The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Lowe, United States.
The disputed domain name <accenture-limited.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2019. On January 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 2, 2020, 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 January 3, 2020 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 January 6, 2020.
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 January 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 30, 2020.
The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on February 12, 2020. 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.
The Complainant provides a broad range of management consulting, technology services and outsourcing services under the name “Accenture” worldwide. It began using the name and trademark ACCENTURE on January 1, 2001. The trademark ACCENTURE has been recognized as a leading global brand.
The Complainant is the owner of various registrations worldwide for the trademark ACCENTURE, including United States trademark registration number 3,091,811 registered on May 16, 2006 in relation to goods and services of classes 9, 16, 35, 36, 37, 41 and 42.
The Complainant owns the domain name <accenture.com> which was registered on August 29, 2000. The Complainant operates a website at this address in connection with its products and services.
The Respondent registered the disputed domain name on November 18, 2019.
The disputed domain name redirected to the Complainant’s homepage “www.accenture.com”.
The Complainant sent an email message on December 3, 2019 to the Respondent through the privacy proxy email address provided in the WhoIs details. The Complainant asked the Respondent to explain the registration of the disputed domain name and to name the Accenture’s employees authorizing the redirection.
The Respondent did not reply.
On the date of the present decision, the disputed domain name if visited with the “www.” resolves to a website featuring sponsored links. If visited without the “www.” the disputed domain name redirects to the Complainant’s homepage.
The Complainant alleges that the disputed domain name is partly identical and confusingly similar to its famous ACCENTURE trademark and that the adjunction of the generic term “limited” does nothing to reduce its confusing similarity with the ACCENTURE trademark.
Further, the Complainant argues that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the ACCENTURE mark or any domain names incorporating ACCENTURE. The Complainant also claims that the Respondent is not commonly known by the disputed domain name.
According to the Complainant, it is clear that the choice of the famous ACCENTURE trademark aims at creating a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of the Policy.
In addition, the Complainant alleges that given its worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, the Respondent was or should have been aware of the ACCENTURE trademarks before registering the disputed domain name.
The Complainant alleges that the redirection to its own website constitutes passive holding of the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:
(i) the domain name registered by the respondent 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 domain name; and
(iii) the domain name registered by the respondent has been registered and is being used in bad faith.
The Complainant owns various trademark registrations for the mark ACCENTURE.
The disputed domain name <accenture-limited.com> reproduces the Complainant’s trademark in its entirety with no alteration and combines this trademark with the descriptive term “limited”.
As a rule, UDPR Panels consider that the addition of a descriptive term does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
In the present case, the trademark ACCENTURE is clearly recognizable in the disputed domain name. The mere addition of the descriptive term “limited” does not change the overall impression produced by the disputed domain name and is not sufficient to prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark. The Panel further finds that it could be understood as a reference to the legal form of the Complainant.
UDRP panels also accept that a generic Top-Level Domain (“gTLD”), such as “.com”, should be disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see section 1.11 of the WIPO Overview 3.0).
The Complainant has thus satisfied the condition set forth in paragraph 4(a)(i) of the Policy.
Based on the information submitted by the Complainant, the Respondent does not appear to have rights or legitimate interests in respect of the disputed domain name, nor has the Complainant granted to the Respondent an authorization to use the disputed domain name. Moreover, there is no evidence indicating that the Respondent is commonly known by the disputed domain name or the name “Accenture”.
The Respondent did not respond to the email of the Complainant. Neither did he file a response to the Complaint. The Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and that the Respondent’s silence corroborates such prima facie case.
Moreover, the redirection to the Complainant’s website, or alternatively to a page offering sponsored links, supports the apparent lack of rights or legitimate interests of the Respondent in the disputed domain name (See Carrefour v. WhoisGuard, Inc. / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533 and Woolworths Limited v. DomainAdminkPrivacyProtect.org / Smvs Consultancy Private Limited, WIPO Case No. D2010-1046).
Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.
Given the well-known character of the ACCENTURE trademark, the Panel accepts that the Respondent most probably knew of the Complainant’s trademark when it registered the disputed domain name.
There is no indication that the Respondent made any active use of the disputed domain name since its registration in November 18, 2019. The domain was simply used to redirect to the Complainant’s own website or to a page with sponsored links.
In certain circumstances, panelists have held that passive holding of a domain name could amount to use in bad faith. 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 (section 3.3 of WIPO Overview 3.0).
In the case at hand, the three first factors are present: the trademark ACCENTURE is well-known, the Respondent failed to submit a Response or to allege any actual or contemplated use, and the Respondent did not provide accurate contact details. Indeed, the DHL shipment of the complaint could not be delivered to the Respondent.
Furthermore, on the date of the decision, the Respondent is using the disputed domain name in connection with a website featuring sponsored links if visited with “www.”. The Panelist made this observation by visiting the website linked to the disputed domain name. It is commonly admitted that panelists may undertake limited factual research into matters of public record in order to find information useful to assessing the case (section 4.8 of the WIPO Overview 3.0).
This suggests, in the Panel’s opinion, an intention on the part of the Respondent to exploit and profit from the Complainant’s trademark, by attempting to generate financial gains by means of “click through” revenues. Such conduct constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy (see F. Hoffmann-La Roche AG v. James Lee, WIPO Case No. D2009-1199; Scania CV AB v. Michael Montrief, WIPO Case No. D2009-1149; Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, supra; and AllianceBernstein LP v. Texas International Property Associates, WIPO Case No. D2008-1230).
According to the above, the Panel finds that the disputed domain name was registered and used in bad faith, and that the Complainant has satisfied the condition set out in paragraph 4(a)(iii) of the Policy.
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 <accenture-limited.com> be transferred to the Complainant.
Anne-Virginie La Spada
Sole Panelist
Date: February 26, 2020