WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Jean Jacque / Luck Loic

Case No. D2016-1315

1. The Parties

The Complainant is Accenture Global Services Limited of Chicago, Illinois, United States of America (“United States of America”) represented by DLA Piper US LLP, United States.

The Respondent is Jean Jacque, of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Luck Loic, of London, United Kingdom.

2. The Domain Name and Registrar

The disputed domain names <accenture-uk-limited.com> and <accenture-uk-ltd.com> are registered with Gandi SAS (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2016. On June 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <accenture-uk-limited.com>. On June 30, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 July 1, 2016.

In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2016.

On July 1, 2016, the Complainant requested the domain name <accenture-uk-ltd.com> be added to the proceeding and filed an amended Complaint.

On August 18, 2016, the Panel issued an administrative panel procedural order, granting the Complainant’s request for consolidation and granting the Respondent a ten day period until August 28, 2016 to indicate whether it wished to participate in the proceeding. No corresponding submissions were received from the Respondent.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on July 27, 2016. 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 an international business that provides management consulting, technology services and outsourcing services under the name “Accenture” and is the owner of the ACCENTURE mark and similar company name. Complainant has offices and operations in more than 200 cities in 56 countries.

The Complainant began using the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services, on January 1, 2001.

The Complainant is the owner of several mark registrations for ACCENTURE, which have been registered in 144 countries all over the world, including the United Kingdom, where it was first registered on December 18, 2000.

The disputed domain names <accenture-uk-limited.com> and <accenture-uk-ltd.com> were registered on April 16, 2016 and on June 23, 2016 respectively. The disputed domain names resolve to parking pages.

5. Parties’ Contentions

A. Complainant

The Complainant states that the disputed domain names are confusingly similar to the ACCENTURE Mark.

The Complainant states that the disputed domain names are highly similar to the Complainant’s well-known ACCENTURE mark. The disputed domain names fully and exactly incorporate the Complainant’s ACCENTURE mark, as well as the geographic designation “UK” and the generic corporate designation “limited” or “ltd.”. The Complainant also states that the disputed domain names are identical and essentially identical to the Complainant’s affiliate Accenture (UK) Limited’s corporate name.

The Respondent has fully incorporated the Complainant’s registered ACCENTURE mark into the disputed domain names. The addition of the geographic designation “UK” and the generic corporation designation “limited” or “ltd” not only fail to meaningfully distinguish the disputed domain names from the Complainant’s ACCENTURE mark, they exacerbate the likelihood of confusion given the Complainant’s services offered in the UK and the Complainant’s affiliate Accenture (UK) Limited.

With respect to legitimate rights or interests, the Complainant states that:

- the Respondent has not made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services;

- the Respondent is not commonly known by the disputed domain names;

- the Respondent is not making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademarks of another.

- On June 22, 2016, the Respondent sent an email to one of the Complainant’s vendors, posing as an employee of the Complainant and requesting delivery of various electronic products and also requesting credit from the vendor.

- The Respondent’s June 22nd email was sent from the email address “[…]@ACCENTUREUK-LIMITED.COM” to one of the Complainant’s vendors in Poland, and the email signature incorporated the Complainant’s web address “www.accenture.com”, the Complainant’s registered ACCENTURE HIGH PERFORMANCE. DELIVERED (and design) trademark and the Complainant’s United Kingdom corporate affiliate’s name, Accenture (UK) Limited.

- On June 22nd, the Complainant sent an email to the Respondent, requesting the Respondent transfer the disputed domain name <accenture-uk-limited.com> to the Complainant. The Respondent did not reply.

- After this, the Complainant sent an email to the Registrar, advising it of the Respondent’s fraudulent activity and requested that the Registrar suspend services to the disputed domain name

<accenture-uk-limited.com>.

- The Complainant alleges that on June 29, 2016 the Respondent sent a fraudulent email communication like the one of June 22, 2016 from the email address “[…]@accenture-uk-ltd.com”.

- According to the Complainant, the Respondent Jean Jacque and Luck Loic are the same person and/or are under common control.

With respect to bad faith registration and use, the Complainant states that:

- The Respondent had constructive notice that the ACCENTURE Mark was a registered trademark in the United Kingdom and many other jurisdictions worldwide.

- The Respondent did not register the disputed domain names to actually offer services but, instead, registered and is using the disputed domain names for the bad-faith purpose of appearing associated or affiliated with the Complainant for commercial gain.

- There is no reasonable explanation for the Respondent’s selection of the disputed domain names

<accenture-uk-limited.com> and <accenture-uk-ltd.com>, other than that the Respondent was intentionally attempting to trade off of the goodwill the Complainant has established in its ACCENTURE mark.

- The Respondent is intentionally attempting to attract users to the websites by creating a likelihood of confusion with the Complainant’s ACCENTURE mark and, therefore, has acted in bad faith in registering and using the disputed domain names.

The Complainant requests the transfer of the disputed domain names.

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 prove 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.

These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

A. Consolidation

Paragraphs 10(e) and 3(c) of the Rules provide:

10(e): “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.”

3(c) “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”

These provisions empower the Panel to consolidate multiple domain names in a single complaint subject to the requirement that the disputed domain names are registered by the same domain-name holder.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second edition (“WIPO Overview 2.0”), paragraph 4.16 states that: “WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties”.

Applying these principles to the facts of this case, and in light of the Complainant statements, this Panel finds that one and the same person is holding an interest in the two disputed domain names.

The Complainant initially filed this case with respect to the disputed domain name <accenture-uk-limited.com> and later an amended complaint was filed including the disputed domain name <accenture-uk-ltd.com>.

The Complainant submits that the Respondents Jean Jacque and Luck Loic are the same person or, at the very least, the disputed domain names are under common control based on the following:

- Both disputed domain names are associated with a scam wherein an email was sent to one of the Complainant’s vendors.

- The Respondent’s emails dated June 22 and June 29, 2016 were both sent to the Complainant’s vendors in Poland;

- Those emails requested delivery of electronic products; were sent by individuals posing as an employee of the Complainant; and incorporated the Complainant’s web address, “www.accenture.com”, its registered ACCENTURE mark and the UK corporate affiliate name Accenture (UK) Limited.

- The websites at the disputed domain names resolve to parked pages.

- Both disputed domain names feature the same street address in the WHOIS details and were registered in connection with the same Registrar.

- The disputed domain name <accenture-uk-ltd.com> was registered one day after the suspension of the

disputed domain name <accenture-uk-limited.com>, strongly suggesting that the registrants are the same person and/or that the Domain Names are commonly controlled.

Thus the Panel concludes that the disputed domain names <accenture-uk-limited.com> and <accenture-uk-ltd.com> were registered by the same person. In sum, the available evidence supports a finding that the two disputed domain names were registered by the same domain-name holder in accordance with paragraph 3(c) of the Rules.

B. Identical or Confusingly Similar

The Panel finds that the disputed domain names are confusingly similar to the Complainant’s ACCENTURE trademark.

The Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding ACCENTURE. As evidenced in the Complaint, the Complainant is the owner of a large number of word trademarks comprising the mark ACCENTURE. The disputed domain names fully incorporate the Complainant’s ACCENTURE trademark.

The disputed domain names <accenture-uk-limited.com> and <accenture-uk-ltd.com> are confusingly similar to the Complainant´s trademark. The addition of the generic terms “UK”, “limited” and “ltd.” does not change this conclusion.

The Panel concludes that the disputed domain names are confusingly similar to a trademark in respect of which the Complainant has rights.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) 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 noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Although these examples are presented in terms of a showing that could be made by the Respondent, the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the consensus among panels is that a complainant need only show a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy, after which the burden of production shifts to the respondent to rebut the complainant’s prima facie case (see WIPO Overview 2.0, section 2.1).

Here, the Complainant has made such a necessary prima facie showing. In particular, the Complainant alleges that the Respondent is not known by the disputed domain names nor has the Respondent offered evidence of use or demonstrable preparation for using the disputed domain names. In fact the Complainant is arguing bad faith use of the disputed domain names as indicated in the next section.

The Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.

D. Registered and Used in Bad Faith

Based on the record, the Panel finds it highly unlikely that the Respondent was not aware of the Complainant’s rights by the time it registered the disputed domain name, and accepts the Complainant allegation that the Respondent was aware of the ACCENTURE mark at the time of the registration of the disputed domain names.

The Complainant’s trademark ACCENTURE, used in its entirety in the disputed domain names, is widely known all over the world and, as previously stated, the Panel finds no evidence that the Respondent has ever had any connection or has ever been commonly known by the disputed domain name.

The disputed domain names <accenture-uk-limited.com> and <accenture-uk-ltd.com> were registered around the same date, using the same contact information, the same Registrar and they both contain a variation of the corporate name “Accenture UK Limited”.

Additionally, the disputed domain names are parked with the Registrar.

The Panel accepts the Complainant’s allegation and proof that the Respondent is making a bad faith use of the disputed domain names through email addresses associated with the disputed domain names as demonstrated in the evidence attached to the Complaint.

Paragraph 4(b) of the Policy provides a list of examples of evidence of bad faith registration and use. It is the view of the Panel that this course of fraudulent conduct in impersonating the Complainant and its employees by using an email address containing the disputed domain names is evidence of the Respondent’s bad faith (See Monarch Airlines Limited v. Richard Nani, WIPO Case No. D2012-2484; La Française des Jeux v. MichaelE Wilkins, WIPO Case No. D2009-0898; MasterCard International Incorporated v. Dhe Jonathan Firm, WIPO Case No. D2007-0831; Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037 and Valero Energy Corporation, Valero Marketing and Supply Company v. Maurine flavour seafoods, WIPO Case No. D2013-1849).

Accordingly, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith 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 names <accenture-uk-limited.com> and <accenture-uk-ltd.com> be transferred to the Complainant.

Pablo A. Palazzi
Sole Panelist
Date: August 29, 2016