The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“US”).
The Respondent is 蒋黎 (Leed Johnny), China.
The disputed domain name <myrequestsaccenture.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2020. On February 10, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 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 February 19, 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 in English on February 21, 2020.
On February 19, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on February 21, 2020. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on February 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.
The Center appointed Jonathan Agmon as the sole panelist in this matter on April 3, 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 is in the business of offering various services, including management consulting, technology services and outsourcing services, which comprises various aspects of business operations such as supply chain and logistics services, as well as technology services and outsourcing services. The Complainant has been using the ACCENTURE mark since as early as on January 1, 2001. The Complainant owns numerous trademark registrations for the ACCENTURE mark worldwide, including but not limited to the following in US:
- ACCENTURE (Registration No. 3,091,811) registered on May 16, 2006;
- ACCENTURE (Registration No. 2,665,373) registered on December 24, 2002;
- ACCENTURE (Registration No. 3,340,780) registered on November 20, 2007;
- ACCENTURE (Registration No. 2,884,125) registered on September 14, 2004; and
- ACCENTURE (Registration No. 3,862,419) registered on October 19, 2010.
The disputed domain name was registered on January 23, 2020 and resolves to an active website displaying pay-per-click (PPC) links, which offer competing services to those offered by the Complainant.
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s registered ACCENTURE mark as the disputed domain name wholly incorporate the ACCENTURE mark with a descriptive term “myrequests” and generic Top-Level Domain (“gTLD”) “.com” that are insufficient to avoid confusing similarity.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith as it redirects Internet users to commercial websites through various sponsored click-through links. In addition, the disputed domain name may be used as a possible phishing scam or fraudulent scheme because the Respondent has connected a mail server to the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese characters;
(ii) The disputed domain name incorporates an English term “myrequests” and resolves to a website in English;
(iii) The Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language; and
(iv) The Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain name <myrequestsaccenture.com> integrates the Complainant’s ACCENTURE mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345).
Further, it is well established that the addition of a descriptive term “myrequests” or a gTLD “.com” does not avoid confusing similarity between the Complainant’s trademark and the disputed domain name. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.11.1.)
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns trademark registrations long before the disputed domain name was registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138).
The Complainant also provided evidence that the Respondent is not commonly known by the disputed domain name (see WIPO Overview 3.0, section 2.3).
Furthermore, the Complainant provided evidence showing that the Respondent has been using the disputed domain name to host a parked page comprising PPC links, which offer competing services to those offered by the Complainant. Such use has been consistently held not to represent a bona fide offering of goods and services (see WIPO Overview 3.0, section 2.9).
Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain name which is sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant must also show that the Respondent registered and is using the disputed domain name in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the ACCENTURE mark since the year 2002. In view of the evidence filed by the Complainant, and the global widespread use of the ACCENTURE mark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name. Therefore, it is unlikely that the Respondent did not know of the Complainant’s mark prior to registration of the disputed domain name (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Furthermore, the disputed domain name incorporates the Complainant’s trademark in its entirety with the addition of the descriptive term “myrequests” and a gTLD “.com” which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
The Complainant submitted evidence that it owned a domain name <myrequests.accenture.com> that was the Complainant’s internal web portal used for its employees to submit requests and the disputed domain name appears to mimic and create a direct reference to that domain name. Given the distinctive nature of the Complainant’s ACCENTURE mark, and given the evidence provided by the Complainant, the Panel is of the view that the Respondent’s use of the disputed domain name to redirect unsuspecting Internet users to commercial websites through various sponsored PPC links offering competing services and comprising words associated with the field of practice of the Complainant, constitutes bad faith and is indicative of the Respondent’s registration and use of the disputed domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s ACCENTURE mark.
The Complainant also submitted evidence that the Respondent has connected the disputed domain name to a mail server that enables the disputed domain name to send and receive emails. In the particular circumstances of the present case, where the Complainant owns a domain name which served as a web portal for its employees to submit internal requests, the Respondent’s behavior is suggestive of the Respondent’s intent to use the disputed domain name for malicious purposes such as phishing or fraud (see Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
In addition, given the circumstances of this case and the distinctive nature of the ACCENTURE mark, and therefore on the balance, and based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant’s marks, the confusing similarity between the disputed domain name and the Complainant’s marks, the Respondent’s use of the disputed domain name, and the fact that is no plausible good faith use the Respondent can put the disputed domain name to, the fact that no Response was submitted by the Respondent, the Panel draws the inference that the disputed domain name was registered and is being used 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 disputed domain name <myrequestsaccenture.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: April 14, 2020