WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Cimpress Schweiz GmbH
Case No. D2019-2307
1. The Parties
The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America.
The Respondent is Cimpress Schweiz GmbH, United States of America.
2. The Domain Name and Registrar
The disputed domain name <acconture.com> is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2019. On September 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 23, 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 September 25, 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 September 26, 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 October 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2019.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on October 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 management consulting firm operating in 56 countries. It is the owner, amongst others, of the following trademark registration (Annex D to the Complaint):
- United States of America Trademark Registration No. 3,091,811 for the word mark ACCENTURE, registered on May 16, 2006.
The disputed domain name <acconture.com> was registered on August 13, 2019 and was used for sending emails. Currently, the disputed domain name fails to resolve to an active website.
5. Parties’ Contentions
The Complainant asserts to have started using its ACCENTURE trademark on January 2001 in connection with management consulting, technology services and outsourcing services, currently operating in more than 200 cities in 56 countries, and holding trademark rights in more than 140 countries.
The Complainant further asserts to have extensively used and promoted its ACCENTURE trademark which has become distinctive and globally famous, enjoying notoriety and having acquired substantial goodwill, as can be illustrated by its rankings in Interbrand’s Best Global Brands Report since 2002, Kantar Millward Brown’s BrandZ – Top 100 Brand Rankings since 2006 and Fortune Global 500’s The World’ Most Valuable Brands.
In addition, the Complainant claims to support numerous social projects worldwide as well as to sponsor sports events such as the World Golf Championships and cultural activities such as a collaboration with the Louvre Museum to develop new technological programs to spread culture and reach new segments of the public.
According to the Complainant, the disputed domain name is confusingly similar to its trademark, the only difference being the replacement of the vowel E for O in the disputed domain name, what constitutes typosquatting.
As to the absence of rights or legitimate interests, the Complainant argues that:
i. the Complainant’s trademark is not a generic or descriptive term in which the Respondent might have an interest;
ii. the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s trademark or any domain name relating to it;
iii. the Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the registration date of the disputed domain name;
iv. the Respondent appears to have chosen the disputed domain name to create a direct affiliation with the Complainant and its business;
v. the Respondent is passively holding the disputed domain name, preventing the Complainant from registering it.
In what it relates to the bad faith registration of the disputed domain name, the Complainant asserts that the Respondent had constructive notice of the ACCENTURE trademark, duly registered and well-known in many jurisdictions worldwide, being it unlikely that the Respondent was not aware of it when registering the disputed domain name. Furthermore the Complainant states that the disputed domain name is being passively held by the Respondent and appears to have been initially used in connection with an “@acconture.com” email address to falsely pose as a representative of the Complainant for malicious purposes such as phishing or fraud, intentionally misleading and confusing the public into believing that the Respondent 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 sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to the Policy.
A. Identical or Confusingly Similar
The Complainant has established its rights in the ACCENTURE trademark.
The disputed domain name <acconture.com> substitutes the first vowel E in the Complainant’s trademark for the vowel O, what characterizes a misspelling of the Complainant’s trademark and does not avoid a finding of confusing similarity under the Policy, as recognized by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 1.9.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate a respondent’s rights to or legitimate interests in a domain name. These circumstances are:
(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it has not acquired trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In that sense, the Complainant indeed states that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s trademark or any domain name relating to it.
Also, the absence of any trademarks or trade names registered by the Respondent corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name, that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate the absence of rights or legitimate interests.
The Respondent has apparently used the disputed domain name in connection with an “@acconture.com” email address to falsely pose as a representative of the Complainant for malicious purposes such as phishing or fraud, intentionally misleading and confusing the public into believing that the Respondent is associated or affiliated with the Complainant, what cannot be considered a bona fide offering of goods or services under the Policy.
The Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where, by using the disputed 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 website or location or of a product or service on the website or location.
In this case, both the registration and use of the disputed domain name in bad faith can be found in view of the apparent use of the disputed domain name seeking to create a direct affiliation with the Complainant and its business, as seen above.
Other factors that corroborate with the Panel’s finding of bad faith of the Respondent are:
a. the reputation and distinctiveness of the Complainant and its ACCENTURE trademark;
b. the absence of a reply by the Respondent;
c. the implausibility of any good faith use to which the disputed domain name may be put.
For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 <acconture.com> be transferred to the Complainant.
Wilson Pinheiro Jabur
Date: November 12, 2019