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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Mark Henry

Case No. D2020-1691

1. The Parties

The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States” or “US”).

The Respondent is Mark Henry, United States.

2. The Domain Name and Registrar

The disputed domain name <accenture-tradings.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2020. On June 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on July 31, 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 an international business that provides a broad range of services and solutions in strategy, consulting, digital, technology and operations under the trademark ACCENTURE. The Complainant owns US registration No. 3091811 for the trademark ACCENTURE filed on October 26, 2000 and registered on May 16, 2006. The Complainant further owns a number of US registrations for the trademark ACCENTURE alone or with a design. The Complainant also owns trademark registrations in various parts of the world. The Complainant’s trademark was ranked 31st in 2019 Interbrand’s best global brands report. It has also featured on Forbes World’s Most Valuable Brands.

The disputed domain name was registered on May 25, 2020. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark ACCENTURE. The Complainant started using the trademark ACCENTURE in connection with a number of services in 2001 and has registered the trademark since 2002 in the US. The Complainant has invested heavily in the advertisement of its services and marks. The disputed domain name is only different from the Complainant’s trademark in that it simply adds a hyphen and the descriptive word “tradings”. The Complainant’s trademark is a coined term that is distinctive and famous. The addition of the generic Top-Level Domain (“gTLD”) “.com” has no “legal significance” and adding descriptive terms to a trademark in a domain name does not eliminate confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent does not seem to be commonly known by the disputed domain name. The Respondent is not affiliated with nor authorized by the Complainant to use its trademark. Further, the Respondent is not using the disputed domain name for any purpose, but rather is passively holding the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s trademark given its reputation and its “ubiquitous presence”. The Respondent did not reply to the Complainant’s communication. Passive holding may indicate bad faith use. The Respondent must have registered the disputed domain name in order to trade off the reputation and goodwill of the Complainant’s trademark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademark ACCENTURE. The Panel is satisfied that the Complainant has established its ownership of the trademark ACCENTURE.

The disputed domain name comprises the Complainant’s trademark ACCENTURE in its entirety with the addition of a hyphen and a descriptive term. Neither the hyphen nor the descriptive term would eliminate confusing similarity. The gTLD “.com” should typically be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that it never authorized the Respondent to use its trademark as part of the disputed domain name.

The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant and its trademark are well-known worldwide. The Complainant has been operating for almost 20 years now while the disputed domain name was only registered a couple of months back. The Respondent must have been fully aware of the Complainant and its trademark when it registered the disputed domain name comprising the Complainant’s well-known trademark and a descriptive term. In addition, the disputed domain name is inactive and such passive holding is an indication of bad faith in the circumstances of this case, as has been considered by past UDRP panels in similar cases.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the 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, the Panel orders that the disputed domain name <accenture-tradings.com> be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: August 10, 2020

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