WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Dejoye Florian (FLORIAND34379)
Case No. D2020-2777
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 Dejoye Florian (FLORIAND34379), France.
2. The Domain Name and Registrar
The disputed domain name <accenture-insigth.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2020. On October 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 22, 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 October 26, 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 October 28, 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 October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2020.
The Center appointed Peter Burgstaller as the sole panelist in this matter on December 10, 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. Since January 2001, the Complainant has used and continues to use the mark ACCENTURE in connection with its services.
The Complainant is owner of more than 1,000 ACCENTURE trademark registrations around the world, including the United States registrations:
- ACCENTURE, Registration No. 3,091,811, registered May 16, 2006, International Classes 9, 16, 35, 36, 37, 41, 42;
- ACCENTURE, Registration No. 2,665,373, registered December 24, 2002, International Classes 9, 16, 35, 36, 37, 41 and 42 (Annex D and E to the Complaint).
Additionally, the Complainant has registered the domain name <accenture.com> on August 29, 2000, which addresses its main website, offering the Complainant’s services around the world (Annex F to the Complaint).
The disputed domain name was registered on September 1, 2020 (Annex F to the Complaint).
The Complainant provided evidence that the disputed domain name resolved to a parked page (Annex S to the Complaint) and that the Respondent has used the disputed domain name in relation to a corresponding email address, namely […]@accenture-insigth.com, which has been utilized to impersonate one of the Complainant’s managing directors in order to perpetuate a financial fraud/phishing scam (Annex X to the Complaint).
5. Parties’ Contentions
The Complainant uses its mark ACCENTURE since 2001 for its business. To protect its trademark rights and to put others on notice of those rights the Complainant filed on October 6, 2000 a United States trademark application for the mark ACCENTURE, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services; the trademark was registered on May 16, 2006 (Reg. No. 3,091,811).
The Complainant has registered since then various ACCENTURE trademarks in more than 140 countries and owns more than 1,000 trademark registrations containing the mark ACCENTURE.
The Complainant has developed substantial goodwill in its ACCENTURE name and marks, as well as its official domain name <accenture.com> which the Complainant has registered on August 29, 2000.
The ACCENTURE marks are 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 Complainant’s trademarks; the Respondent has no rights or legitimate interests in the disputed domain name; and, the disputed domain name was registered and is being used in bad faith. The Respondent has held the disputed domain name for over one month, and has not used it for any legitimate purpose; finally, the Respondent uses the disputed domain name with a corresponding email address to pose as the Complainant and to perpetuate a financial fraud/phishing scam which constitutes bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(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 with respect to 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 Panel finds that disputed domain name is confusingly similar to the Complainant’s registered distinctive marks ACCENTURE since it entirely contains this trademark and only adds a hyphen and what appears to be a misspelling of the word “insight”, namely “insigth”.
It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Finally, it has also long been held that a generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 (see section 2.1 of the WIPO Overview 3.0).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant, and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademarks ACCENTURE in a domain name or in any other manner, lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated in many decisions rendered under the Policy (e.g., Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001) both conditions, registration and used in bad faith, must be demonstrated; consequently, the Complainant must show that:
- the disputed domain name was registered by the Respondent in bad faith, and
- the disputed domain name is being used by the Respondent in bad faith.
The disputed domain name was registered on September 1, 2020 by the Respondent. The Complainant has registered trademark rights in the mark ACCENTURE since 2002 onwards and is using the mark since 2001.
The Complainant owns numerous trademarks around the world in more than 100 countries. Moreover, the Complainant has registered the domain name <accenture.com> in 2000 and addresses with this domain name its main website offering its services around the world.
Because of the fame and the worldwide activities of the Complainant it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the trademark ACCENTURE is distinctive. The Panel is therefore convinced that the disputed domain name was registered with full knowledge of the Complainant’s rights and as such in bad faith by the Respondent.
Although the Respondent is not actively using the disputed domain name to host a website - it resolves to a parking page - the Respondent used the disputed domain name in relation to a corresponding email address, namely […]@accenture-insigth.com, which has been utilized to impersonate one of the Complainant’s managing directors in order to perpetuate a financial fraud/phishing scam.
Panels have held that the use of a domain name for the purpose of sending email, phishing or identity theft constitutes bad faith use. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see section 3.4 of the WIPO Overview 3.0).
Following the evidence put forward by the Complainant, the Respondent used the disputed domain name in particular as an email address together with the name of one of the Complainant’s employees to demand payment from the Complainant’s customers with a fraudulent intention.
The evidence and documents produced and put forward by the Complainant together with the fact that the Respondent has failed to present any evidence of any good faith registration and use with regard to the disputed domain name lead the Panel to the conclusion that the disputed domain name was registered and is being used by the Respondent with fraudulent intent and in bad faith under paragraph 4(a)(iii) of the Policy.
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-insigth.com> be transferred to the Complainant.
Date: December 24, 2020