WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Domain Privacy, Above.com Domain Privacy

Case No. D2021-2685

1. The Parties

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

The Respondent is Domain Privacy, Above.com Domain Privacy, Australia.

2. The Domain Name and Registrar

The disputed domain name <caccenture.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 August 17, 2021. On August 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 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 September 3, 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 September 7, 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 September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.

The Center appointed Felipe Claro as the sole panelist in this matter on November 26, 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 owns the following US trademark registrations for the ACCENTURE mark and ACCENTURE & Design mark, and variations thereof (“ACCENTURE marks”) covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services:

- ACCENTURE & Design: Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42 - Registration 2,665,373, December 24, 2002
- ACCENTURE & Design: Various goods in Classes 18, 25 and 28 - Registration 2,884,125, September 14, 2004
- ACCENTURE: Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42 - Registration 3,091,811, May 16, 2006
- ACCENTURE & Design: Various goods in Classes 6, 8, 9, 14,16, 18, 20, 21, 24 and 28 - Registration 3,340,780, November 20, 2007
- ACCENTURE & Design: Various services in Classes 35 and 36 - Registration 3,862,419, October 19, 2010

The Complainant enjoys strong worldwide rights in, and recognition of, its ACCENTURE marks. The Complainant has used the ACCENTURE trademark in commerce since 2001.

The disputed domain name was registered on July 26, 2021 and resolves to a pay-per-click (“PPC”) website with links to competitors of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant has developed substantial goodwill in its ACCENTURE name and its ACCENTURE marks, as well as its official domain name, <accenture.com>. The Complainant has relied on the Internet as a forum to promote and disseminate information regarding the various offerings under the ACCENTURE marks including, but not limited to, management consulting, technology services, outsourcing services and software solutions. The Complainant owns and operates its website at <accenture.com>.

The ACCENTURE marks have been abundantly advertised in connection with international media and have been written about in the press. Reputable brand consulting companies in the industry have recognized the ACCENTURE mark as a leading global brand. The ACCENTURE mark has been recognized in Interbrand’s Best Global Brands Reportsince 2002, when it ranked 53rd. The ACCENTURE mark ranked 31st in the 2020 Interbrand’s Best Global Brands Report. The ACCENTURE mark has been recognized by Kantar Millward Brown, a leading market research and brand valuation company, in its annual BrandZ – Top 100 Brand Rankingssince 2006 when it was ranked 58th. In 2020, the ACCENTURE brand ranked 21st. The Complainant has been recognized for its business services and brand recognition. For the past 19 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies. In addition, the Complainant has appeared in various other top rankings by Fortune.

The Complainant supports numerous social development projects worldwide in connection with the ACCENTURE marks.

Millions of sports fans encounter the ACCENTURE marks, as the Complainant has served as a communications, media and entertainment partner for the Golden State Warriors basketball team, providing fan experiences, a mobile app, and education initiatives. And from 2012 to 2017, the Complainant was the Official Technology Partner for the RBS 6 Nations Rugby Championship. The Complainant was a global umbrella sponsor of the World Golf Championships and the title sponsor of the series’ season-opening event, the Accenture Match Play Championship.

The Complainant also has collaborated with various groups on cultural initiatives across the world. For example, it collaborated 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. The Complainant is also an official connections partner of the Cannes Lions Festival.

The Complainant has made submissions regarding the three elements of the Policy (relevant submissions discussed below).

B. Respondent

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

6. Discussion and Findings

In view of the lack of a response filed by the Respondent in line with paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding based on the Complainant’s undisputed representations. In that regard, the Panel makes the following specific findings.

A. Identical or Confusingly Similar

The Complainant owns registrations for the ACCENTURE mark and ACCENTURE & Design mark in more than 140 countries. The Complainant owns more than 1,000 registrations for the marks ACCENTURE, ACCENTURE & Design and many other marks incorporating the ACCENTURE brand for a variety of products and services including its management consulting, technology services and outsourcing services.

The Complainant has offices and operations in more than 200 cities in 51 countries. Since January 2001, the Complainant has extensively and continuously used the mark ACCENTURE in connection with various services and specialties, including management consulting and business process services, which comprises various aspects of business operations such as supply chain and logistics services, as well as technology services and outsourcing services.

The ACCENTURE marks have become distinctive and famous globally and have enjoyed distinctiveness and notoriety since long prior to the date on which the Respondent registered the disputed domain name.

The disputed domain name is almost identical and confusingly similar to the ACCENTURE marks. The only difference in the disputed domain name when compared to the Complainant’s ACCENTURE trademark is the addition of the letter “c” to the beginning of the mark.

The disputed domain name <caccenture.com> was registered nearly 19 years after the Complainant first registered its ACCENTURE mark. The ACCENTURE mark is distinctive and famous. See Accenture Global Services Limited v.ICS Inc. / PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that the Complainant demonstrated that its ACCENTURE mark has been extensively used, is well-known globally, is vested with significant goodwill and carries distinction). The ACCENTURE mark consists of a coined term and, as such, is afforded a wide scope of protection. See Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, supra (finding that the word “accenture” is not a descriptive or generic term but, rather, was coined by the Complainant, so consumers associate this term exclusively with the Complainant and its products and services owing to the international goodwill that the Complainant has developed in the ACCENTURE mark over the years).

The addition of a generic Top-Level Domain (“gTLD”) to the disputed domain name is “completely without legal significance.” See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003- 0696.

Adding random characters or a descriptive term to a trademark in a domain name fails to negate confusing similarity. Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC. / Andy Salimon, WIPO Case No. D2019-2107 (finding the domain name <ar-accenture.com> confusingly similar to the “ACCENTURE trademark”). In the present case, the trademark ACCENTURE is the most distinctive element in the disputed domain name, and the addition of the letter “c” to the beginning of the ACCENTURE trademark does not prevent a finding of confusing similarity with the Complainant’s marks. See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, which states as follows: “[w]here 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. The nature of such additional term(s) may however bear on assessment of the second and third elements.”

Considering the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant’s ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The Complainant’s ACCENTURE mark is a coined term that has become globally famous and has acquired secondary meaning through the Complainant’s substantial, continuous, and exclusive use of the marks in connection with the Complainant’s goods and services.

The Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE marks or any domain names incorporating the ACCENTURE marks. The Respondent is not licensed or otherwise authorized to use the disputed domain name, which constitutes prima facie proof that the Respondent lacks any rights or legitimate interests in the disputed domain name. See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251.

Currently, the registrant of the disputed domain name is listed as a privacy service. The Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the date on which the Respondent registered the disputed domain name. The Respondent has chosen to use the Complainant’s famous ACCENTURE trademark as the dominant part of the disputed domain name to create a false affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate, noncommercial fair use of the disputed domain name.

The Respondent is not using the disputed domain name for any valid purpose at this time, merely PPC links to the Complainant’s competitors are being displayed. Prior UDRP 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 the complainant’s mark. Thus, the Respondent’s use of the disputed domain name for PPC links does not confer on the Respondent any rights of legitimate interests in the disputed domain name.

At one point in time, when trying to access the website “www.caccenture.com”, a warning appeared regarding security threat. The use of a domain name for malicious web attack or malware purposes in no way confers on the Respondent any rights or legitimate interests in the disputed domain name. See Andrey Ternovskiy dba Chatroulette v. Goncharov Aleksei IUrevich, WIPO Case No. D2018-0372 (finding no legitimate interests in the respondent’s registration of the <chatrouletteipad.com> domain when the domain name was found to be used as an exploitation to “spread malware and viruses to Internet users”).

Considering the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Bad faith registration and use of a domain name can be established by a showing of circumstances indicating, inter alia, that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location.

Given the Complainant’s worldwide reputation and global presence of the ACCENTURE marks on the Internet and media, the Respondent was or should have been aware of the ACCENTURE marks long prior to registering the disputed domain name. See Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517 (finding that the Respondent registered the domain name <caesarspalacepoker.com> in bad faith after it knew or should have known about the Complainant’s trademarks); see also Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, supra (finding that it was unlikely that the Respondent was not aware of the Complainant and its ACCENTURE mark at the time the disputed domain name was registered, as the Complainant demonstrated that its mark is well-known globally and is vested with significant goodwill).

From the above circumstances, it appears that the Respondent has chosen the disputed domain name to take advantage of the reputation and goodwill associated with the Complainant’s ACCENTURE Marks, to cause confusion amongst Internet users and the Complainant’s customers, to benefit from misdirected Internet traffic, to potentially use the disputed domain name for malicious purposes, and to prevent the Complainant from owning the disputed domain name.

The Respondent’s use of the disputed domain name for PPC links or for potentially malicious website are considered material elements of bad faith. Additionally, the use of the disputed domain name for potential distribution of malware or other security risks is evidence of bad faith use and registration of a domain name. See Meteosolutions S.r.l. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-1288. Given the well-known status of the Complainant’s ACCENTURE marks and the Complainant’s ownership of the domain name <accenture.com>, there is no reason for the Respondent to have registered the disputed domain name other than to take unjustifiable advantage of the reputation and goodwill of the Complainant’s marks. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith”).

Considering the above, the Panel finds that the Respondent registered and is using 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 <caccenture.com> be transferred to the Complainant.

Felipe Claro
Sole Panelist
Date: December 10, 2021