WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Super Privacy Service LTD c/o Dynadot
Case No. D2019-2713
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 Super Privacy Service LTD c/o Dynadot, United States.
2. The Domain Name and Registrar
The disputed domain name <accenturehotelandconferencing.com> is registered with Dynadot, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 2019, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent;
(c) the Respondent’s contact details;
(d) the Respondent registered the disputed domain name on January 27, 2012;
(e) the language of the registration agreement is English;
(f) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center verified that the 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 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2019.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 16, 2020. 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 the well-known consulting services firm. It was established under the name “Accenture” on January 1, 2001. It, and its associated entities, have offices and operations in some 200 cities in 56 different countries.
It registered the domain name <accenture.com> on August 20, 2000 and has been using that domain name to promote its business since it began using the name “Accenture”.
In each year since 2009, the Complainant has spent over USD 65 million in advertising expenditures promoting its business and services under the name “Accenture”. It has consistently been ranked by Interbrand in the top 50 Global brands since 2002. Kantar Millward Brown has also ranked the Complainant’s brand in the top 100 Global brands since 2006. The Complainant has been listed in the Fortune Global 500 for the last 16 years and has achieved rankings in either or both the Fortune 100 Most Admired Companies or Fortune 100 Best Companies to Work for in each year since 2009 – except 2017, when it was listed in Fortune’s Blue Ribbon Companies.
According to the Complaint, the Complainant has over 1,000 registered trademarks in more than 140 countries for ACCENTURE or ACCENTURE and “>” device. The annexures to the Complaint include evidence of a number of these registrations. The registrations include:
(a) United States Registered Trademark No. 3,091,811, ACCENTURE, in respect of a wide range of goods and services in International Classes 9, 16, 35, 36, 37, 41 and 42. This trademark was filed on October 26, 2000 and registered on May 16, 2006;
(b) European Union Trademark No. 001925650, ACCENTURE, in respect of a wide range of goods and services in International Classes 9, 16, 35, 36, 37, 41 and 42. This trademark was filed on October 27, 2000, and registered on October 9, 2002; and
(c) United States Registered Trademark No. 2,665,373, ACCENTURE and “>” device, in respect of a wide range of goods and services in International Classes 9, 16, 35, 36, 37, 41 and 42. This trademark was filed on November 17, 2000, and registered on December 24, 2002.
The Complaint also includes evidence of registered trademarks in Egypt, India, Indonesia, Malaysia and Pakistan, amongst others.
One of the Complainant’s related companies, Accenture HR Service, held the registration of the disputed domain name between 2002 and 2011. The circumstances in which that registration lapsed have not been explained.
According to the Complaint, the Respondent registered the disputed domain name in 2012 shortly after the registration by Accenture HR Service lapsed.
In 2012 after the Respondent became the registrant, information stored by the Wayback Machine at “www.archive.org” shows that the disputed domain name resolved to a website headed “Conferencing” which included posts headed:
- Ways on how career transition services can work hand in hand with other management system;
- Why do we need to get the best oral health care for us and for our family;
- 3 iPad Apps Recommendations.
Shortly before the Complaint was filed, the disputed domain name resolved to a website, which included posts headed:
- Megyn Kelly’s Hair Has Remained Professional and Well-Kept Through the Years;
- JJ Smith Before and After Plastic Surgery Pictures are Unavailable as She Believes in Healthy Eating Only;
- Osteoarthritis and Finger Length;
- Fun facts about Cheetahs – What kids need to know?
- Harlem Renaissance Facts – The History.
These posts bear dates in July and August 2017.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified in section 4 above.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.11.
Where a trademark includes figurative elements, the usual practice under the Policy is to disregard graphic elements of a trademark due to the inability to represent them in the domain naming system unless the figurative elements are the dominant portion of the trademark so that the textual elements have been overtaken: e.g., WIPO Overview 3.0, section 1.10. It is appropriate to apply that approach in the present case to the Complainant’s registered trademarks like United States Registered Trademark No. 2,665,373 as the verbal element, ACCENTURE, is not a minor element or overborn by the device element “>”.
Accordingly, in the present case, the disputed domain name differs from the Complainant’s trademark in two ways: (a) the addition of the essentially descriptive expression “hotelandconferencing”; and (b) the gTLD “.com”. These changes are too insignificant to avoid a finding of confusing similarity.
The disputed domain name includes the whole of the Complainant’s trademark ACCENTURE which is plainly recognisable as a sequential alphanumeric string. In addition, a domain name which consists of a trademark plus a descriptive term is nonetheless confusingly similar to the trademark for the purposes of the Policy. See e.g., WIPO Overview 3.0, section 1.8.
Accordingly, the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 [the Respondent] has acquired no 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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states unequivocally that it has not authorised the Respondent to use or register the disputed domain name. Nor is the Respondent in any way associated with the Complainant.
The disputed domain name is plainly not derived from the Respondent’s name as registered. The Respondent, whoever may lie behind the privacy screen, has not sought to claim that the disputed domain name is in any way derived from any name it uses or is known by.
As the Complainant points out, ACCENTURE is an invented term. It has no significance or meaning except as the name and trademark of the Complainant. The way the disputed domain name is being used is not in any way related to the Complainant or its business and services. As the Complainant also points out, the website to which the disputed domain name resolves appears to be dormant, with the most recent post being published in August 2017. Even at that point, the content on the website does not appear to have related to hotels and conferencing. It had no referable connection to the Complainant or its business.
On the record in this administrative proceeding, therefore, it appears that the disputed domain name is being used merely to misdirect traffic by taking advantage of the fame and reputation of the Complainant’s trademark. This conduct in the absence of an appropriate explanation (if any exists) does not qualify as good faith or legitimate use under the Policy.
Accordingly, the Panel finds that the Complainant has established a sufficient prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under the Policy. The Respondent has not sought to rebut that prima facie case.
The Complainant has therefore established the second requirement under the Policy.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
The Complainant’s trademark was adopted and registered many years before the Respondent registered the disputed domain name. By the time the Respondent registered the disputed domain name, the Complainant had well and truly established a global reputation in its trademark. And, as already noted, the Complainant’s trademark is an invented term. It is not a dictionary term. Nor is it descriptive of anything. It signifies only the Complainant and its services. In these circumstances, it is highly likely that the Respondent was well aware of the trademark significance of the term “Accenture” and registered it to take advantage of that trademark significance.
In these circumstances and in the absence of any exculpatory explanation from the Respondent, therefore, the Panel finds that Complainant has established the disputed domain name was registered in bad faith.
The reasons leading to the finding that the Respondent has no rights or legitimate interest in the disputed domain name lead also to the conclusion that the Respondent is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and is being 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, <accenturehotelandconferencing.com, be transferred to the Complainant.
Warwick A. Rothnie
Date: January 27, 2020