WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. David Jentz
Case No. D2021-3275
1. The Parties
Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
Respondent is David Jentz, United States.
2. The Domain Name and Registrar
The disputed domain name <accenture-federal.com> (the “Domain Name”) 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 October 2, 2021. On October 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 5, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email to Complainant on October 6, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 10, 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 Respondent of the Complaint, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. On October 26, 2021, the Center received an email from Respondent requesting an extension to the filing period and stating that his office had a positive Covid-19 test, which affected workflows and his ability to generate a response. On October 27, 2021, the Center granted the extension of time until November 12, 2021. The Response was filed with the Center on November 12, 2021.
On November 16, 2021, Complainant submitted a Supplemental Filing.
The Center appointed Robert A. Badgley as the sole panelist in this matter on November 18, 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.
Respondent requested the opportunity to reply to Complainant’s unsolicited Supplemental Filing. The Panel granted Respondent leave to file such a reply. On December 16, 2021, Respondent submitted a timely Supplemental Response.
4. Factual Background
This is a dispute between a major business concern and a former employee. Both Parties have presented numerous factual allegations and arguments which, in the Panel’s view, are not essential to a resolution of this case. The Panel will not lay out and address all the factual allegations and arguments raised by the Parties.
Since 2001, Complainant has used the mark ACCENTURE to identify and distinguish its services, such as management consulting, business process services, supply chain and logistics services, technology services, and outsourcing services. Complainant has offices in more than 50 countries, and is one of the largest private-sector employers in the world.
Complainant holds numerous trademark registrations for ACCENTURE, including United States Patent and Trademark Office (“USPTO”) Reg. No. 3,091,811 (registered May 16, 2006).
Complainant operates a commercial website at the domain name <accenture.com>. Since 2009, Complainant has spent more than USD 700 million in advertising. The ACCENTURE brand has ranked among the top 100 global brands for several years. Complainant also sponsors numerous major sporting events in various countries. There is no serious dispute that the ACCENTURE mark is very well known. ACCENTURE is a coined word, and hence is an inherently distinctive, fanciful mark.
Complainant also operates a business called Accenture Federal Services LLC (“AFS”), one of its several hundred wholly-owned subsidiaries. AFS was set up to serve Complainant’s government clients. In 2012, Complainant announced the creation of AFS, and Complainant registered the Domain Name <accenturefederal.com> as the main site of AFS.
Respondent was employed by AFS from February 2012 to September 2019 as a software engineer. Complainant evidently was unaware of Respondent’s status as a former employee when it filed its Amended Complaint. According to Respondent, he had, at a minimum, “tacit authorization” from his manager at AFS to register certain domain names which might be confused with Complainant’s then-new <accenturefederal.com> domain name. Respondent also states that he and his manager were concerned that, due to the huge bureaucracy within Complainant’s far-flung organization, getting central corporate approval to register the potentially confusing domain names might take too long, and that the delay could result in several such domain names being registered by unaffiliated persons. On May 10, 2012, Respondent registered the Domain Name at issue in this case, namely, <accenture-federal.com>.
The Domain Name, at the time of filing the Complaint, resolved to an inactive website. It currently resolves to what appears to be Complainant’s website. In addition, it appears that the Domain Name has been used to receive errant emails apparently intended for Complainant. Respondent appears to have forwarded such errant emails to Complainant over the years.
In the “Consent to Remedy” section of the Response (Article IV), Respondent states that he “does not consent to the remedy requested by the Complainant,” viz., a transfer of the Domain Name.
5. Parties’ Contentions
Complainant contends that it has proven all three elements required under the Policy for a transfer of the Domain Name.
Those of Respondent’s arguments and assertions that are relevant to a disposition of this dispute will be addressed below in the context of the three elements required under the Policy for a transfer of the Domain Name.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark ACCENTURE through registration and use demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to that mark. The addition of a hyphen and the word “federal” does not overcome the fact that the well-known, fanciful mark ACCENTURE is clearly recognizable within the Domain Name.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent’s arguments about registering the Domain Name back in 2012 with the express or tacit authority of his manager, in order to prevent third parties from registering domain names resembling Complainant’s <accenturefederal.com> domain name for nefarious purposes, is prima facie believable. It is, however, also tantamount to an admission that Respondent’s ownership of the Domain Name was always as an agent for Complainant and never as a legitimate owner in his own right. Any use to which Respondent ever put the Domain Name which was not entirely for the benefit of Complainant would be illegitimate. See, e.g., Ruby’s Diner, Inc. v. Joseph W. Popow, WIPO Case No. D2001-0868 (“an employee or former employee is not a licensee, and thus has no authorization to use a company’s trademark or a confusingly similar variation thereof without permission”).
Respondent was never commonly known by the Domain Name, and has never marketed to the public goods or services in his own right under the name ACCENTURE or ACCENTURE FEDERAL.” It does appear from the record that Respondent, in addition to being computer-savvy, is also a real estate professional in the San Diego, California area. It appears that Respondent has used the Domain Name indirectly to technically support Respondent’s commercial real estate website.
Respondent’s ongoing use of the Domain Name as a limited secondary support for his real estate business website does not vest Respondent with a legitimate interest in the Domain Name. There is nothing legitimate about using the ACCENTURE mark (within the Domain Name) to support Respondent’s entirely separate real estate business, even if that real estate business in itself is a legitimate, bona fide offering of services.
Complainant has established Policy paragraph 4(a)(iii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted 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 the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes, under the Policy and the record presented here, that Respondent has registered and used the Domain Name in bad faith. Respondent clearly had Complainant’s fanciful and famous ACCENTURE mark in mind when registering the Domain Name.
As noted in previous section, Respondent has essentially conceded that his registration of the Domain Name in 2012 was done at the behest of a subsidiary of Complainant and, as such, Respondent himself never had the right to own this Domain Name in his own right and for his own benefit. Moreover, if done on the request of his employer, one would expect the registration details to reflect this fact, i.e., the Domain Name would not be registered in the Respondent’s name (or if for arguments’ sake this was done for claimed expediency, that it would be transferred to the Complainant within a reasonable time thereafter). Again, the ACCENTURE mark is well-known and is a coined word. As such, the Panel can conceive of no good-faith basis upon which Respondent could have registered and used the Domain Name in his own right and for his personal ends.
In all the circumstances, the Panel would have expected Respondent to have consented to the remedy requested by Complainant in this proceeding, i.e., a transfer of the Domain Name to Complainant. It is obvious that the Domain Name rightfully belongs to Complainant, and that Respondent has no legitimate reason to hold onto the Domain Name two years after his employment with Complainant ceased.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <accenture-federal.com> be transferred to Complainant.
Robert A. Badgley
Date: December 21, 2021