WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Kali
Case No. D2019-1065
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 Kali, United States.
2. The Domain Name and Registrar
The disputed domain name <in-accenture.com> is registered with BigRock Solutions Pvt Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2019. On May 9, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2019.
The Center appointed Jon Lang as the sole panelist in this matter on June 17, 2019. 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 management consulting, technology services and outsourcing services under the name ACCENTURE and is the owner of the ACCENTURE Mark and company name, and other marks fully incorporating the ACCENTURE Mark. The Complainant began using the ACCENTURE Mark on January 1, 2001 and has continued to use it since. It has a number of US registrations for ACCENTURE, for instance, US trademark Reg. No. 3,091,811 with a Registration date of May 16, 2006 and also owns registrations for the ACCENTURE Mark and ACCENTURE & Design mark, (together the ACCENTURE Marks) in more than 140 other countries including India, the country in which the Registrar appears to be located and the disputed domain name appears to be hosted. The Complainant has offices and operations in more than 200 cities in 56 countries and has developed substantial goodwill in its ACCENTURE name and ACCENTURE Marks, and also in its official domain name, <accenture.com>, (registered on August 30, 2000).
The disputed domain name , <in-accenture.com>, (hereafter the Domain Name), was registered on April 10, 2019.
Not much is known about the Respondent. It has not taken part in these proceedings.
The ACCENTURE Marks have been advertised in various media and written about in the press. Annual advertising expenditure worldwide, since 2009, runs to tens of millions of USD annually. The Complainant has been the recipient of a number of awards and the ACCENTURE Mark has been recognized as a leading global brand.
5. Parties’ Contentions
The following is a summary of the main assertions of the Complainant.
The Domain Name is confusingly similar to the ACCENTURE Marks
The only difference between the Domain Name and ACCENTURE Mark is that the Domain Name adds the letters “i” and “n” followed by a hyphen, before ACCENTURE. The addition of “in” suggests a reference to the two-letter country code for India. As mentioned earlier, India appears to be the location of the Registrar, and the “.in” name servers for the Domain Name listed in the WhoIs information, suggests that the Domain Name is hosted in India.
The ACCENTURE Mark is distinctive and famous. It is a coined term and should be afforded wide protection, particularly in view of the ubiquitous nature of the brand.
The generic Top-Level Domain (gTLD) “.com” is without legal significance.
Adding random characters or a descriptive term to a trademark in a domain name fails to negate confusing similarity.
The Domain Name is virtually identical to and is confusingly similar to the ACCENTURE Mark, as well as the Complainant’s <accenture.com> domain name, and is likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Name.
In assessing likelihood of confusion, points of similarity should be weighed more heavily than points of difference.
The Respondent’s addition of the letters “i” and “n” and a hyphen, does nothing to reduce the Domain Name’s confusing similarity to the Complainant’s ACCENTURE Marks, and Internet users are very likely to be confused as to whether an association exists between the Domain Name and the Complainant.
The Respondent has no legitimate interests in the Domain Name
The Complainant’s ACCENTURE Mark is not a generic or descriptive term in which the Respondent might have an interest.
The Complainant’s ACCENTURE Marks are globally famous and have 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 been permitted to use the Complainant’s ACCENTURE Marks or any domain names incorporating the ACCENTURE Marks.
It is believed that the Respondent is not commonly known by the Domain Name. The Domain Name WhoIs
information identifies the Respondent as “Kali”.
It appears that the Respondent has chosen to use the Complainant’s famous ACCENTURE Mark as its Domain Name, to seek to create an impression of affiliation with the Complainant and its business. This is not legitimate, noncommercial fair use of the Domain Name. In fact, the Respondent is not using the Domain Name for any purpose at present - the Domain Name resolves to a page that simply contains an Internet browser error message stating “[t]his site can’t be reached.”
An inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Respondent’s failure to use the Domain Names to provide a bona fide offering of goods and services (or make demonstrable preparations to do so), supports a conclusion that it does not have a right or legitimate interest in the Domain Name,
The Respondent registered the Domain Name some 18 years after the Complainant began using its ACCENTURE Mark in commerce and some 19 years after the Complainant registered the domain name <accenture.com>.
It appears that the Respondent has chosen the Domain Name to trade off of the reputation and goodwill associated with the Complainant’s ACCENTURE Marks, to cause confusion amongst Internet users and the Complainant’s customers, and to prevent the Complainant from owning the Domain Name.
The Respondent registered and is using the Domain Name in bad faith
The Respondent had constructive notice that the ACCENTURE Mark is a registered trademark in the United States and many other jurisdictions worldwide.
Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE Marks on the Internet, the Respondent was, or should have been aware of the ACCENTURE Marks prior to registering the Domain Name.
The Respondent has not, since registration, used the Domain Name for any legitimate purpose. The passive or inactive holding of a domain name that incorporates registered trademarks without a legitimate Internet purpose, may indicate that the domain name is being used in bad faith under the Policy.
A high degree of renown attaches to the ACCENTURE Mark as a result of its extensive use and promotion in relation to the Complainant’s world-renowned business management consulting, technology services and outsourcing services business, such that it is implausible for the Respondent to have registered the Domain Name for a purpose other than to trade off of the reputation and goodwill of the ACCENTURE Marks.
The Respondent’s failure to use the Domain Name is evidence of bad faith registration and use.
The Respondent has established a pattern of registering domain names containing third-party trademarks in order to prevent the owners of such trademarks from reflecting their marks in corresponding domain names, and to profit from misdirected Internet users in direct violation of the Policy.
The Complainant refers to and exhibits to its Complaint, a reverse WhoIs report which shows that the Respondent has registered at least three other domain names containing third-party trademarks, including <incapgemini.com> which contains the registered trademark, CAPGEMINI. Capgemini SE is a French multinational corporation that provides consulting, technology, professional and outsourcing services, and is one of the Complainant’s top competitors in the global consulting services market. The Respondent is also the registrant of <cigniti.com> and <solace-info.com> which contain third party trademarks.
Registration of a Domain Name in an attempt to appear associated or affiliated with another, constitutes bad-faith use and registration.
The Complainant believes that the Respondent registered and is using the Domain Name in bad faith to intentionally mislead and confuse the public into believing that the Respondent is associated or affiliated with Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in its ACCENTURE Mark (and ACCENTURE Marks).
Ignoring the gTLD “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the ACCENTURE Mark but adds the letters “i” and “n” before it, and also a “-“ to create <in-accenture.com>.
Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name to determine whether the trademark is recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms would not prevent confusing similarity. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The ACCENTURE Mark is clearly recognizable within the Domain Name. The addition of the prefix “in-” does not prevent the Domain Name from being confusingly similar to the ACCENTURE Mark.
The Panel finds that the Domain Name is confusingly similar to the ACCENTURE Mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. There appears to be no use of the Domain Name at all. Moreover, given that any noncommercial or fair use must be without intent to mislead, even if the Respondent could point to some use, it is unlikely it would be regarded as legitimate or fair, given that the Domain Name is inherently confusing and likely to create a false impression of association with the Complainant.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. As already noted, no use is being made of the Domain Name but in any event, given the likelihood of a false impression being created by any use of the Domain Name, it is unlikely that an offering of goods or services would be treated as bona fide. See WIPO Overview 3.0, section 2.5.1.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a formal Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
Sometimes, particularly in cases where nothing at all is done with a domain name, it is not possible for a complainant to demonstrate literal or verbatim application of one of the paragraph 4(b) scenarios. However, given that such scenarios are non-exclusive and simply illustrative, this matters not as long as there is evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to a complainant’s trademark. Such behavior would satisfy the general principle underlying the bad faith requirement of the Policy.
The Respondent appears to have registered other domain names incorporating or being similar to trademarks of others. It is not clear though that the Respondent’s actual intention was to prevent the Complainant registering the Domain Name. Nor is it clear that the Respondent’s primary intention was to disrupt the Complainant’s business. And given that no use is being made of the Domain Name, it cannot be said that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion etc. But it is unlikely that the Respondent would not have known of the Complainant and its marks at the time of registration of the Domain Name. This is supported by the other registrations of the Respondent, which incorporate or are similar to trademarks of others in a similar field of activity as that of the Complainant.
The Domain Name incorporates entirely the ACCENTURE Mark, and the addition of the prefix “in-“ appears to be an attempt to suggest a country specific focus for any future website or other activity associated with the Domain Name. Any use of the Domain Name would inevitably create a risk of misleading Internet users into believing that the Domain Name or any website to which it resolved or any associated email, was associated with or emanated from the Complainant or, perhaps more specifically, the Complainant’s business in India.
The Domain Name is clearly confusingly similar and inherently misleading. It incorporates a famous mark of another and is not being used at all, let alone for any legitimate purpose. No legitimate use can be contemplated without permission of the Complainant, and the Domain Name has the hallmarks of bad faith registration and use.
The fact that the Respondent is (presently) passively holding the Domain Name does not prevent a finding of bad faith registration and use. Indeed, a passive holding of a domain name can support a finding of bad faith. UDRP Panels must examine all the circumstances of the case.
WIPO Overview 3.0, section 3.3 states:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
The Domain Name is confusingly similar to the famous ACCENTURE Mark which is used extensively in the course of trade. No Response was filed or evidence of actual or contemplated good faith use provided, and none would seem plausible without permission of the Complainant. The passive holding of the Domain Name in the circumstances of this Complaint, supports a finding of bad faith.
The Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
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 <in-accenture.com> be transferred to the Complainant.
Date: June 28, 2019