The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is above_privacy / Host Master, Transure Enterprise Ltd, United States.
The disputed domain name <accenutre.com> (the “Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2021. On August 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 13, 2021, 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 August 13, 2021 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 August 18, 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 the Respondent of the Complaint, and the proceedings commenced on August 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on September 20, 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.
The Complainant operates a consulting and technology and outsourcing services business with operations in 56 countries and is ranked in the Fortune Global 500. The Complainant holds a portfolio of registrations for the trademark ACCENTURE, and variations of it, in more than 140 countries. United States Trademark Registration No. 2,665,373, for example, was registered on December 24, 2002.
The Complainant owns numerous domain names that comprise or contain the trademark ACCENTURE, including the domain name <accenture.com> registered on August 30, 2000.
The Respondent registered the Disputed Domain Name <accenutre.com.com> on September 24, 2012. The Disputed Domain Name resolves to a pay-per-click (“PPC”) parking page including links that provide competing services.
The Complainant cites its United States trademark registrations including No. 2,665,373 registered in 2002 and numerous other registrations around the world, for the mark ACCENTURE as prima facie evidence of ownership.
The Complainant submits that the mark ACCENTURE is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name <accenutre.com>. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the ACCENTURE trademark and that the similarity is not removed by “simply reversing the letters ‘t’ and ‘u’ in the ACCENTURE trademark”, or the addition of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a putatively inactive website “to run click-through links or to redirect users to sponsored websites (that) does not qualify as a bona fide offering of goods and services”, and contends that therefore the Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the prior use, fame and secondary meaning of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the mark ACCENTURE in numerous countries including the United States. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ACCENTURE trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark ACCENTURE; (b) with the letters “t” and “u” transposed; (c) followed by the gTLD “.com”.
It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “accenutre”.
It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the misspelling of still recognizable ACCENTURE trademark. This Panel accepts the Complainant’s contention that reversal of the letters “t” and “u” in the Complainant’s registered trademark does not serve to distinguish the Disputed Domain Name from the Complainant’s trademark (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the Disputed Domain Name. The Policy also places the burden on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; “WIPO Overview 3.0”), section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is misleadingly directing Internet users to PPC landing web page dominated by links advertising supposed “Management Consulting Company”, “Business Consulting Services”, “Business Analytics”, “Business Planning”, “Business Marketing”, “Business Strategies”, thereby illegitimately passing off the owner’s goodwill and reputation for its own benefit. The Complainant also has not licensed, permitted or authorized the Respondent to use the Complainant’s trademark.
On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc., supra. Nor, alternatively, is the Respondent commonly known by the Disputed Domain Name.
This Panel has also considered the lengthy delay between the registration of the Disputed Domain Name in 2012 and this UDRP proceeding some 10 years later. This Panel concurs with the consensus opinion among Panelists on the issue, and draws no inference adverse to the Complainant from the delay in issuing the proceeding (see WIPO Overview 3.0, paragraph 4.17).
This Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds for the Complainant on the second element of the Policy.
The third element of the Policy that the Complainant must also demonstrate is that the Disputed Domain Name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s famous trademark ACCENTURE when it registered the Disputed Domain Name (see Accenture Global Services Limited v. ICS INC. / PrivacyProtect.org, WIPO Case No. D2013-2098 (“its ACCENTURE mark can be considered as well-known globally and vested with significant goodwill”); Accenture Global Services Limited v. Gerald Wilson, supra (“the Complainant’s well-known ACCENTURE trademark”); Accenture Global Services Limited v. Monom, WIPO Case No. D2018-0016 (“the Complainant’s Trademark and activities are well-known throughout the world”).
This Panel accepts, as the basis of a further finding of bad faith, the Complainant’s uncontested evidence that “given the well-known status of Complainant’s ACCENTURE Marks and Complainant’s registration and use of the domain name <accenture.com>, there is no reason for Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of Complainant’s Marks”. (Citing Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403 (which held that the domain name in question was “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith”).
The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 and Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814).
Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) can indicate bad faith registration (see Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415). In this case, the Respondent registered the Disputed Domain Name some 10 years after the Complainant established trademark rights in the ACCENTURE mark.
On the issue of use, the evidence is that the Disputed Domain Name resolves to a PPC parking page unconnected with any bona fide supply of goods or services by the Respondent. The Panel surmises that the business model in this case, was for the Respondent to passively collect click-through revenue generated solely from the Complainant’s goodwill and Internet users’ inaccurate guessing of the correct domain name associated with the Complainant’s ACCENTURE services. Exploitation of the reputation of a trademark to obtain click-through commissions from the diversion of Internet users is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions. See Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra; Accenture Global Services Limited v. Tulip Trading Company, WIPO Case No. D2015-1520; Accenture Global Services Limited v. Moniker Privacy Services / Whois Agent, Domain Protection Services, Inc. / Zhichao Yang, WIPO Case No. D2019-2787; WIPO Overview 3.0, section 3.5.
In the absence of any evidence to the contrary, this Panel finds that the Respondent has taken the Complainant’s trademark ACCENTURE and incorporated it in the Disputed Domain Name without the Complainant’s consent or authorization, for the very purpose of capitalizing on the reputation of the trademark by diverting Internet users to a PPC parking web page for commercial gain.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 <accenutre.com> be transferred to the Complainant.
Nicholas Weston