WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Basikta James

Case No. D2020-2955

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Basikta James, United States.

2. The Domain Name and Registrar

The disputed domain name <eu-accenture.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2020. On November 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 9, 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 November 10, 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 November 15, 2020.

On November 13, 2020, the Respondent sent an informal communication to which the Center acknowledged receipt.

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 sent notification of the Complaint to the Respondent, and the proceedings commenced on December 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 24, 2020. The Respondent did not submit any response. Accordingly, the Center sent notification of the Respondent’s default on January 14, 2021.

The Center appointed Petra Pecar as the sole panelist in this matter on January 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.

4. Factual Background

The Complainant is Accenture Global Services Limited, a company based in Ireland. Accenture Global Services Limited provides a wide range of services and solutions in strategy, consulting, technology and operations worldwide. The Complainant along with its affiliates, own a number of trademarks including the trademark ACCENTURE which has been used by the Complainant since 2001.

The Complainant owns inter alia the following United States trademark registrations:

ACCENTURE, Registration Number 3091811, registered on May 16, 2006;
ACCENTURE (& Design), Registration Number 2665373, registered on December 24, 2002;
ACCENTURE (& Design), Registration Number 3340780, November 20, 2007;
ACCENTURE (& Design), Registration Number 2884125, September 14, 2004;
ACCENTURE (& Design), Registration Number 3862419, October 19, 2010.

The Complainant also registered the domain name <accenture.com> on August 29, 2000.

The disputed domain name was registered on October 29, 2020 through a proxy (privacy shield) service. According to evidence provided by the Complainant, the disputed domain name <eu-accenture.com> at the time of filing of the Complaint used to resolve to a web page with sponsored links (pay-per-clicks or “PPC”) referring to the Complainant’s business. The Complainant has also provided evidence that mail servers are configured on the disputed domain name. The Respondent is an individual located in the United States.

5. Parties’ Contentions

A. Complainant

The Complainant is an international business service company that provides a wide range of services covering consulting, solutions in strategy, digital and technology operations, and it is the owner of numerous ACCENTURE trademarks in many countries all over the world.

According to the Complainant, the ACCENTURE trademark has been used in commerce since 2001. The first US trademark registration for ACCENTURE was filed on October 6, 2000, and the first US mark was registered in 2002. The Complainant owns a portfolio of more than 1.000 registrations for the ACCENTURE trademark, all of which predate the registration of the disputed domain name. In support of its trademark rights, the Complainant refers to Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted, WIPO Case No. D2013-2099 in which the panel found that the Complainant has rights in the mark ACCENTURE. According to the Complainant, the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights as it directly incorporates its registered trademarks ACCENTURE. As the Complainant submits its ACCENTURE trademarks are well-known throughout the world in connection with a range of services, the Complainant argues that it would be inconceivable that the Respondent did not have knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name.

The Complainant submitted evidence of awards and rankings in connection with the trademark ACCENTURE, indicating that the same has been recognized on several occasions as a leading brand by several different leading market research and brand valuation companies. Moreover, the Complainant has submitted evidence regarding several social development projects in connection with the ACCENTURE trademark, including the program Skill To Succeed, sponsorship of World Golf Championships, collaboration with the Louvre Museum and sponsorship for the Rheingau Musik Festival in Germany.

In support of the argument that its trademarks are well-known, the Complainant refers to the case Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org, WIPO Case No. D2013-2098 in which the panel found that that the ACCENTURE mark has been extensively used, including on the Internet, and can in fact be considered as well-known within the relevant Internet community. In the same decision, the panel pointed out that the word “accenture” is not a descriptive or generic term, but rather a term coined by the Complainant, so consumers associate this term exclusively with the Complainant and its services owing to the international goodwill that the Complainant has developed in the ACCENTURE trademark over the years. According to the Complainant, given the well-known status of the ACCENTURE trademark, there is no reason for the Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the Complainant’s trademarks.

According to the Complainant, the disputed domain name is confusingly similar to the Complainant’s trademark ACCENTURE as it includes this trademark in its entirety, preceded only by a hyphen and the letters/geographic abbreviation “EU” (presumably in reference to the European Union). The generic Top-Level Domain (“gTLD”) “.com” does not influence the overall impression and is irrelevant for the assessment. In support of this, the Complainant refers to the case 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, in which the panel found that the respondent’s addition of a gTLD such as “.com” to domain names is insufficient to distinguish the respondent’s domain names from the complainant’s mark. As regards the geographic abbreviation “EU” included within the disputed domain name, the Complainant finds that such a geographic term in the respective domain name not only does not prevent a finding of confusing similarity, but enhances it. Such findings were confirmed in decisions by numerous prior UDRP panels such as, Accenture Global Services Limited v. Kimberly Moreland, WIPO Case No. D2017-2189; Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026; Toyota Motor Sales, U.S.A., Inc. v. James Olp, WIPO Case No. D2017-1297; Accenture Global Services Limited v. Whois Privacy14 Protection Service, Inc./Robert Green, WIPO Case No. D2013-2100. In Accenture Global Services Limited v. Whois Privacy Protection Service, Inc./Robert Green, WIPO Case No. D2013-2100, the panel found that the domain name <accenture-uk.com> is confusingly similar to the Complainant’s ACCENTURE mark since the addition of the geographic term “UK” is purely descriptive and does not distinguish the domain name from the trademark. Moreover, the panel found that the respondent’s addition of a hyphen and a geographic abbreviation to the famous ACCENTURE trademark does nothing to reduce the confusing similarity of the domain name with the Complainant’s ACCENTURE Marks. As such, Internet users are very likely to be confused as to whether an association exists between the domain name and the Complainant.

Also, in Accenture Global Services Limited v. Kimberly Moreland, WIPO Case No. D2017-2189, the panel found that the domain name <accenture-us.com> is confusingly similar to the Complainant’s trademark, stating that the disputed domain name differs only as to the addition of a hyphen followed by the descriptive abbreviation us, which can be likely understood as an abbreviation for a geographic location.

In respect to the lack of legitimate interests, the Complainant contends that 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. In support of the lack of legitimate interest, the Complainant refers to case CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251, where the panel confirmed that the lack of authorization constitutes prima facie proof of lack of legitimate interests for use of the disputed domain name.

The Complainant argues that the Respondent has registered the disputed domain name via a privacy proxy service in order to mask its identity and is not commonly known by the domain name, nor was it known as such prior the registration of the disputed domain name. Further, the <eu-accenture.com> domain name resolves to a website that promotes other sponsored click through links and websites in order to trade on the value of the Complainant’s famous trademark and to create a direct affiliation with the Complainant. By doing so, the Respondent is not making any legitimate, noncommercial or fair use of the disputed domain name. The Complainant quotes Maker Studios, Inc. v. ORM LTD / Contact Privacy Inc. Customer 0137258808, WIPO Case No. D2014-0918 in which the panel found that there are no rights or legitimate interest of the respondent in a disputed domain name that resolves to a parking page that provides sponsored links, or rotates to sponsored links, which likely generates income to the respondent from misdirected traffic from the trademark in which the complainant has rights. Finally, the Complainant concludes that such use of the disputed domain name as a portal to third-parties’ websites does not constitute a bona fide offering of goods and services.

The Complainant also argues that the disputed domain name was registered and is being used in bad faith. The Respondent clearly sought to register the disputed domain name because of its association with the Complainant and hoped to capitalize on the Complainant’s reputation. According to the Complainant, the trademark ACCENTURE is well-known and enjoys a high reputation throughout the world, which the Complainant supports with evidence of awards and rankings. Due to the worldwide reputation and the ubiquitous presence of the ACCENTURE trademarks on the Internet, it is highly likely that the Respondent was aware of the ACCENTURE trademarks long before registering the disputed domain name. In this regard, the Complainant quotes Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 in which the panel found that the respondent registered the domainname in bad faith after it knew or should have known aboutthe complainant’s trademarks. Furthermore, the Complainant refers to the case Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098, where the panel found that it was unlikely that the respondent was not aware of the Complainant and its ACCENTURE trademark 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. Additionally, according the Complainant, the Respondent’s use of the disputed domain name to redirect Internet users to commercial websites through various sponsored click-through links constitutes bad faith and indicates that the Respondent registered and is using the disputed domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s ACCENTURE mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. To support these claims the Complainant refers to the case McDonald’s Corporation v. ZusCom, WIPO Case No. D2007-1353.

The Complainant contends that the Respondent has configured a mail server on the disputed domain name. Thus, the ability to send and receive emails from the disputed domain name suggests that the Respondent may intend to use the disputed domain name for malicious purposes, such as phishing or fraud. Such findings were confirmed within the case Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533 where the panel found that such activities present a risk that the respondents are engaged in a phishing scheme. Finally, the Complainant supports its claims referring to the case Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, where the panel found that: “the domain name 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”.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must demonstrate that:

i) the disputed domain name 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 disputed domain name; and

iii) the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

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 trademark registration provides a clear indication that the rights in the trademark belong to the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1).

In the case at hand, the Complainant has provided evidence of its rights in the trademark ACCENTURE on the basis of its multiple trademark registrations in the US and worldwide. All of these ACCENTURE trademarks were duly registered long before the Respondent registered the disputed domain name on October 29, 2020.

Previous UDRP panels have found the Complainant’s ACCENTURE trademark to be well-known (see in particular Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098). In addition to that, the Complainant has provided evidence in respect to the recognition of reputation of the ACCENTURE trademark throughout the world, and this Panel, therefore, holds that indeed the ACCENTURE trademark should be observed as a well-known trademark.

The disputed domain name <eu-accenture.com> consists of the Complainant’s trademark ACCENTURE with the addition of the geographic abbreviation “eu”, presumably in reference to the European Union, a hyphen and the applicable gTLD suffix “.com”. Because the Complainant’s ACCENTURE trademark is recognizable within the disputed domain name, the inclusion of the additional elements does not prevent a finding of confusing similarity.

As noted in WIPO Overview 3.0, section 1.8: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.” Similarly, the gTLD “.com” does not generally preclude a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks in accordance with the well-established practice of previous UDRP panels. Therefore, the Panel holds that the combination of the Complainant’s trademark ACCENTURE together with the geographic abbreviation “eu”, a hyphen and the applicable gTLD suffix “.com” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s ACCENTURE mark, which remains clearly recognizable in the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights, meaning that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4 (a) (ii) of the Policy, the Complainant must be able to prove that the Respondent has no rights or legitimate interests in the disputed domain name.

In the present case, the Complainant asserts that the Respondent has made no bona fide offering of goods and services, as it appears that the only use of the disputed domain name is to divert the consumers to third-party websites through sponsored links (PPC). In accordance with the practice of previous UDRP panels, such use of a domain name does not represent a bona fide offering of goods and services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see WIPO Overview 3.0, section 2.9). In this regard, the Panel finds that use of the disputed domain name for sponsored links leading to third party websites does not constitute a bona fide offering of goods and services.

Furthermore, the Panel observes that there is no relationship, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Panel also finds that there is no indication that the Respondent is known by the disputed domain name, since the Respondent is an individual with no apparent connection with the ACCENTURE trademark.

The Panel determines that there is no indication that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers. On the contrary, in the Panel’s view, it can be safely concluded that the Respondent deliberately chose to include the Complainant’s ACCENTURE trademark in the disputed domain name, in order to achieve commercial gain by misleadingly diverting consumers, and that such use cannot be considered as a legitimate noncommercial or fair use.

Furthermore, the composition of the disputed domain name, consisting of the Complainant’s well-known trademark with an additional geographical term “eu”, cannot constitute fair use in these circumstances as it carries a high risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

The Respondent failed to submit a response to the Complaint and to provide any arguments or evidence in respect to the existence of rights and a legitimate interest on his side. The Respondent initially made an informal communication with the Center, but has failed to provide a formal response to the complaint, which makes it plausible that no such argument or evidence was available on the Respondent’s side.

Given the above, the Panel finds that the Complainant has made a prima facie case the the Respondent lacks rights or legitimate interest in the disputed domain name, which has not been rebutted by the Respondent, therefore, the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy stipulates that any of the following circumstances, inter alia, shall be considered as evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

With regard to the bad faith at the time of registration, the Panel notes that it is not likely that the Respondent was not aware of the Complainant and its ACCENTURE trademark. On the contrary, the Complainant provided evidence to show that its ACCENTURE trademark can be considered as well-known globally and vested with significant goodwill.

Therefore, the Panel assumes that the Respondent must have been aware of the Complainant, its business and its ACCENTURE trademark, and that he has registered the disputed domain name in order to benefit from the renown of the Complainant’s trademarks and goodwill. In this Panel’s view, it cannot be denied that the word “Accenture” carries certain distinction, and given the above-described use of the disputed domain name by the Respondent, it seems likely that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark.

The Panel finds that use of a disputed domain name for purposes of redirection of Internet users to commercial websites through various sponsored click-through links commonly constitutes bad faith and may indicate that the Respondent registered and is using the disputed domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s ACCENTURE mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Such behavior is manifestly considered as evidence of bad faith (see WIPO Overview 3.0, section 3.5).

The Respondent has configured mail servers on the disputed domain name enabling sending and receiving emails from the addresses associated with the disputed domain name. Although no evidence of phishing activities has been provided by the Complainant, the Panel agrees that the mere presence of such mail servers represents a severe risk of phishing or other fraudulent and abusive activities and together with other evidence, contributes to bad faith on the Respondent’s side. Given the confusing similarity of the disputed domain name to the Complainant’s ACCENTURE trademark, it is difficult to imagine any good faith use of the mail server attached to such a domain name.

The Panel concludes that the disputed domain name was registered and is being used in bad faith and that consequently, the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

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 <eu-accenture.com> be transferred to the Complainant.

Petra Pecar
Sole Panelist
Date: February 3, 2021