WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2019-2455
1. The Parties
The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Wil & Emery LLP, United States of America (“United States”).
The Respondent is Registration Private, Domains by Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Names and Registrar
The disputed domain names <accenturefedral.com> (“First disputed domain name”), and <accentureferderal.com> (“Second disputed domain name”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2019, for the First disputed domain name. On October 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the First disputed domain name. On October 9, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the First 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 October 15, 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 October 20, 2019, including the Second disputed domain name, which was subject to a separate proceeding until that date. The Center transmitted by email to the Registrar an email communication to notify the Consolidation of cases on October 22, 2019. On October 22, 2019, the Registrar acknowledged receipt of the Center’s consolidation email under the current case number of both disputed domain names.
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 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2019.
The Center appointed Mihaela Maravela as the sole panelist in this matter on November 27, 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. The Complainant has offices and operations in more than 200 cities in 56 countries.
The Complainant is the exclusive owner of a number of United States registered trademarks consisting of the word ACCENTURE, including the following:
- the United States trademark for the word ACCENTURE with registration number 3,091,811, registered on May 16, 2006, covering goods in class 9, 16, 35, 36, 37, 41, and 42;
- the United States trademark for the word ACCENTURE, with registration number 2,665,373, registered on December 24, 2002, covering goods in class 9, 16, 35, 36, 37, 41, and 42.
Also, the Complainant has registered the trademark ACCENTURE and ACCENTURE & Design in more than 140 countries (and the Complainant has submitted sample evidence in this regard), for a variety of products and services including, but not limited to, its management consulting, technology services and outsourcing services.
Complainant owns and operates the website at <accenture.com>, registered from August 29, 2000. The ACCENTURE trademark ranked 34th in the 2018 Interbrand’s Best Global Brands Report.
The First disputed domain name was registered on September 18, 2019 and the Second disputed domain name was registered on July 22, 2019.
5. Parties’ Contentions
The Complainant argues that the disputed domain names are confusingly similar to the ACCENTURE trademark of the Complainant which is a distinctive and famous trademark. The only difference in the disputed domain names is the addition of a misspelling of the word “federal,” as “ferderal” or “fedral” following the ACCENTURE trademark. The Complainant contends that the addition of the misspelled terms “ferderal” and “fedral” to the disputed domain names does nothing to reduce their confusing similarity with the Complainant’s ACCENTURE trademarks.
Further, the Complainant argues that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE trademarks or any domain names incorporating the ACCENTURE trademarks. The Complainant also shows that the Respondent is not commonly known by the disputed domain names. According to the Complainant, the Respondent has chosen to use the Complainant’s famous ACCENTURE trademark in the disputed domain names to create a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate, noncommercial fair use of the domain names in the meaning of the Policy.
The Complainant also shows that the First disputed domain name is used to host a website that promotes other commercial links, and websites and that the Second disputed domain name, depending on the applicable Internet browser, either resolves to a blank page with no content, or it results in some version of a redirected domain displaying a security warning, sponsored website, or some other form of suspicious website. The Complainant concludes that the Respondent is not making a legitimate, noncommercial or fair use of the disputed domain names, and it appears that the Respondent has chosen the disputed domain names to trade off the reputation and goodwill associated with Complainant’s ACCENTURE trademarks, to cause confusion amongst Internet users and the Complainant’s customers, to potentially use the disputed domain names for malicious purposes and to prevent the Complainant from owning the disputed domain names.
In addition, the Complainant alleges that given its worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE trademarks long prior to registering the disputed domain names. The Complainant also argues that given the distinctive and well-known character of its ACCENTURE trademark throughout the world, 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 trademarks. In addition, the Complainant argues that the use of the Second disputed domain name for the distribution of malware or other security risks is clear evidence of bad faith use and registration of a domain name. Also, the use of the Complainant’s trademark to generate revenue from the Internet advertising, as it is the case with the First disputed domain name represents registration and use in bad faith. Furthermore, the Respondent originally obscured its identity as the registrant of the disputed domain names through a WHOIS service that has redacted all contact information.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the fact that no Response has been filed by the Respondent, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that the Complainant has proved its rights over the ACCENTURE trademark.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name with the trademarks in which the Complainant holds rights.
According to section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “this test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”.
Also, according to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
Here the disputed domain names incorporate in their entirety the Complainant’s ACCENTURE trademark. This Panel agrees with prior UDRP decisions recognising that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.
The only element in the disputed domain names that is different from the Complainant’s trademark is in case of the First disputed domain name the addition of the letters “fedral”, and in the case of the Second disputed domain name the addition of the letters “ferderal”, which in both cases appear to be a misspelling of “federal”. According to section 1.8 of the WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.
The Panel concludes that the addition of the letters “fedral” respectively “ferderal” to the Complainant’s trademark ACCENTURE in the First disputed domain name, respectively in the Second disputed domain name, does not prevent a finding of confusing similarity under the first element of the Policy.
It is well accepted by UDRP panels that a generic Top-Level Domain (gTLD), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain names are confusingly similar to the Complainant’s trademarks and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0, which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has established that it holds rights over the trademark ACCENTURE and claims that the Respondent is not sponsored by or affiliated with the Complainant in any way and that the Complainant has not given the Respondent permission to use the Complainant’s trademarks in any manner, including in domain names. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the name “accenture”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.
The Respondent failed to come forward with any explanation to show that it has rights or legitimate interests in the disputed domain names. Moreover, the disputed domain names were registered long after the Complainant registered its trademark ACCENTURE.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain names. See for a similar finding Cash Converters Pty Ltd v. Mirriam Musonda-salati, WIPO Case No. D2014-1839.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain names were registered and are being used in bad faith.
According to the unrebutted assertions of the Complainant, its ACCENTURE trademark is widely used in commerce well before the registration of the disputed domain names in July and September 2019. The disputed domain names incorporate the Complainant’s trademark and typosquatting of descriptive word in addition to the relevant gTLD. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration date of the disputed domain names.
Also, given the well-known character of the ACCENTURE trademarks (as held for example in Accenture Global Services Limited v. Domains By Proxy, LLC / Norman Shaaban, WIPO Case No. D2018-0731; Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN, supra), an inference of bad faith use can be drawn. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
Further, from the evidence put forward by the Complainant and not rebutted by the Respondent, it results that the First disputed domain name redirected at the date of the Complaint Internet traffic to a website displaying pay-per-click advertisements. Given the confusing similarity between the ACCENTURE trademark and the First disputed domain name, Internet users would likely be confused into believing that the Complainant is affiliated with the website to which the disputed domain name resolves. Presumably the Respondent intends to benefit from the confusion created: it is likely that the Respondent earns income when Internet users click on the links in search of ACCENTURE services. See Compagnie Générale des Etablissements Michelin v. PrivacyProtect.org and Kim Bum LLC, WIPO Case No. D2013-0181.
Also, from the unrebutted submission by the Complainant, the Second disputed domain name appears to have redirected at the date the Complaint either to a blank page with no content, or to a redirected domain displaying a security warning, sponsored website, or some other form of suspicious website. The Respondent has failed to make to date any genuine use of the disputed domain name. The absence of any bona fide use of the domain name at the very least results in a failure to rebut the inference noted above. See for a similar finding Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186.
In addition, another indication of bad faith is in this Panel view the apparent change of the content of the website for the disputed domain names after the receipt of the Complaint – both websites seem to redirect at the date of the decision to a website saying that in order to be redirected to the website one should click on a button to be redirected to Chrome Store with an option to install Safe Browsing Extension. The change to the Respondent’s website further supports a finding of bad faith. See Maplin Electronics Limited v. Lee Jeongsoon, WIPO Case No. D2006-0011 (change in website after receiving complaint was evidence of bad faith) or V&V Supremo Foods, Inc. v. email@example.com, WIPO Case No. D2006-1373.
This Panel also notes that the Respondent Carolina Rodrigues, Fundacion Comercio Electronico was named as Respondent in a high number of separate previous proceedings under the Policy (more than 50 UDRP cases). It is reasonable to infer from these that the Respondent has engaged in a pattern of cybersquatting. E.g. Starbucks Corporation v. Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1991; Redbox Automated Retail, LLC d/b/a Redbox v. Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-0812, and the decisions cited there.
Furthermore, the Respondent availed of a privacy shield service to protect his identity. While the use of a privacy shield is not necessarily objectionable in itself, in the present case it contributes to the accumulation of elements pointing to bad faith registration and use. See Solvay SA v. Domain Privacy Service Fbo Registrant / Mary Koehler, WIPO Case No. D2016-1357.
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 names <accenturefedral.com> and <accentureferderal.com> be transferred to the Complainant.
Date: December 11, 2019