WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Lynn

Case No. D2020-1693

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 Lynn, Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names <accenturetrusthk.com> and <trustaccenture.com> (“Disputed Domain Names”) are 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 Names. On June 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 6, 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 July 11, 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 July 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2020.

The Center appointed Jane Lambert as the sole panelist in this matter on August 21, 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 a well-known professional services firm operating in 56 countries. Such services include management consultancy, logistics, and outsourcing. It supplies those services under the trade mark ACCENTURE which it has registered in over 140 countries. Examples of those registrations are appended to the Complaint as Annex D.

One of the countries in which that mark is registered is the United States. The word mark ACCENTURE was registered on May 16, 2006 for a wide range of goods and services in classes 9, 16. 35, 36, 37, 41, and 42 under registration number 3,091,811.

The Respondent is known only as Lynn with an address in Hong Kong, China. A search for the address on Google and Google Maps failed to locate the street.

The Disputed Domain Names were registered on May 21, 2020, and resolve to websites displaying pay-per-click links.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the Disputed Domain Names on the grounds that:

- they are confusingly similar to a trade mark in which it has rights; and
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
- the Disputed Domain Names are registered and used in bad faith.

As to the first ground, the Complainant says that the Disputed Domain Names are confusingly similar to the Complainant’s ACCENTURE marks. The only difference is the addition of the word “trust” paired with the ACCENTURE trade mark; and in the case of <accenturetrusthk.com>, a further pairing with the letters “hk,” which is the country code abbreviation for Hong Kong.

With regard to the second ground, the Complainant says that none of the circumstances in paragraph 4(c) of the Policy applies. The Respondent is not affiliated with the Complainant and it has not been licensed or permitted to register the Disputed Domain Names. There is no evidence that the Respondent is commonly known by either of the Disputed Domain Names. It is not making any legitimate noncommercial or fair use of the Disputed Domain Names.

In respect of the third ground, the Complainant has produced screen dumps showing that each of the Disputed Domain Names has been used as an URL for a page with click through links to sponsored searches. It submits that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to those web pages, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. That would constitute evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

The Complainant adds that the Respondent was or should have been aware of the Complainant’s trade marks and that knowingly registering a domain name incorporating a trade mark of a well-known business without lawful excuse is itself an act of bad faith.

Relying on as Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574, the Complainant accuses the Respondent of passive holding which would also evidence bad faith.

B. Respondent

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

6. Discussion and Findings

The agreement by which the Respondent registered the Disputed Domain Names incorporated paragraph 4(a) of the Policy:

“You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.”

A. Identical or Confusingly Similar

The Panel is satisfied that the first element is present.

The Complainant is the registered proprietor of United States trade mark number 3,091,811 mentioned above. It is therefore a trade mark in which the Complainant has rights. The Respondent has registered Disputed Domain Names that combine the Complainant’s mark with the word “trust”. In the case of one of those Disputed Domain Names the Respondent has combined the word mark ACCENTURE with the word “trust” and the abbreviation for Hong Kong, “hk”. Such additional terms do not prevent a finding of confusing similarity. ’’It follows that each of the Disputed Domain Names is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel finds that the second element is present.

The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) providesthe following guidance:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In the Panel’s judgment, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. The Complainant has considered whether any of the circumstances in paragraph 4(c) of the Policy might apply and has found no evidence that they do. It has confirmed that it has no connection with the Respondent and that it has neither licensed nor permitted the Respondent to register the Disputed Domain Names. Without such licence or permission, it is difficult to see how the Respondent could register the Disputed Domain Names without risking an action for trade mark infringement or passing off.

According to the WIPO Overview 3.0, “the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” The Respondent has had ample opportunity to adduce such evidence but has not done so. As the Respondent has failed to come forward with such evidence, the Complainant is deemed to have satisfied the second element.

C. Registered and Used in Bad Faith

The Panel holds that the third element is present.

Paragraph 4(b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is set out in sub-paragraph (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.”

The Panel has already found that the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights. It follows that any use of the Disputed Domain Names creates a likelihood of confusion with the Complainant’s mark. The Respondent has used the Disputed Domain Names as URLs for pages with click through links to sponsored links or searches. A payment is generated every time such link is clicked. It follows that the Respondent has used the Disputed Domain Names intentionally to attract Internet users to those pages for commercial gain. It follows that paragraph 4(b)(iv) of the Policy is satisfied.

The Panel agrees with the Complainant that registering the trade marks of well-known companies as domain names and holding such domain names for no good reason is further evidence of bad faith.

In the absence of any evidence to the contrary the Panel concludes that the Disputed Domain Names have been registered and used in bad faith.

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 Names <accenturetrusthk.com> and <trustaccenture.com> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Date: September 5, 2020