The Complainant is Accenture Global Services Limited, United States of America (“United States”), represented by McDermott Will & Emery LLP, United States.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / John Kane, India1 .
The disputed domain name <workdaytrainingbyaccenture.com> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On August 31, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 31, 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 September 24, 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 September 28, 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 October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. No formal Response was received, but the Center received several emails from the email account which was displayed in the website to which the Disputed Domain Name resolved. These emails seem to be from a legitimate organization with no relation with the Respondent or the Disputed Domain Name – see discussion below.
The Center appointed Nick J. Gardner as the sole panelist in this matter on December 10, 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 is an international business which has been providing a wide range of services in the field of strategy, consulting and digital technology since 2001. It operates in more than 50 countries. The Complainant is the owner of many trademark registrations, in 140 countries, for ACCENTURE, including for example United States Registration No. 3,091,811 registered on May 16, 2006. These are referred to as the “ACCENTURE trademark” in this decision. The filed evidence establishes that the ACCENTURE trademark is very well known and is a leading global brand.
The Disputed Domain Name was registered on July 24, 2021. It currently does not resolve to an active website. Filed evidence shows it previously resolved to a website providing software training and displaying a third party email (see below).
The Complainant’s contentions are set out in some detail. Numerous previous WIPO UDRP decisions are relied upon by the Complainant. It is not necessary to repeat those here – where relevant they are addressed in the Panel’s discussion below. The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to the ACCENTURE Trademark.
The Respondent has no rights or legitimate interests in the term “Accenture”. It says that Accenture is a coined term which has no other meaning other than in relation to itself and its services.
In consequence, the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It relies on the fact that the Disputed Domain Name resolves to a website providing ERP (enterprise resource planning) training (see discussion below). It also relies on the fact that the email address associated with the Respondent in this case is the same as that associated with the Respondent in Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248275906/Vamshi Krishna Agulla, WIPO Case No. D2020-2776 concerning the domain name <accenturejobs.net>.
No Response has been filed.
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g. Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case, the Panel considers the substantive Respondent to be John Kane and references to the Respondent are to that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith
The Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s ACCENTURE trademark. It is established that the addition of a descriptive term (such as here “workday” and “training” to the Disputed Domain Name does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
The Panel finds “Accenture” is a term with no other commercial meaning save in relation to the Complainant.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ACCENTURE trademark. The Complainant has prior rights in the ACCENTURE trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
In the present circumstances, the distinctive nature of the ACCENTURE trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the ACCENTURE trademark, and the confusingly similar nature of the Disputed Domain Name to the ACCENTURE trademark, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Respondent’s motives are in the Panel’s opinion somewhat obscure. The Disputed Domain Name has been linked by redirection to a website promoting a business which provides ERP training services. That website appears to be that of a bona fide business. Correspondence received by the Center from that business protests that it has no knowledge at all of why the Disputed Domain Name has been redirected in this way. On balance, the Panel accepts that account as more likely than not to be true.
The Panel does not know why the Respondent redirected the Disputed Domain Name in this way. Even if the redirection was to an innocent third party, the use of the Disputed Domain Name in this way was illegitimately taking advantage of the Complainant’s trademark. Further, the Panel cannot conceive of any uses that the Respondent could make of the Disputed Domain Name which would be legitimate. The Panel also notes that the email address associated with the Respondent in this case is the same as that associated with the Respondent in Accenture Global Services Limited v. Contact Privacy Inc. Customer 1248275906/Vamshi Krishna Agulla, WIPO Case No. D2020-2776 concerning the domain name <accenturejobs.net>. It would appear the Respondent has on at least one previous occasion chosen to register a domain name containing the ACCENTURE trademark. The panel in that case found the registration and use was in bad faith. The Respondent has nevertheless proceeded to register another domain name including the ACCENTURE trademark when he must have known that was objectionable given the previous finding. Whatever the Respondent’s motives the Panel concludes he must in some manner be seeking to take advantage of the ACCENTURE trademark when he has no right to do so.
Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
As a result, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <workdaytrainingbyaccenture.com> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: December 24, 2021
1 The Respondent’s address appears to be an address in New York but the country is listed as India. Delivery of the Complaint by courier to the address in New York was effected.