WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Domain Administrator, See PrivacyGuardian.org / Tu Do, Nguyen Thi Ha Linh
Case No. D2020-0164
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 Domain Administrator, See PrivacyGuardian.org, United States / Tu Do, Nguyen Thi Ha Linh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <accenture.monster> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2020. On January 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2020, 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 January 24, 2020, 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 January 27, 2020.
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 January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 19, 2020.
The Center appointed Anna Carabelli as the sole panelist in this matter on February 26, 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, a corporation organized under the laws of Ireland, provides a broad range of management consulting, technology and outsourcing services in various countries.
As evidenced in Annex D to the Complaint, the Complainant owns the following ACCENTURE trademarks registered in the United States:
- ACCENTURE, registration No. 3,091,811, registered on May 16, 2006;
- ACCENTURE, registration No. 2,665,373, registered on December 24, 2002;
- ACCENTURE, registration No. 3,340,780, registered on November 20, 2007;
- ACCENTURE, registration No. 2,884,125, registered on September 14, 2004; and,
- ACCENTURE & Design, registration No. 3,862,419, registered on October 19, 2010.
In addition, the Complainant owns registrations for the ACCENTURE mark in several other countries (as shown by a sampling of certificates of trademark registrations in various jurisdictions worldwide, attached to the Complaint as Annex E).
The Complainant owns the domain name <accenture.com> since August 30, 2000 (see Annex F), and operates an official website at the above domain name, through which the Complainant markets, promotes and provides its services.
The ACCENTURE mark has been recognized as leading global brand-by-brand consulting companies in the industry, and ranked under number 31 by the Interbrand’s 2019 Best Global Brands Report (see Annex I).
The disputed domain name was registered by the Respondent on November 15, 2019, using a proxy service.
The disputed domain name redirects users to the Complainant’s own website at the address “www.accenture.com/sg-en”; the Complainant has provided a screenshot from the redirected website as it appeared at the disputed domain name on January 20, 2020 (Annex T).
On December 5, 2019, the Complainant sent an email message to the email address provided in the WhoIs information inquiring as to the Respondent’s purpose for registering the disputed domain name. Since no response was received, on January 15, 2020, the Complainant sent a further email to the Respondent via the WhoIs email address and flagged a security issue in connection with the Respondent’s registration of the disputed domain name and redirection of the same to the Complainant’s official site (see Annex Y).
The Respondent has not provided any reply to the Complainant’s correspondence and has not submitted any response to the Complaint.
5. Parties’ Contentions
The Complainant contends that:
- The Complainant is an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations under the trademark ACCENTURE for which the Complainant owns more than 1,000 registrations in more than 140 countries.
- The word “accenture” is not a descriptive or generic term, but rather a term coined by the Complainant, so consumers associate this term exclusively with the Complainant.
- Since January 1, 2001 the Complainant has extensively used and continues to use the ACCENTURE mark.
- The ACCENTURE mark has been heavily advertised by the Complainant in connection with various media and has been written about it in the press.
- The Complainant owns and operates the website at “www.accenture.com” and has relied on the Internet as a forum to promote and disseminate information regarding the various offerings under the ACCENTURE mark, including consulting, technology and outsourcing services.
- The ACCENTURE mark has been recognized as a leading global brand by reputable brand consulting companies in the industry and ranked number 31 by the Interbrand’s 2019 Best Global Brands Report.
- As the result of the extensive use and promotion, the ACCENTURE mark has become distinctive and famous globally and has enjoyed such distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name.
- The disputed domain name is identical to the Complainant’s ACCENTURE mark and the addition of the generic Top-Level Domain (“gTLD”) “.monster” has no legal significance.
- The Respondent does not have any rights or legitimate interests in respect of the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its ACCENTURE mark or any domain names incorporating the ACCENTURE mark. The Respondent is not commonly known by the disputed domain name.
- The Respondent has made no bona fide offering of goods and services. Rather, the Respondent is using the disputed domain name to redirect to the Complainant’s own website at the address “www.accenture.com/sg-en”, which is the version of the Complainant’s website intended for the Singapore market.
- The disputed domain name has been registered and is being used in bad faith, as the Respondent is intentionally attempting to trade off the reputation and goodwill of the Complainant’s ACCENTURE mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Under paragraph 4(a) of the Policy, the Complainant must prove 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;
(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.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii), shall be evidence of registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain names for the purpose of paragraph 4(a)(ii) above.
A. Identical or Confusingly Similar
The Complainant has proved that it owns trademark registrations for ACCENTURE, throughout the world. The disputed domain name contains the Complainant’s ACCENTURE mark in its entirety, accompanied by the new gTLD “.monster”. As recorded in section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable gTLD in a domain name is viewed “as a standard registration requirement and as such is disregarded under the first element confusing similarity test. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to ‘new gTLDs’)”.
Accordingly, the Panel finds that the Complainant has established element 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s mark.
The Complainant asserts that the Respondent is not commonly known by the disputed domain name and cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name, particularly because the Respondent is using it to redirect users to the Complainant’s own website at the address “www.accenture.com/sg-en” which is the version of the Complainant’s website intended for the Singapore market. In this connection, the Complainant points out that the unauthorized redirection to its website cannot serve as evidence of rights or legitimate interests.
The Complainant has established prima facie evidence that none of the three circumstances establishing rights or legitimate interests provided for in paragraph 4(c) of the Policy applies. As stressed by many UDRP panels, in such a case the burden of production shifts to the respondent to rebut the evidence. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the absence of a Response to the Complaint, the Respondent has failed to rebut the prima facie case made by the Complainant or advance any other arguments supporting its rights or legitimate interests in the disputed domain name. In addition, redirection to the Complainant’s official website suggests there is very likely no connection with a bona fide offering of goods and services (see Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533), thus further supporting a finding of a lack of rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has established element 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, which includes:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Based on the evidence submitted to the Panel, the Complainant’s ACCENTURE mark consists of a coined term and can be considered as globally well-known and vested with significant goodwill, as also recognized in Accenture Global Services Limited v. ICS INC. / Privacy Protect.org, WIPO Case No. D2013-2098.
The Respondent has incorporated the Complainant’s mark into the disputed domain name in full. Therefore, it is not conceivable that the Respondent did not have in mind the Complainant’s mark when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2). The uncontested evidence submitted by the Complainant indicates that the Respondent is using the disputed domain name to redirect users to the Complaint’s own website. In the Panel’s view this demonstrates that the Respondent specifically targeted the Complainant and its ACCENTURE mark, and corroborates a finding of bad faith registration.
Previous panels have considered that concealing identity and contact information may point to bad faith in itself (see e.g. Accenture Global Services Limited v. ICS INC. / Privacy Protect.org, supra; Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729 - see also WIPO Overview 3.0, section 3.6). This concept applies to the present case, as the Respondent registered the disputed domain name using a proxy service. The lack of response by the Respondent further allows the Panel to infer that the disputed domain name was registered in bad faith.
As found in Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, supra, “the invisible redirection from the disputed domain name to the Complainant’s official website reinforces potential for confusion. Internet users are likely to consider the disputed domain name was in some way endorsed by or connected with the Complainant, particularly taking into consideration the global reputation of the [Complainant’s] mark”.
The above demonstrates bad faith use for Policy purposes, bringing this case within the example of evidence of bad faith in paragraph 4(b)(iv) of the Policy as quoted above.
The Panel concludes in these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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 <accenture.monster> be transferred to the Complainant.
Date: March 11, 2020