WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. WhoisGuard Protected / WhoisGuard, Inc. / Da Boo
Case No. D2019-0962
1. The Parties
The Complainant is Accenture Global Services Limited, United States of America, represented by McDermott Will & Emery LLP, United States of America.
The Respondent is WhoisGuard Protected, Panama / WhoisGuard, Inc., Panama / Da Boo, Canada.
2. The Domain Name and Registrar
The disputed domain name <acceneture.com> (hereafter the Domain Name) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2019, 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 the Complainant on May 1, 2019 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 May 3, 2019.
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 May 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on June 6, 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 that provides management consulting, technology services and outsourcing services under the name ACCENTURE and is the owner of the ACCENTURE Mark and company name, and other marks fully incorporating the ACCENTURE Mark. The Complainant began using the ACCENTURE Mark on January 1, 2001 and has continued to use it since. It has a number of US registrations for ACCENTURE, for instance, US trademark Reg. No. 3,091,811 with a Registration date of May 16, 2006 and also owns registrations, for the ACCENTURE Mark and ACCENTURE & Design mark, (together the ACCENTURE marks) in more than 140 other countries. The Complainant has offices and operations in more than 200 cities in 56 countries and has developed substantial goodwill in its ACCENTURE name and ACCENTURE marks, and its official domain name, <accenture.com> (registered on August 30, 2000).
The Domain Name, <acceneture.com>, was registered on April 4, 2019.
Not much is known about the Respondent. It has not taken part in these proceedings or responded to an email from the Complainant sent on April 17, 2019. The Respondent used a Privacy Service when registering the Domain Name.
The ACCENTURE marks have been advertised in various media and written about in the press. Annual advertising expenditure worldwide, since 2009, runs to tens of millions of USD annually. The Complainant has been the recipient of a number of awards and the ACCENTURE Mark has been recognized as a leading global brand. The ACCENTURE marks have become distinctive and famous globally, enjoying distinctiveness and notoriety since long before registration of the Domain Name.
5. Parties’ Contentions
The following is a summary of the main allegations of the Complainant.
The Domain Name is confusingly similar to the ACCENTURE marks
The Domain Name is nearly identical to the ACCENTURE Mark and <accenture.com> domain name, the difference being the addition of the letter “E” (in the Domain Name) between the letters “N” and “T” in the distinctive and famous ACCENTURE Mark. The word “accenture” is not a descriptive or generic term but a term coined by the Complainant so that consumers would associate it exclusively with the Complainant and its products and services. The addition of the gTLD, “.com” is without significance. The additional letter “E” constitutes “typosquatting” which does not distinguish a domain name from another’s trademark. Moreover, in assessing likelihood of confusion, points of similarity should be weighed more heavily than points of difference. Internet users are very likely to be confused as to whether an association exists between the Domain Name and the Complainant.
Respondent has no legitimate interests in the Domain Name
The ACCENTURE marks are globally famous and have acquired secondary meaning through the Complainant’s substantial, continuous and exclusive use in connection with the Complainant’s goods and services.
The Respondent is neither affiliated with, nor licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks.
According to the Domain Name WhoIs information, the Respondent is not commonly known by the Domain Name and thus it appears it has chosen to use a (“typo-squatted”) version of the Complainant’s ACCENTURE Mark as its Domain Name to create an appearance of affiliation with the Complainant. Moreover, it is believed that the Respondent has used false WhoIs information to register the Domain Name in that the email address provided - “[...]@groupthule.com”, suggests that the Domain Name was registered by a Mr. Magnus Welander, who is CEO & President of the Thule Group AB. However, the “@groupthule.com” email address associated with the <groupthule.com> domain name, does not appear to be associated with Thule Group AB, and was only recently registered in February 2019 through Namecheap, the same Registrar as the Respondent used to register the Domain Name.
The Respondent is not making a legitimate, noncommercial fair use of the Domain Name or using the Domain Name in connection with a bona fide offering of goods or services.
The Respondent first used the Domain Name to host a website that promoted other commercial links and websites and as such, the use would not qualify as a bona fide offering of goods and services. It is assumed that the Respondent received compensation for each misdirected user. Since the filing of the initial complaint however, use has changed and the Domain Name now resolves to an inactive holding page that reads “Windows”; “Internet Information Services”; “Microsoft” and the word “welcome” in several languages. Inactive holding of a disputed domain name does not constitute a bona fide offering of goods or services (or a legitimate noncommercial or fair use).
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name but rather is concerned with the intentional attracting of Internet users, employing a typographical misspelling of the ACCENTURE Mark to create initial interest confusion, and then capitalizes on such misdirected traffic. Such use does not constitute a legitimate noncommercial or fair use of the Domain Name.
It would appear that the Respondent has chosen the Domain Name to trade off of the reputation and goodwill associated with Complainant’s ACCENTURE marks and to misleadingly divert Internet traffic from the Complainant’s website to the Respondent’s website for commercial gain, and to prevent the Complainant from owning the Domain Name.
The Respondent registered the Domain Name some 18 years after the Complainant began using its ACCENTURE Mark and 19 years after the Complainant registered <accenture.com>.
It is clear that the Respondent has no rights or legitimate interests in the Domain Name.
Respondent registered and is using the domain name in bad faith
The Respondent had constructive notice that the ACCENTURE Mark was a registered trademark in the United States and many other jurisdictions worldwide. Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE marks on the Internet, the Respondent was or should have been aware of the ACCENTURE marks long before registering the Domain Name.
The Complainant was alerted to emails associated with the Domain Name being sent on April 4, 2019. On April 17, 2019, the Complainant sent an email to the address listed in the WhoIs information for the Domain Name, inquiring as to the Respondent’s purpose in registering the Domain Name. To date, no response has been received.
The Respondent’s original use of the Domain Name, to redirect Internet users to commercial websites through various sponsored click-through links, is in bad faith and indicates that the Respondent registered the Domain Name with the intention of attracting Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s ACCENTURE Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
Given the well-known status of the complainant’s ACCENTURE marks and the Complainant’s registration and use of the domain <accenture.com>, there is no reason for the Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of the ACCENTURE marks.
Moreover, typosquatting constitutes strong evidence of bad faith. The extra letter “E” inserted into the famous ACCENTURE Mark, creates a potentially common typographical error and constitutes typosquatting.
Registration of a domain name in an attempt to appear associated or affiliated with another, constitutes bad-faith use and registration.
It is believed, as noted above, that the Respondent is sending emails under the Domain Name. Such emails are likely to create a false affiliation with the Complainant and also suggests the potential for abusive or illegitimate activity.
The Respondent has registered and is using the Domain Name in bad faith to intentionally mislead and confuse the public into believing that it is associated or affiliated with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (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. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its ACCENTURE Mark (and ACCENTURE marks).
Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name varies from the ACCENTURE Mark by virtue solely of an additional letter “e” inserted between the letters “n” and “t”.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms are usually regarded as insufficient to prevent confusing similarity.
The ACCENTURE Mark is clearly recognizable within the Domain Name. The additional letter “e” does nothing to distinguish the Domain Name from the ACCENTURE Mark.
The Panel finds that the Domain Name is confusingly similar to the ACCENTURE Mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use given that it can readily be assumed that, at least initially, the Respondent derived some financial or other benefit from Internet users clicking on links on the web page to which the Domain Name first resolved. Using a confusingly similar Domain Name, dissimilar by virtue of what can only be considered a deliberate typographical error, cannot be considered fair use. Moreover, any noncommercial or fair use must be without intent to mislead but it is likely in fact (in the absence of any alternative explanation), that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. However, it would be difficult to accept, without clear justification, that either the website to which the (deliberately confusingly similar) Domain Name first resolved, containing links to third party sites, or the static web page to which it subsequently resolved, could amount to a bona fide offering.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a formal Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
It is unlikely that the Respondent would not have known of the Complainant and its marks at the time of registration of the Domain Name.
The purpose behind the registration appears to have been to attract Internet users to the Respondent’s websites (or at least the first website to which the Domain Name resolved) for commercial gain using a domain name deliberately designed to be confusingly similar to the Complainant’s ACCENTURE Mark. In other words, precisely the circumstances envisaged above.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <acceneture.com> be transferred to the Complainant.
Date: June 20, 2019