Design, in Classes 35 and 36, No 3,862,419, registered on October 19, 2010
The Complainant also owns trademark registrations for ACCENTURE in several other countries.
The Complainant operates its official website under the domain name <accenture.com> which was registered on August 29, 2000. At this website, Internet users can find detailed information about the Complainant’s business in the United States and in other countries.
The Complainant has been using its ACCENTURE mark since many years ago for its business and promoted said mark notably through advertising campaigns, social development projects, sponsorship of sporting events, etc. Besides, the ACCENTURE mark has been recognized and ranked in several Brands Reports since 2002. The Complainant has also received numerous awards for its business, products and services provided under the ACCENTURE mark.
The Respondent registered the disputed domain name on February 23, 2019. The disputed domain name results in an Internet browser error message stating “this site can’t be reached”.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is confusingly similar to the ACCENTURE trademark. The only difference in the disputed domain name is the replacement of the second letter “c” in the ACCENTURE trademark with the letter “x” which creates a typographical misspelling and a phonetically identical pronunciation of the disputed domain name when compared to the ACCENTURE trademark. Such misspelling constitutes a case of typosquatting which might lead to a confusion for many Internet users who may believe that the disputed domain name belongs to the Complainant.
The Complainant further states that its trademark is globally famous and has acquired secondary meaning through the Complainant’s substantial and continuous use of the ACCENTURE trademark. Furthermore, the Respondent has never been authorized in any way whatsoever by the Complainant to use the ACCENTURE trademark. The Complainant underlines that the Respondent is not commonly known by the disputed domain name, particularly since the disputed domain name is inactive. The Complainant mentions in addition that the Respondent has not shown to be making any preparations to use the disputed domain name. Under the circumstances, the Respondent would have no legitimate interest in the disputed domain name.
According to the Complainant, the Respondent had constructive notice that the ACCENTURE trademark was a registered trademark in the United States and many other jurisdictions worldwide. The Complainant notes that it wrote to the Respondent on April 2, 2019 inquiring as to the Respondent’s purpose for registering the disputed domain name and requesting a reply to the same; the Respondent did not reply. Furthermore, the Complainant refers to previous decisions under the Policy where passive or inactive holding of a domain name was considered as being used in bad faith. In this frame, the Complainant insists upon the fact that its ACCENTURE trademark is distinctive and well known so that it is implausible for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s ACCENTURE trademark. Typosquatting would also constitute strong evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
I. Language of the Proceedings
An initial Complaint was filed in English on April 19, 2019 against an unidentified registrant.
The identity and location in the Seychelles of the Respondent was disclosed to the Center by the Registrar. The Center informed the Complainant accordingly by email of May 14, 2019.
According to the information provided to the Center, the language of the registration agreement is German. On May 14, 2019, the Center therefore requested the Parties to take position on the language of the proceedings.
On May 17, 2019, the Complainant requested the language of the proceedings to be English for the following reasons:
(i) despite the fact that the Registrar appears to be located in Germany, the Registrar provides an option to view and use its full website and related tools in the English language, which suggests that the Registrar regularly serves English-speaking customers;
(ii) the Respondent is located in the Seychelles which has three national languages including English which is an indication that the Respondent would not be prejudiced in any way by holding the proceeding in English;
(iii) the Respondent has registered a domain name which incorporates a typosquatted version of the Complainant’s English-language company name and trademark;
(iv) the Complainant has submitted significant evidence demonstrating that the Respondent registered the disputed domain name in bad faith. Allowing the dispute to proceed in German language would arguably give the Respondent an advantage by forcing the Complainant to incur additional costs and expenses.
The Respondent did not take position on this issue.
The Panel notes that nothing in the case file shows that the Respondent would be familiar with the German language. Considering the name of the Respondent, which seems to be French, and its domicile in the Seychelles, it seems unlikely that the Respondent has an interest in having the present proceedings held in German rather than in English.
By weighing the interests of both Parties and under the circumstances of the case, in accordance with the paragraph 11 of the UDRP Rules, the Panel finds that the language of the present proceedings shall be English.
II. Substantive Issues
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name 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 the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown to have trademark rights over the name ACCENTURE.
The disputed domain name differs from the ACCENTURE trademark only by the fact that the letter “x” replaces the letter “c” so as to read “acxenture”. Nevertheless the disputed domain name is phonetically and visually similar to the ACCENTURE trademark owned by the Complainant.
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name, notably by
(i) providing strong evidence on the famous character of its ACCENTURE marks which supports the fact that the Respondent has no interest in said marks;
(ii) stating that the Respondent has not been authorized by the Complainant to use its marks or to use them in the disputed domain name or any other domain name containing the ACCENTURE marks;
(iii) underlining that the Respondent is not commonly known by the disputed domain name and that the disputed domain name is not used by the Respondent (passive holding).
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Respondent submitted no reply to the case against it. No evidence is contained in the case file which would evidence that the Respondent has rights or legitimate interests in the disputed domain name, in particular that it would be commonly known by the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found:
(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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site 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 his web site or location or of a product or service on his web site or location.
The Complainant evidenced that its ACCENTURE marks have been registered since several years in many countries of the world. Furthermore, the Complainant has shown to have a strong Internet presence and to have been using its ACCENTURE marks extensively in relation to its specific services.
Under the circumstances, there is no doubt that the Respondent must have known the ACCENTURE marks when registering the disputed domain name.
The Panel also finds that the passive holding of the disputed domain name constitutes bad faith use in the present case considering (i) the famous character of the ACCENTURE marks, (ii) the typosquatting (see above under section 6.A.), and (iii) the silence of the Respondent within these proceedings (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3.).
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <acxenture.com> be transferred to the Complainant.
Theda König Horowicz
Date: July 9, 2019