WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Eviany Waters, saniofii llc
Case No. D2019-2041
1. The Parties
The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Eviany Waters, saniofii llc, United States.
2. The Domain Name and Registrar
The disputed domain name <ap-accenture.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2019. On August 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 22, 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 the Complainant on August 26, 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 August 27, 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 September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 24, 2019.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 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
The Complainant filed a United States trademark application (Application No. 76,154,620) for the mark ACCENTURE on October 6, 2000, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services. This application resulted in registration (Registration No. 3,091,811) on May 16, 2006. The Complainant holds several other trademark registrations for the ACCENTURE mark and ACCENTURE with design elements:
ACCENTURE, for various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42, No. 3,091,811 of May 16, 2006;
ACCENTURE for various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42, No. 2,665,373 of December 24, 2002;
ACCENTURE for various goods in Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28, No. 3,340,780 of November 20, 2007;
ACCENTURE for various goods in Classes 18, 25 and 28, No. 2,884,125 of September 14, 2004; and
ACCENTURE with design, for various services in Classes 35 and 36, No. 3,862,419 of October 19, 2010.
The Complainant also owns registrations for the ACCENTURE and ACCENTURE & Design marks in more than 140 countries for a variety of products and services including, but not limited to, management consulting, technology services and outsourcing services.
The Complainant registered the domain name <accenture.com> on August 29, 2000, and at the website to which this domain name resolves Internet users can find information about the services offered by the Complainant and its global offices.
The disputed domain name was registered on June 26, 2019. The disputed domain name resolves to a webpage where links to competing service providers’ websites are displayed.
5. Parties’ Contentions
The Complainant points out that it has expended considerable amounts on advertising around the world in relation to its ACCENTURE trademarks, for instance in 2017 it expended USD 69 million. It also says that the ACCENTURE mark was ranked 34th in the 2018 Interbrand’s Best Global Brands Report, its highest ranking ever. For the past 16 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies. The Complainant says it has received numerous awards for its business, products and services provided under the ACCENTURE marks, and points out that millions of sports fans come across the ACCENTURE marks because the Complainant is the Official Technology Partner for the RBS 6 Nations Rugby Championship since 2012. The Complainant was a sponsor of the World Golf Championships and the title sponsor of the series’ season-opening, the Accenture Match Play Championship event.
The Complainant contends that the disputed domain name is very similar to the Complainant’s ACCENTURE trademark, the only difference being that it adds the letters “A” and “P,” which do not appear to have any particular meaning in this context. Because the ACCENTURE mark consists of a coined term, it should, according to the Complainant, be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand (as demonstrated by heavy advertising worldwide). The Complainant also says that adding random characters or a descriptive term to a trademark in a domain name does not negate confusing similarity. In assessing a likelihood of confusion between a domain name and a complainant’s mark, points of similarity should in any case be weighed more heavily than points of difference, according to the Complainant.
Further, the Complainant asserts that its ACCENTURE mark is not a generic or descriptive term in which the Respondent might therefore have an interest. The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating them. The Respondent is said not to be commonly known by the disputed domain name, nor known as such prior to the date on which the Respondent registered the disputed domain name for the purpose of trading on the value of what the Complainant describes as its famous trademark.
Further, the Complainant points out that the Respondent registered the disputed domain name via a privacy proxy service in order to mask its identity, and that the Respondent has chosen to use the ACCENTURE trademark to generate a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate, noncommercial fair use of the disputed domain name, according to the Complainant. The Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services because it uses it to host a website that promotes other commercial links and websites. The disputed domain name resolves to a website that provides various sponsored click-through links, which direct Internet users to additional search pages or third party commercial websites. This use does not qualify as a bona fide offering of goods and services, and the Complainant presumes that the Respondent has received compensation for each misdirected user. In other words, the Respondent employs the ACCENTURE trademark to create initial interest confusion and then capitalizes on misdirected traffic to generate click-through revenue.
The Complainant points out that the Respondent had constructive notice that the ACCENTURE mark was a registered trademark in the United States and many other jurisdictions. Because of what the Complainant says is its worldwide reputation and the ubiquitous presence of its ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE marks a long time before registering the disputed domain name.
The Complainant says that it sent an email to the email address listed in the WhoIs information for the disputed domain name inquiring as to the Respondent’s purpose for registering the latter. It sent a further email on July 25, 2019. However, no reply has been forthcoming.
Finally, the Complainant submits that there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of its marks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s ACCENTURE trademark. However, that distinctive mark is immediately recognizable within the disputed domain name. It is separated from the additional letters “ap” by a dash, which makes it prominent and easily identifiable.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent did not file any response, nor did it reply to the emails of the Complainant. There is nothing before the Panel to indicate that the Respondent is known by the disputed domain name or was trading legitimately under that name or under the mark ACCENTURE prior to registration of the disputed domain name. The Respondent has used the disputed domain name for the purpose of generating click-through license fees by displaying hyperlinks to unrelated third party providers on the webpage to which the disputed domain name resolves. This is not an activity of a kind that gives rise to rights or recognition of any legitimate interests in the disputed domain name. Rather it is a method of turning to account the goodwill that attaches to the trademark of an unrelated party by falsely suggesting a legitimate connection with that trademark’s owner. The Complainant in this case has not licensed or authorized the Respondent to use its trademark ACCENTURE in any guise, nor to incorporate it in a domain name and register it, nor to associate itself commercially with the Complainant in any way.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s ACCENTURE trademark has been used extensively before the date of registration of the disputed domain name, and that in many countries and in relation to a wide range of services. The Complainant’s trademark has been registered in many jurisdictions. Much money has been expended on bringing it to the attention of consumers. The Respondent has apparently carefully chosen to incorporate this trademark in the disputed domain name, even offsetting it from the rest of the domain name with a dash. The Respondent has then used the disputed domain name to generate click-through licenses, an exercise that would be pointless in relation to a domain name that is not recognized by Internet users. It is clear that the Respondent registered the disputed domain name in bad faith knowing of the reputation that vested at that time in a trademark belonging to a third party. Further, using such a domain name for the purpose of attracting Internet users who have been tricked into thinking there is a legitimate connection between the disputed domain name and the Complainant’s trademark, for the purpose of then directing them, for reward, to competing websites, is an activity which itself clearly constitutes use in bad faith.
Therefore the Panel holds that the disputed domain name was registered and used 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 disputed domain name <ap-accenture.com> be transferred to the Complainant.
William A. Van Caenegem
Date: October 16, 2019