WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / David Lowe
Case No. D2019-1222
1. The Parties
Complainant is Accenture Global Services Limited, United States of America (“United States” or “U.S.”), represented by McDermott Will & Emery LLP, U.S.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Lowe, U.S.
2. The Domain Name and Registrar
The disputed domain name <acceinture.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2019. On May 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 2019, 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 Complainant on June 3, 2019 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 June 6, 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 Respondent of the Complaint, and the proceedings commenced on June 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2019. Respondent did not submit any response. Accordingly, the Center confirmed Respondent’s default on July 8, 2019.
The Center appointed Clark W. Lackert as the sole panelist in this matter on July 17, 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 Accenture Global Services Limited (“Complainant”) is an entity with international operations in the fields of management consulting, technology, outsourcing, and other services. It has been using its ACCENTURE mark in word and design forms since at least as early as 2001, when it changed its name from Andersen Consulting, referring to “accent on the future” (Information Week, October 26, 2000). The record shows that Complainant owns multiple registrations for its ACCENTURE marks in word and design forms including the following registrations in the United States:
- ACCENTURE (Registration No. 3,091,811) granted May 16, 2006
- ACCENTURE in design form (Registration No. 2,665,373) granted December 24, 2002
- ACCENTURE in design form (Registration No. 3,340,780) granted November 20, 2007
- ACCENTURE in design form (Registration No. 2,884,125) granted September 14, 2004
- ACCENTURE in design form (Registration No. 3,862,419) granted October 19, 2010
These registrations cover the management consulting, technology, and outsourcing services detailed above as well as a broad range of other goods and services offered to promote the ACCENTURE brand. Each of these registrations is valid and in full force and effect, and each has been granted incontestability under United States law. In addition to its United States trademark registrations, Complainant also owns trademark registrations for its ACCENTURE marks in other jurisdictions including Egypt, India, the European Union, Pakistan, Malaysia, and Indonesia.
Complainant maintains an active Internet presence through its website available at “www.accenture.com”, a site that prominently features Complainant’s ACCENTURE marks and promotes the range of services and solutions offered by Complainant to multiple industries worldwide. In addition to its online promotion of its ACCENTURE marks and services, Complainant also advertises its services through large-scale billboards and installations at international airports and through print advertisements featured in industry-specific magazines and newspapers. Such advertising prominently features Complainant’s ACCENTURE marks.
The disputed domain name was registered on May 7, 2019 using the WhoisGuard, Inc. privacy service. The registrant details have since been publicized on WhoIs servers which identify “David Lowe” as registrant and Cincinnati, Ohio, United States as the registrant’s city, state, and country. This information matches the information disclosed by the Registrar in response to the Center’s request for identification. The record shows that the disputed domain name has been used to display links to third-party websites including links titled “Online Colleges”, “Car Insurance”, “Credit Cards”, “Life Insurance”, “AARP”, “Dentist”, “Cheap Flights”, “Internet”, “Flowers”, and “Comcast”.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to its ACCENTURE trademarks and its <accenture.com> domain name because it incorporates only one different letter and is likely to attract Internet traffic due to its similar literal composition and the likelihood of typographical misspellings by Internet users. Complainant submits that its ACCENTURE mark is coined, distinctive, and well-known and has risen to the status of a famous trademark with significant goodwill due to Complainant’s extensive advertising presence around the world and its high profile sponsorship activities. The complaint classifies the disputed domain name registration as an instance of “typosquatting” due to the likelihood that Internet users could misspell or mistype Complainant’s “www.accenture.com” Internet address when seeking Complainant’s services.
Complainant emphasizes that Respondent has not been licensed or authorized to use the disputed domain name and that Respondent is not commonly known by the disputed domain name. In addition, Complainant speculates that Respondent selected the disputed domain name in an effort to create an affiliation with Complainant’s business and that Respondent is not making any legitimate or noncommercial fair use of the disputed domain name. Complainant suggests that the links that have been featured on Respondent’s website are sponsored, pay-per-click links designed to direct traffic to third party webpages, and that such use is not a bona fide offering of goods or services. On a related note, Complainant notes that Respondent has not made any “demonstrable preparations” to use the disputed domain name in connection with any bona fide offering of goods or services. Complainant believes that Respondent chose the disputed domain name in the interest of creating confusion with Complainant’s ACCENTURE trademarks and to trade off of the goodwill and reputation associated therewith.
Complainant maintains that Respondent registered the disputed domain name in bad faith because it should have been aware of Complainant and its ACCENTURE trademarks at the time of registration due to Complainant’s worldwide reputation and extensive advertising. Complainant cites the use of the disputed domain name to display click-through links as evidence of bad faith because such links can be sponsored and may provide Respondent with commercial gain. Moreover, Complainant submits that Respondent’s use of the disputed domain name constitutes “passive holding” without a legitimate purpose for use. Finally, Complainant cites further indications of bad faith based upon the “typosquatting” nature of the disputed domain name’s composition, the use of a domain name privacy service to facilitate registration, and its belief that Respondent is intentionally trying to mislead the public into believing that the disputed domain name is affiliated with Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel has reviewed the record and finds that the Policy requirements have been satisfied as follows.
A. Identical or Confusingly Similar
Complainant has demonstrated ownership of its ACCENTURE trademarks in multiple jurisdictions including prior rights in the U.S., the country cited in WhoIs records as Respondent’s jurisdiction of residence. These rights can be traced to 2002 and precede the registration of the disputed domain name by 18 years.
Complainant’s demonstration of trademark ownership merits a side-by-side comparison with the textual portion of the disputed domain name in accordance with section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The confusing similarity between Complainant’s distinctive ACCENTURE mark and the disputed domain name is readily apparent due to the one letter difference, namely the incorporation of the additional letter “i” in the disputed domain name. The factors in this case mirror those in Accenture Global Services Limited v. WhoisGuard Protected / WhoisGuard, Inc. / Da Boo, WIPO Case No. D2019-0962 involving the domain name <acceneture.com>, a case that concluded with a decision finding confusing similarity because “[T]he ACCENTURE Mark is clearly recognizable within the Domain Name. The additional letter “e” does nothing to distinguish the Domain Name from the ACCENTURE mark”.
Registration of a domain name such as the <acceinture.com> registration in dispute here is commonly referred to as “typosquatting” due to the selection of a literal component that incorporates only minor differences from a registered mark. See Debevoise & Plimpton LLP v. Keyword Marketing, Inc. / Web Advertising, Corp., WIPO Case No. D2007-1679 (recognizing a one-letter difference as a “common mistyping” that is confusingly similar when analyzing the DEBEVOISE trademark and the domain names <debevois.com> and <debvoise.com>). Similar findings have been routine in multiple UDRP decisions including that in Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, a decision that cited a one-letter difference as evidence of “typosquatting” when finding confusing similarity between the <amazoh.com> domain name and the AMAZON trademark.
The disputed domain name is confusingly similar to Complainant’s ACCENTURE trademark. The requirements of paragraph 4(a)(i) of the Policy have been satisfied.
B. Rights or Legitimate Interests
There is no evidence in the record that Respondent has been commonly known by the disputed domain name or that Respondent has relevant trademark rights. There is also no evidence that Respondent has made demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services. The record shows that the only use of the disputed domain name to date has been use to display links that direct Internet traffic to third-party webpages.
Complainant’s rights in its ACCENTURE trademarks precede registration of the disputed domain name, and there is no evidence that Respondent has been licensed to use this similarly composed disputed domain name or that Respondent is associated with or affiliated with Complainant.
The Panel finds that Complainant has made its prima facie case and that Respondent has not rebutted Complainant’s contentions. The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
C. Registered and Used in Bad Faith
Complainant’s ACCENTURE trademark has been acknowledged as a well-known mark. See, e.g., Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315 (finding that the ACCENTURE mark is “widely known all over the world”); Accenture Global Services Limited v. “Accenture”, WIPO Case No. D2016-0338 (classifying the ACCENTURE trademark as a “well-known one”); Accenture Global Services Limited v. Shivani Sharma, WIPO Case No. D2015-0657 (finding that “the ACCENTURE Mark is distinctive and widely known”); and Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098(finding that the ACCENTURE mark “can in fact be considered as well-known within the relevant Internet community” and “can be considered as well-known globally”).
Complainant’s ACCENTURE trademark is a coined term as set forth in the Complaint and acknowledged by the prior decision in WIPO Case No. D2013-2098, supra, and media (see Paragraph 4, supra). It is safe to conclude that Respondent was aware of Complainant when registering the disputed domain name, since it differs from Complainant’s coined, well-known trademark by only one letter. It has been established that the registration of a domain name resembling a well-known trademark such as ACCENTURE can constitute registration in bad faith, because it is unlikely that the registrant could have been unaware of the trademark and its owner’s rights at the time the domain name was registered. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (finding bad faith registration for similar reasons).
The record supports a finding of bad faith registration and use based upon paragraph 4(b)(iv) of the Policy which states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use. Use of the disputed domain name, a domain name that is confusingly similar to the coined and well-known ACCENTURE mark, to display links to third-party webpages using terms such as “Car Insurance”, “Cheap Flights”, and “Internet” demonstrates an effort by Respondent to tradeoff of Complainant’s ACCENTURE trademark, a trademark that is used by Complainant to promote its services in industries linked to these terms such as the automotive, software, communications and media, travel, and insurance industry specialties advertised at Complainant’s “www.accenture.com” website. As detailed in prior UDRP cases such as Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728, the presence of such links support a finding of bad faith because this content demonstrates a deliberate effort to trade off the goodwill associated with a trademark and attract Internet traffic intended for the trademark owner’s website. In this case, it is likely that searches for services provided by Complainant under its ACCENTURE marks could direct Internet users to Respondent’s website due to the competitive content. By registering the disputed domain name and displaying links to third-party websites using terms that overlap with Complainant’s target industries, Respondent is diverting traffic from Complainant’s domain name in violation of paragraph 4(b)(iv) of the Policy.
Finally, it should be noted that Respondent utilized a privacy service to register the disputed domain name. While use of such a service can be legitimized by privacy concerns, masking of registrant details in this case supports an inference of bad faith due to the other indications of bad faith that are present.
The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have 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 disputed domain name <acceinture.com> be transferred to Complainant.
Clark W. Lackert
Date: July 30, 2019