WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Name Redacted1
Case No. D2020-0601
1. The Parties
Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America.
Respondent is Name Redacted.
2. The Domain Name and Registrar
The disputed domain name is <usaccenture.com> which is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2020. On March 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 12, 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 those in the Complaint. The Center sent an email communication to Complainant on March 16, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 18, 2020.2
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 Respondent of the Complaint, and the proceedings commenced on March 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 14, 2020. Between April 1 and 8, 2020, several email communications were exchanged among a person named the same as Respondent, Complainant, and the Center. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 15, 2020.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on April 30, 2020. This Panel finds that it was properly constituted. This 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
Complainant operates an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology and business operations.
Complainant has rights over the ACCENTURE mark for which it holds several mark registrations, such as registration No. 3091811 with the United States Patent and Trademark Office, registered on May 16, 2006, in classes 9, 16, 35, 36, 37, 41, and 42. Complainant also has rights over the ACCENTURE and design mark for which it holds several mark registrations, such as registration No. 2665373 with the United States Patent and Trademark Office, registered on December 24, 2002, in classes 9, 16, 35, 36, 37, 41, and 42.
Complainant is the registrant of the domain name <accenture.com> created on August 29, 2000.
The disputed domain name was registered on February 25, 2020. At the time the Complaint was filed the disputed domain name did not resolve to an active website since it returned an error message showing, among others, “This site can’t be reached www.usaccenture.com’s server IP address could not be found”.
5. Parties’ Contentions
A. Complainant
Complainant’s assertions may be summarized as follows.
Complainant is the owner of the ACCENTURE mark and company name, and marks fully incorporating the ACCENTURE mark. Complainant owns registrations for the ACCENTURE mark in more than 140 countries. The ACCENTURE mark consists of a coined term and, as such, should be afforded a wide scope of protection.
Complainant began using the mark ACCENTURE on January 1, 2001. Since then, Complainant has extensively used and continues to use it in connection with various services and specialties, including management consulting and business process services, which comprises various aspects of business operations such as supply chain and logistics services, as well as technology services and outsourcing services. Complainant has developed substantial goodwill in its name and its ACCENTURE marks, as well as in its official domain name <accenture.com> where Internet users can find detailed information about the services offered by Complainant and its global offices.
Reputable brand consulting companies in the industry have recognized the ACCENTURE mark as a leading global brand. The ACCENTURE mark has been recognized in Interbrand’s Best Global Brands Report since 2002 (the ACCENTURE mark ranked 31st in the 2019 Interbrand’s Best Global Brands Report), and by Kantar Millward Brown in its annual BrandZ – Top 100 Brand Rankings since 2006. Complainant has been recognized for its business services and brand recognition. For the past 18 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies. Complainant has received numerous awards for its business, products and services provided under the ACCENTURE marks. As a result of the extensive use and promotion, the ACCENTURE marks have become distinctive and famous globally and have enjoyed such distinctiveness and notoriety since long prior to the date on which Respondent registered the disputed domain name.
The disputed domain name is confusingly similar to the ACCENTURE mark. The only difference between them is that the disputed domain name appends the descriptive, geographic abbreviation “us” to the ACCENTURE mark. The addition of “us” to the disputed domain name does nothing to reduce its confusing similarity with the ACCENTURE mark.
Respondent can demonstrate none of the criteria set forth in paragraph 4(c) of the Policy and, therefore, has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and is neither affiliated with, nor has it been licensed or permitted to use Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks.
Respondent has chosen to use Complainant’s ACCENTURE mark in the disputed domain name to create a direct affiliation with Complainant and its workforce and business. Therefore, Respondent is not making a legitimate, noncommercial fair use of the disputed domain name.
The disputed domain name resolves to a page displaying an Internet browser error message. Email telemetry data from Complainant’s security provider suggests that Respondent has configured the disputed domain name for email functions, as a search of mail exchanger (MX) records indicates that Respondent has connected the disputed domain name to a mail server.
The inactive holding of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent has held the disputed domain name for nearly one month and has failed to make any developments or demonstrable preparations to use it with a bona fide offering of goods or services. 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 it.
The disputed domain name was registered nearly 18 years after Complainant first registered its ACCENTURE mark in the United States of America. Given Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE marks on the Internet, Respondent was or should have been aware of the ACCENTURE marks prior to registering the disputed domain name.
Respondent’s registration of the disputed domain name in an attempt to appear associated or affiliated with Complainant constitutes bad faith registration and use.
Respondent has held the disputed domain name for nearly one month, and has not used it for any legitimate purpose. Respondent’s failure to use the disputed domain name for a legitimate purpose is evidence of bad faith registration and use.
The passive or inactive holding of a domain name that incorporates a registered trademark, without a legitimate Internet purpose, may indicate that the domain name is being used in bad faith under the Policy. Complainant’s ACCENTURE mark is distinctive and well known throughout the world, and as a result of its extensive use and promotion it is implausible for Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of Complainant’s ACCENTURE Marks. Furthermore, Respondent’s identity has been redacted and obscured via a privacy service. These facts are indicative of the disputed domain name being held passively and in bad faith.
Because Respondent has connected the disputed domain name to a mail server, the ability to send and receive emails from the disputed domain name suggests that Respondent may intend to use it for malicious purposes, such as phishing or fraud.
Complainant requests that the disputed domain name be transferred to Complainant.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “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”.
On April 1 and 2, 2020, there were a series of email communications, first between Complainant and a person named the same as Respondent. From such email communications it appears that there was also a telephone conversation between them. In essence, such person named the same as Respondent stated that he was not the owner of the disputed domain name, that someone had fraudulently used his name and partial office street address to register it and that the telephone number and email address disclosed in the Registrar’s report did not belong to him. By email communications of April 2 and 8, 2020, Complainant requested the Center to have Respondent’s name fully redacted from this Decision. This Panel is satisfied that, on the balance of probabilities, registration of the disputed domain name was obtained by someone that used the name and office street address of an individual alien to said registration. In view of such potential identity theft, this Panel accepted Complainant’s request and decided to have Respondent’s name redacted from this decision.3 However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant.4 The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the ACCENTURE mark.
Since the addition of a generic Top-Level Domain suffix after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The disputed domain name identically reflects the ACCENTURE mark, albeit preceded by the prefix “us”. It is clear to this Panel that “accenture” is recognizable in the disputed domain name and that the addition of such prefix in the disputed domain name does not avoid its confusing similarity with said mark (see sections 1.7 and 1.8 of the WIPO Overview 3.0).
Thus, this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
The evidence in the file shows that Complainant and its ACCENTURE mark have become well-known. Complainant contends that it has no relationship with Respondent, that it has not authorized Respondent to use such mark, and that Respondent is not commonly known by the ACCENTURE mark. The evidence also shows that the disputed domain name may be deemed inactive since there appears to be no active website associated to it. However, it seems to this Panel that the nature of the disputed domain name carries a risk of implied affiliation (see section 2.5.1 of the WIPO Overview 3.0).
This Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name (see Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467, and section 2.1 of the WIPO Overview 3.0). In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent.
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration Complainant’s international presence and media coverage, that the registration and use of its ACCENTURE mark preceded the registration of the disputed domain name, that said mark has become well-known and is composed of a coined term, this Panel is of the view that Respondent must have been aware of the existence of Complainant and its ACCENTURE mark at the time it obtained the registration of the disputed domain name.
The evidence supplied by Complainant shows that the disputed domain name does not resolve to an active website. The concept of a domain name “being used in bad faith” is not limited to a domain name with an active website on the Internet. Several UDRP decisions have held that the passive holding of a domain name that incorporates a well-known trademark, without obvious legitimate purpose, may be deemed to be bad faith use under paragraph 4(a)(iii) of the Policy.5 It seems to this Panel that there are no bases to conceive a legitimate use of the disputed domain name by Respondent. In reaching that conclusion, this Panel has taken into account, in addition to the circumstances mentioned above, the following: (i) Complainant is a well-established company, (ii) Respondent is using Complainant’s mark at the disputed domain name (albeit with an irrelevant prefix) without Complainant’s authorization, (iii) Respondent’s use of a privacy service to hide its name and contact details, (iv) Respondent’s use of a name and street address that, based on the evidence in the file, indicates that Respondent misappropiated the identity of a third party, and (v) Respondent’s failure to appear in this proceeding.
In sum, the overall evidence indicates that Respondent’s choice of the disputed domain name was deliberate for its substantial identity with, and with the likely intention to benefit from the reputation and goodwill of, Complainant’s ACCENTURE mark and potentially deceive Internet users, which denotes bad faith.
In light of the above, this Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <usaccenture.com> be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: May 14, 2020
1 Respondent’s name has been concealed as discussed in section 6 below.
2 The original Complaint was filed against “Redacted for Privacy/Whois Privacy Protection Foundation”, which appeared as registrant in the corresponding WhoIs report. The amended Complaint was filed against Respondent, as per the information disclosed by the Registrar.
3 See Boehringer Ingelheim Pharma GmbH & Co. KG v. Name Redacted, WIPO Case No. D2012-0890: “this appears to be a case of identity theft […] the Panel has decided that no useful purpose is to be served by referring to the name of the individual against whom the Complaint was filed and has therefore not included its name in the heading or body of this Decision”. See also The Hearst Foundation, Inc. and Hearst Communications, Inc. v. Name Redacted, WIPO Case No. D2016-2479.
4 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.” See also section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
5 See Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Caso No. D2003-0882: “Respondent has provided no evidence or suggestion of a possible legitimate use of the Domain Name. Thus, in the words of Telstra, it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by the Respondent that would not be illegitimate”. See also “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246, and section 3.3 of the WIPO Overview 3.0.