WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Nazif Ozkan
Case No. D2019-2670
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 Nazif Ozkan, Sweden.
2. The Domain Name and Registrar
The disputed domain name <accenturesv.com> is registered with Binero AB (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2019. On October 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 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 November 6, 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 November 8, 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 November 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 3, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2019.
The registration agreement is in Swedish hence, an email was sent to the Complainant by the Center on November 6, 2019. The Complainant has requested that the proceedings shall be in English following the email received by the Center on November 8, 2019.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 9, 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 company, based in Ireland, and provides services and solutions in strategy, consulting, digital, technology and operations under the name ACCENTURE.
The Complainant refers to the following United States national trademark registrations:
No. 3091811 ACCENTURE (word), registered May 16, 2006, for goods and services in classes 9, 16, 35, 36, 37, 41 and 42;
No. 2665373 ACCENTURE (fig), registered December 24, 2002, for goods and services in classes 9, 16, 35, 36, 37, 41 and 42;
No. 3340780 ACCENTURE (fig), registered November 20, 2007, for goods and services in classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28;
No. 2884125 ACCENTURE (fig), registered September 14, 2004, for goods in classes 18, 25 and 28; and
No. 3862419 ACCENTURE (fig), registered October 19, 2010, for services in classes 35 and 36.
The Complainant also refers to European Union Trademark registrations, as well as trademark registrations in a number of other countries, such as Australia, Sri Lanka, Pakistan, Malaysia, India and Egypt.
The disputed domain name <accenturesv.com> was registered in the name of the Respondent on September 1, 2019.
No detailed information is provided about the Respondent’s activities, apart from what is mentioned above under Procedural History, and below by the Complainant.
5. Parties’ Contentions
The Complainant describes itself as an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations under the name ACCENTURE, and is the owner of the ACCENTURE trademark and company name, as well as trademarks fully incorporating the ACCENTURE trademark.
The Complainant began using the trademark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services, on January 1, 2001. The Complainant has offices and operations in more than 200 cities in 56 countries.
To protect its trademark rights in the ACCENTURE trademarks, the Complainant filed a United States trademark application, that was registered on May 16, 2006. In order to help protect its trademark rights on an international basis, the Complainant also owns registrations for the ACCENTURE trademark and ACCENTURE & Design trademark in more than 140 countries. The Complainant owns more than 1,000 registrations for the trademarks ACCENTURE, ACCENTURE & Design and many other trademarks incorporating the ACCENTURE brand for a variety of products and services. The Complainant has developed substantial goodwill in its ACCENTURE name and its ACCENTURE trademarks, as well as its official domain name, <accenture.com>, registered on August 30, 2000.
The Complainant has relied on the Internet as a forum to promote and disseminate information regarding the various offerings under the ACCENTURE trademarks that have been advertised in connection with various media and have been written about in the global press. Reputable brand consulting companies in the industry have recognized the ACCENTURE trademark as a leading global brand, such as the Interbrand’s Best Global Brands Report since 2002, the BrandZ – Top 100 Brand Rankings since 2006, and the Fortune Global 500.
The Complainant supports numerous social development projects worldwide in connection with the ACCENTURE trademarks, including, but not limited to, its SKILLS TO SUCCEED initiative, which has equipped more than 1.2 million people around the world with the skills to find a job or build a business. Millions of sports fans encounter the ACCENTURE trademarks, as the Complainant has served as the Official Technology Partner for the RBS 6 Nations Rugby Championship since 2012. The Complainant was also a global umbrella sponsor of the World Golf Championships and the title sponsor of the series’ season-opening event, the Accenture Match Play Championship.
The Complainant also has collaborated with various groups on cultural initiatives across the world, for example with the Louvre Museum to develop new technological programs designed to support the Louvre’s initiatives to spread culture, enhance its image and reach new segments of the public. The Complainant has been a concert sponsor for the Rheingau Musik Festival in Germany since 1997. As a result of this extensive use and promotion, the ACCENTURE trademarks have become distinctive and famous globally and have enjoyed such distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name.
The Complainant states that the disputed domain name <accenturesv.com> is confusingly similar to the Complainant’s ACCENTURE trademarks, as the only difference is that the domain name adds the letters “s” and “v,” which do not appear to have any particular meaning in this context – or, in the alternative, could make reference to the country of El Salvador (SV).
Further, the Complainant claims that the Respondent has no legitimate interest in the disputed domain name. The Complainant’s ACCENTURE trademark is not a generic or descriptive term in which the Respondent might have an interest. The Complainant’s ACCENTURE trademarks are globally famous and have acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use of the trademarks in connection with the Complainant’s goods and services. 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 WHOIS information does not show that the Respondent is not commonly known by <accenturesv.com>, and the Respondent is not making a legitimate, noncommercial fair use of the disputed domain name.
Rather, the Respondent is not using <accenturesv.com> for any purpose other than to redirect to the Swedish iteration of Complainant’s own website at the address: <https://www.accenture.com/se-en>. The Respondent’s failure to use the disputed domain name to provide a bona fide offering of goods and services confirms that it does not have a right or legitimate interest in the domain name.
The Respondent registered <accenturesv.com> 18 years after the Complainant began using its ACCENTURE trademark in commerce and 19 years after the Complainant had registered the domain name <accenture.com>.
Finally, the Complainant states that the Respondent registered and is using the disputed domain name in bad faith. The Respondent had constructive notice that the ACCENTURE trademark 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 trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE trademarks long prior to registering the disputed domain name. The Respondent’s use of <accenturesv.com> to redirect to the Complainant’s website is a form of passive holding of the domain name, that can be considered to be a bad faith registration. Given the well known status of the Complainant’s ACCENTURE trademarks and domain name <accenture.com>, there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of Complainant’s trademarks.
The Complainant requests that the Panel issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1 Findings related to Paragraph 11 of the Rules
According to Paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
In the present case, as noted above, the registration agreement is in Swedish; however the Complainant has requested that the proceedings shall be in English.
The Panel has further studied the details in the present case, and notes that:
i) the Registrar in this case has in fact Registration Agreement in both Swedish and English on its website, meaning that English is at least – by the Registrar – an accepted alternative language to Swedish;
ii) the Complainant does not communicate in Swedish and submitting all the documents in Swedish would entail significant translation expenses, which would impose a significant and undue burden on the Complainant;
iii) the disputed domain name is re-directed to the Complainant’s English web site, indicating at least the Respondent fully understand English;
iv) the Center has communicated in both Swedish and English with the Respondent, meaning that the Respondent had full knowledge of the case and the possibility to respond in time in Swedish; and
v) the Respondent has chosen not to reply to the Complainant’s contentions, indicating at least that the Respondent has no objections to English as the language of the proceedings.
See Carrefour v. rabie nolfiie WIPO Case No. D2019-0673, “The Panel finds that as the Registrar posted its Rules on its web site in both English and Spanish, as the Center notified Respondent of the proceedings in both English and Spanish, as Respondent failed to respond to such notice and invitation to file a response in the proceedings, as Complainant is not conversant with the Spanish language and would have to incur significant additional cost in the proceedings if it were required to proceed in the Spanish language, and as English is the primary language in which international commerce is conducted, the proceedings will be conducted in the English language”, see also AGFA-Gevaert N.V. v. Nexperian Holding Limited / Sun Di Guo WIPO Case No. D2018-0752 “…English is one of the most popular languages in the world and is commonly used in international communication; the disputed domain names comprise Latin script and the English word "royal". The Complainant therefore presumes that the Respondent knows English”, and Facebook Inc. v. Protection of Private Person, REG.RU Protection Service / Nikita Sakhnenko WIPO Case No. D2019-0870.
Considering the facts stated above, the Panel grants the Complainant’s request that English be the language of this proceeding.
6.2 Findings related to Paragraph 4(a) of the Policy
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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant, Accenture Global Services Limited, Ireland, claims to be the owner of the ACCENTURE trademark, supported by a number of copies of Certificates of Registrations provided by the Complainant.
The Panel notes that none of these Certificates identify the Complainant as the owner, but instead a Swiss company – Accenture Global Services GmbH.
However, the Panel also notes that
i) the Complainant initially in the Complaint describes Accenture Global Services GmbH as the Complainants “predecessor”, and that
ii) panelists in previous cases were the Complainant referred to the same trademarks, have accepted these registrations as evidence of the Complainant’s trademark rights; see Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org WIPO Case No. D2013-2098; Accenture Global Services Limited v. Wang Peng CongWIPOCase No. D2019-1977; Accenture Global Services Limited v. WhoIs Privacy Protection Service, Inc./ ROBERT GREEN WIPO Case No. D2013-2100; and Accenture Global Services Limited v. Domains By Proxy, LLC/ Name Redacted WIPO Case No. D2013-2099; and finally that
iii) the Respondent has not opposed the Complainant’s trademark claims and information.
The Panel therefore accepts as a fact that the Complainant is the owner of the trademark ACCENTURE, registered in several versions in USA, as well as in a number of other countries around the world.
The relevant part of the disputed domain name is “accenturesv”, as it is well established in previous UDRP decisions that the added top-Level Domain – being a required element of every domain name – may be irrelevant when assessing whether or nota domain name is identical or confusingly similar to a trademark.
The Panel notes that the disputed domain name consists of the Complainant’s trademark ACCENTURE, followed by the letters “s” and “v”. As stated by the Complainant, these two letters merely indicate some kind of geographical abbreviation, such as the country code for El Salvador (ISO 3166-1), or the language code for the Swedish language (ISO 639-1), thereby indicating that the connecting website is meant for the Complainant’s local information in any of these countries.
The Panel therefore concludes that <accenturesv.com> is confusingly similar to the Complainant’s trademark ACCENTURE and thus, the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant’s prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainant’s trademark and is not an authorized agent or licensee of the Complainant’s products, services or trademarks. There is nothing in the Respondent’s name that indicates it may have become commonly known by the disputed domain name, enabling it to establish a legitimate interest in <accenturesv.com>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name.
On the contrary – the Panel finds that the Respondent’s use of the disputed domain name to simply redirect to the Swedish iteration of the Complainant’s own website at the address “accenture.com/se-en” indicates that the Respondent is trying to give the fake impression that the Respondent, and the disputed domain name, has some commercial connection with the Complainant. Such non-active use cannot create any legitimate interest. See Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records WIPO Case No. D2017-2533 “The apparent lack of rights or legitimate interests in the disputed domain name is supported by the invisible redirection to the Complainant’s official website, indicating there is very likely no connection with a bona fide offering of goods and services”.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant refers to the Complainant’s United States trademarks, as well as to trademark registrations in other countries and regions around the world, including the European Union. The Respondent is based in Sweden, one of the member states of the European Union.
The Panel also notes that the Complainant’s trademark seems to be used and well known since long also outside the United States, such as the collaborations with various groups of cultural initiatives in Europe.
Further, the fact that the Respondent has registered the Complainant’s full and distinctive trademark ACCENTURE, only adding the generic term “sv”, which is the language code for the Swedish language, after the trademark, strongly indicates that the disputed domain name was indeed registered with full knowledge of the Complainant’s trademark.
As to the use in bad faith, the Panel notes that <accenturesv.com> currently redirects to the Swedish iteration of Complainant’s own website at the address ”accenture.com/se-en”. As already noted above, such use indicates that the Respondent is trying to create an impression of commercial connection with the Complainant, without any legal rights or commercial agreements.
The Panel take this as an example of bad faith use, even if it is not so active, as such re-direction indicates also that the Respondent may be preparing for a more active fake website use, or the use is an active step to force the Complainant to offer the Respondent to sell the disputed domain name in order to stop the risk for confusion among Complainant’s Swedish based customers.
The Panel concludes that the Respondent registered and uses the disputed domain names in bad faith under Policy paragraph 4(a)(iii).
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, <accenturesv.com>, be transferred to the Complainant.
Date: December 22, 2019