WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Calvin Kepper, Domain Media

Case No. D2020-3055

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 Calvin Kepper, Domain Media, Canada.

2. The Domain Names and Registrar

The disputed domain name <accenturefingroup.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2020 in relation of the domain names <accenturefingroup.com> and <accenture-investment.com>. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with these two domain names. On November 17, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the two domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 23, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. However, due to an administrative oversight, the email address of the Complainant’s representative was not copied to this communication and the Complainant did not submit an amendment and did not provide arguments for the consolidation of proceedings.

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 December 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2021.

On December 31, 2020, the Center received an amended Complaint from the Complainant, requesting permission to amend the Complaint with the addition of a further domain name, <accenture-investment.co>.

The Center appointed Assen Alexiev as the sole panelist in this matter on January 20, 2021. 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.

On January 26, 2021, the Panel instructed the Center to send an email to the registrar NameCheap, Inc., requesting registrar verification in relation to the domain name <accenture-investment.co>. On January 28, 2021, NameCheap, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for this domain name which differed from the named Respondent and contact information in the Complaint.

On February 2, 2021, the Panel issued its Procedural Order No.1, by which it invited the Complainant to amend the Complaint by February 7, 2021, adding the Registrar-disclosed registrants as formal Respondents and providing relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control, and/or file a separate complaint for any domain name for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control, and indicating which domain name will no longer be included in the current Complaint. The Panel also invited the Respondent to comment solely on the Complainant’s filing and to submit such comments to the Center no later than February 12, 2021.

On February 7, 2021, the Complainant filed a submission in response to Procedural Order No. 1, by which it filed three separate complaints for the domain names <accenturefingroup.com>, <accenture-investment.com>, and <accenture-investment.co>. The Respondents did not file any response as of the deadline of February 12, 2021.

On February 18, 2021, the Panel issued its Procedural Order No. 2, by which it decided to proceed to issue a decision in the present proceeding only concerning the domain name <accenturefingroup.com> (hereafter, the “disputed domain name”). The Panel also decided to consider the domain name <accenture-investment.com> removed from the present proceeding, as it would be the subject matter of a new proceeding, and to deny the Complainant’s request to add the domain name <accenture-investment.co> to the present proceeding, and to instruct the Center to register the two new complaints in respect of the domain names <accenture-investment.com> and <accenture-investment.co> as two new separate proceedings.

4. Factual Background

The Complainant is an international business operating under the name Accenture since 2001. It provides services and solutions in strategy, consulting, digital, technology and operations, and has offices and operations in more than 200 cities in 56 countries.

The Complainant is the owner of a number of trademark registrations for the sign “ACCENTURE” (the “ACCENTURE trademark”), including the following:

− the United States trademark ACCENTURE No. 3,091,811, registered on May 16, 2006 for goods and services in International Classes 9, 16, 35, 36, 37, 41 and 42; and
− the United States trademark ACCENTURE No. 2,665,373, registered on December 24, 2002 for goods and services in International Classes 9, 16, 35, 36, 37, 41 and 42.

The Complainant is also the owner of the domain name <accenture.com> registered on August 29, 2000, which resolves to the Complainant’s official website.

The disputed domain name was registered on October 31, 2020. It resolves to a website that offers business and consumer lending services under the name Accenture Financial Group.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has developed substantial goodwill in its ACCENTURE trademark and trade name, which consist of a coined term. It points out that its ACCENTURE brand was ranked 31st in 2019 Interbrand’s Best Global Brands Report and 21st in the Kantar Millward Brown’s 2020 BrandZ – Top 100 Brand Rankings, and that for the past 19 years, the Complainant has been listed in the Fortune Global 500, and the Complainant’s global CEO has appeared as No.1 on Fortune’s Most Powerful Women (2020). The Complainant submits that it has served as a communications, media and entertainment partner for the Golden State Warriors basketball team, and has been the Official Technology Partner for the RBS 6 Nations Rugby Championship and a global umbrella sponsor of the World Golf Championships. It notes its collaboration with the Louvre Museum to develop new technological programs designed to support the Louvre’s initiatives to spread culture, enhance its image and reach new segments of the public, and its being an official connections partner of the Cannes Lions Festival.

The Complainant states that the disputed domain name is confusingly similar to the ACCENTURE trademark, because it incorporates the trademark entirely in combination with the descriptive terms “fin” and “group”, which create a direct reference to Complainant’s financial or “FinTech” services, so Internet users are likely to be confused as to whether an association exists between the disputed domain name and the Complainant’s financial services business.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the Respondent is not commonly known by it, is not affiliated with the Complainant and has not been licensed by the Complainant to use its ACCENTURE trademark or any domain name incorporating the same trademark, which was first registered 18 years before the registration of the disputed domain name.

The Complainant further states that the Respondent is not carrying out a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent has chosen to use Complainant’s ACCENTURE trademark in its disputed domain name to create a direct affiliation with, or to pass itself off as, the Complainant and its business. The Respondent’s website advertises the personal and business lending services of “Accenture Financial Group,” which services are highly related to, and potentially compete with the Complainant’s financial services. The Complainant adds that the Respondent is using the ACCENTURE trademark and logo on its website to solicit financial investments and the linking of digital wallets to the website, which suggests that the Respondent attempts to trick consumers into sending money to it. The Complainant also notes that following the receipt of the Center’s communication in this proceeding dated February 2, 2021, the Respondent deactivated the website at the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. Its states that in view of the worldwide reputation of the ACCENTURE trademark on the Internet, the Respondent was or should have been aware of this trademark prior to registering the disputed domain name. According to the Complainant, the Respondent misleads for commercial gain Internet users searching for Complainant, by holding itself out as the Complainant or as an entity that is competing with the Complainant, which causes a disruption of the Complainant’s business. The Complainant adds that the Respondent’s current passive holding of the disputed domain name without a legitimate purpose also constitutes bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met by the Complainant to obtain the transfer of the disputed domain name:

(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 in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”

The Respondent has however submitted no Response and has not disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has submitted evidence and has thus established its rights in the ACCENTURE trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.

The relevant part of the disputed domain name consists of the ACCENTURE trademark as its dominant element, followed by the element “fin” and the dictionary word “group”. These additional elements in the disputed domain name do not affect the confusing similarity between the ACCENTURE trademark and the disputed domain name. It has already been held by previous UDRP panels that the addition of descriptive or geographical terms would not prevent a finding of confusing similarity between a domain name and a trademark where the trademark is clearly recognizable in the disputed domain name. See section 1.8 of the WIPO Overview 3.0. Moreover, as submitted by the Complainant, and relevant under the second and third elements of the UDRP, the additional element “fin” refers to Complainant’s financial services, thus increasing the likelihood that Internet users may regard the disputed domain name as related to the Complainant’s financial services.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the ACCENTURE trademark.

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.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that it is not commonly known by it, that there is no relationship between the Parties, and that the Respondent has not been authorized to use the ACCENTURE trademark.

According to the Complainant, the Respondent is not carrying out a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name. Rather, the Respondent uses the ACCENTURE trademark to pass itself off as the Complainant and its business, advertising the services of which services are highly related to, and potentially compete with the Complainant’s financial services. The Complainant has thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not disputed the Complainant’s statements and the evidence submitted by it. The Respondent has linked the disputed domain name to a website promoting the personal and business lending services of an entity under the name “Accenture Financial Group”. The website contains no contact details of this entity or disclaimer for the lack of relationship with the Complainant, but features the copyright notice “Copyright © 2020 Accenture Financial Group. All Rights Reserved”. As submitted by the Complainant, the services promoted on the Respondent’s website are similar to the Complainant’s services and may be competitive to them. In these circumstances, it appears to the Panel as more likely than not that by registering and using the disputed domain name, the Respondent attempts to impersonate the Complainant and mislead Internet users that the entity advertised on the website at the disputed domain name is affiliated to the Complainant. The Panel does not regard such activity as giving rise to rights or legitimate interests in the disputed domain name.

On the basis of the above, the Panel finds that the Complainants’ prima facie case has remained unrebutted, and that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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.”

In the present case, the disputed domain name is confusingly similar to the Complainant’s well-known ACCENTURE trademark and to the name of the Complainant, and is being used to offer financial services (claimed to be a scam) that may compete with the services of the Complainant by an entity whose name is also confusingly similar to the name of the Complainant and to the ACCENTURE trademark. The Respondent’s website contains no disclaimer of the lack of relationship between the Parties and of the lack of endorsement of the website by the Complainant.

In view of the above, the Panel finds as more likely than not that the Respondent was aware of the Complainant and of the ACCENTURE trademark when registering the disputed domain name, and that by registering and using it, the Respondent has engaged in an attempt to pass himself off as the Complainant to attract the Complainant’s current and potential customers for its own commercial benefit. The Respondent has therefore registered and used the disputed domain name 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 name <accenturefingroup.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: March 4, 2021