WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Domain Privacy, Above.com Domain Privacy
Case No. D2021-0481
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 Domain Privacy, Above.com Domain Privacy, Australia.
2. The Domain Name and Registrar
The disputed domain name <myidportaaccenture.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 17, 2021, 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 February 21, 2021 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 February 25, 2021.
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 February 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 21, 2021.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on April 1, 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.
4. Factual Background
The Complainant operates in 51 countries worldwide, providing a broad range of services and solutions in strategy, consulting, digital, technology and operations, under the trademark ACCENTURE. The Complainant is using its ACCENTURE trademark since 2001.
The Complainant owns over 1,000 registrations for the trademarks ACCENTURE and ACCENTURE & Design, in more than 140 countries worldwide. Among these, the Complainant is the owner of United States trademark registration No. 3,091,811, filed on October 6, 2000 and registered on May 16, 2006, for various goods and services in classes 9, 16, 35, 36, 37, 41, and 42.
The Complainant has invested substantial amounts in the promotion of its ACCENTURE trademarks, which have been included among the “Best Global Brands” in several publications, since 2002. The Complainant has also sponsored and collaborated with various groups on renowned cultural initiatives and sport events, such as the Louvre Museum, and the RBS 6 Nations Rugby Championship, to name only a few.
The disputed domain name was registered on January 21, 2021. The disputed domain name is used to access webpages that differ depending on the applicable Internet browser. In some instances, the disputed domain name redirects to a page containing a security warning, in others, it provides access to a website displaying pay-per-click links.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the ACCENTURE trademark. Adding random characters or a descriptive term to a trademark in a domain name fails to negate confusing similarity. In the case at issue, the trademark ACCENTURE is the most distinctive element of the disputed domain name. The terms “my”, “id”, and “porta” (which the Complainant considers as a misspelled or typo squatted version of the term “portal”) are descriptive, yet also appear to be an attempt to refer to the Complainant’s own internal “myID Portal” platform. The addition of these descriptive terms to the Complainant’s trademark does not prevent a finding of confusing similarity, and the reference to the Complainant’s company portal increases the similarity of the disputed domain name with the Complainant’s ACCENTURE mark.
The Complainant further contends that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant, nor has it been licensed or permitted to use the Complainant’s trademark on any domain name. To the best of the Complainant’s knowledge and belief, the Respondent is not commonly known by the disputed domain name. The Respondent is not using the disputed domain name for a valid purpose. Depending on the Internet browser, the disputed domain name redirects to a webpage containing a security warning, to a website displaying pay-per-click links, or to some other form of suspicious website. These uses of the disputed domain name do not qualify as a bona fide offering of goods and services and the Respondent is not making a legitimate, noncommercial fair use of the disputed domain name without intent for commercial gain. According to the Complainant, it is clear that the Respondent has chosen the disputed domain name to trade off the reputation and goodwill associated with the Complainant’s ACCENTURE trademark in order to benefit from misdirected Internet traffic.
In respect of the registration and use of the disputed domain name in bad faith, the Complainant maintains that given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE marks long before the registration of the disputed domain name. The Respondent’s use of the disputed domain name to redirect Internet users to commercial websites through various sponsored click-through links, constitutes bad faith and indicates that the Respondent is using the disputed domain name with the intent to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the ACCENTURE mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Additionally, the use of the disputed domain name for the distribution of malware or other security risks is clear evidence of bad faith use and registration of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns various registrations for the trademark ACCENTURE. The disputed domain name incorporates the Complainant’s trademark in its entirety, preceded by the wording “myidporta”.
It is generally recognized that “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The trademark ACCENTURE is fully recognizable within the disputed domain name. In the Panel’s view, the addition of “myidporta” to the disputed domain name cannot prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.
Therefore, the Panel is satisfied that the first condition under the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant states that the Respondent is neither affiliated with, nor has it been licensed or permitted to use, the Complainant’s ACCENTURE mark or any domain names incorporating the ACCENTURE mark. Furthermore, the Complainant maintains that the Respondent is not commonly known by the disputed domain name.
At the time of the filing of the Complaint, the disputed domain name resolved to a webpage containing a security warning, or to a page containing pay-per-click links, depending on the Internet browser used to access the website at “www.myidportaaccenture.com”. Both these uses do not amount to a bona fide offering of goods or services, or to a legitimate noncommercial or fair use of the disputed domain name, within the meaning of paragraphs 4(c)(i) and (iii) of the Policy.
With respect to the webpage containing a security warning, from the evidence provided by the Complainant, it appears that when one enters “www.myidportalaccenture.com” in a browser a pop up comes out requiring the user to install a “Security Search extension” from the Chrome store and subsequently a VPN app to “access the content, protect and speed up the connection”. It is not clear whether said downloads install any kind of virus on the computer of the Internet user, but it is likely that some malicious purpose is behind these requests.
With respect to the pay-per-click links listed on the relevant website, the Panel notes that the disputed domain name leads to a parking page displaying links automatically generated by Sedo. The following wording appears at the bottom of the page: “This webpage was generated by the domain owner using Sedo Domain Parking. Disclaimer: Sedo maintains no relationship with third party advertisers. Reference to any specific service or trade mark is not controlled by Sedo nor does it constitute or imply its association, endorsement or recommendation”. According to section 2.8 of the WIPO Overview 3.0, “panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In the instant case, given the distinctive character and reputation of the ACCENTURE trademark and the fact that the Respondent is presumably earning revenue each time an Internet user clicks on one of those links, the Panel is of the opinion that the Respondent is taking an unfair advantage from the reputation and goodwill of the Complainant’s ACCENTURE trademark.
For all these reasons, and in the absence of any counter-argument from the Respondent, the Panel is satisfied that also the second condition under the Policy is met.
C. Registered and Used in Bad Faith
The Panel is convinced that the Complainant and its trademarks are well-known. Previous UDRP panels have found that the Complainant’s trademark ACCENTURE enjoys reputation (see, among others, Accenture Global Services Limited v. Yongkun Wang, W.KING / 王永坤, WIPO Case No. D2017-2324; Accenture Global Services Limited v. Super Privacy Service LTD c/o Dynadot / Lisa Wong, WIPO Case No. D2020-1292; Accenture Global Services Limited v. Mark Henry, WIPO Case No. D2020-1691, etc. Therefore, the Panel finds it highly likely that the Respondent had actual knowledge of the Complainant’s business and marks when it registered the disputed domain name.
Furthermore, the Complainant’s trademark is a coined word, which the Respondent cannot have selected to register as part of its domain name by mere coincidence. In addition, the Complainant maintains that the term “porta” could be a misspelling of “portal”. The Panel agrees and finds that Internet users could understand this term as “portal” and therefore the wording “myidporta(l)” as referencing the Complainant’s portal. As such, the addition of the wording “myidporta” to the trademark ACCENTURE increases the risk of confusion with the Complainant’s mark, and points to prior knowledge of and an intent to capitalize on the Complainant’s mark.
The disputed domain name is being used to access a website containing a security warning requiring the user to install programs and apps that could generate a security threat to the user’s computer, or a website containing pay-per-click links from which the Internet user probably derives and undue profit. Therefore, the Respondent is capitalizing on the reputation and goodwill of the Complainant and its trademark to generate revenue from each misdirected user or for some other malicious intent. In both cases, such use does not amount to a good faith use of the disputed domain name.
In consideration of the foregoing, the Panel is satisfied that also the third and last condition under the Policy is met.
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 <myidportaaccenture.com> be transferred to the Complainant.
Date: April 14, 2021