WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Joshua Kimac

Case No. D2018-1641

1. The Parties

Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by Mayer Brown LLP, United States of America (“United States”).

Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Joshua Kimac of Walnut Creek, California, United States.

2. The Domain Name(s) and Registrar(s)

The disputed domain name <accenturellp.net> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2018. On July 20, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 20, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 23, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 24, 2018.

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 Respondent of the Complaint, and the proceedings commenced on July 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 15, 2018.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on August 20, 2018. 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

Complainant is a global professional services company, dating back to 1951, providing a broad range of services and solutions in strategy, consulting, digital, technology and operations. Combining experience and specialized skills across more than 40 industries and all business functions, Accenture works at the intersection of business and technology. Complainant employs approximately 449,000 people serving clients in more than 120 countries.

Complainant began using the mark, ACCENTURE, in connection with various services, including management consulting, technology services and outsourcing services, on January 1, 2001. Since that time, Complainant has used the ACCENTURE mark in connection with various services, including management consulting, technology services and outsourcing services. Additionally, the ACCENTURE mark is registered in many countries around the world. The registrations cover, inter alia, computer consulting services including computer software, design, installation, implementation, maintenance, repair, and technical consultation; educational services including conducting courses and classes in the field of computer software, business, and business operations; computer networks and computer installation, repair, and maintenance; financial services and financial consultation services; business management consulting services including project management and business management, marketing, acquisitions, and mergers; pamphlets, books, newsletters and magazines; and many other goods and services.

A representative chart of Complainant’s trademark registrations in the United States is provided below. Several of these registrations are incontestable and conclusive evidence of Complainant’s exclusive right to use its ACCENTURE marks in the United States in connection with the stated goods and services.

Complainant also owns registrations for the ACCENTURE mark in more than 140 countries. Complainant owns more than 1,000 registrations for the ACCENTURE marks and many other marks incorporating the ACCENTURE brand for a variety of products and services including, but not limited to, management consulting, technology services and outsourcing services.

The ACCENTURE marks have been advertised in connection with various media including the Internet. Complainant promotes and disseminates information on the Internet and in connection with various media regarding the various offerings under the ACCENTURE trademarks including, but not limited to, management consulting, technology services, outsourcing services and software solutions. Complainant owns and operates its website at “www.accenture.com”. Complainant registered this domain name on August 30, 2000, and at this website Internet users can find information about the management consulting, technology services, outsourcing and myriad other services offered by Complainant and its global offices in connection with its ACCENTURE marks.

The ACCENTURE trademarks have been recognized as a leading global brand by reputable brand consulting companies. The ACCENTURE mark has been recognized in Interbrand’s Best Global Brands Report since 2002, when it ranked 53rd. The ACCENTURE mark ranked 37th in the 2017 Interbrand’s Best Global Brands Report. The ACCENTURE trademarks have been recognized by Kantar Millward Brown, a leading market research and brand valuation company, in its annual BrandZ – Top 100 Brand Ranking since 2006 when it was ranked 58th. In 2017, the ACCENTURE brand ranked 32nd. As of 2018, Complainant ranked number 40 as the world’s most admired company, recognized by its name and ACCENTURE trademarks. The search results for the ACCENTURE mark from major Internet search engines such as Google and Yahoo all relate to Complainant.

The Doman Name was registered on July 2, 2018 and resolves to a landing page with links that purport to redirect users to consulting services that would be in competition with Complainant’s services, as well as other links that use the “Accenture” name or refer to career services.

5. Parties’ Contentions

A. Complainant

(i) Identical or confusingly similar

Complainant contends that as a result of extensive use and promotion, the ACCENTURE trademarks have become famous, distinctive, and well-known globally. The ACCENTURE trademarks have enjoyed distinctiveness and notoriety for a long period prior to the date when Respondent registered the Domain Name.

Complainant contends that the Domain Name incorporates the ACCENTURE trademarks in their entirety and is identical to the marks in which Complainant has rights. The only difference is the inclusion of the generic or descriptive “llp” suffix, which is an acronym for “limited liability partnership”, and does nothing to change the commercial impression. Complainant asserts it is well established that where the distinctive and prominent element of a disputed domain name is the complainant’s mark and the only deviation is the inclusion of a descriptive or non-descriptive matter, this does not negate the confusing similarity between the disputed domain name and the mark. In this case, Complainant argues the addition of “llp” does nothing to reduce the confusing similarity of the Domain Name with the ACCENTURE trademarks, and the Domain Name inevitably confuses users into believing that it was registered by or is affiliated with Complainant.

Complainant accordingly submits that the Domain Name is identical or confusingly similar to the ACCENTURE trademarks in which Complainant has rights, satisfying paragraph 4(a)(i) of the Policy.

(ii) Rights or legitimate interests

Complainant submits that Respondent has no rights or legitimate interests in respect to the Domain Name at least on the following grounds:

a) Respondent registered the Domain Name on July 2, 2018 for the purpose of impersonating Complainant and perpetrating fraud. Respondent registered the Domain Name many years after the ACCENTURE marks were first used and many years after they became famous worldwide. Complainant has not consented to or otherwise authorized Respondent’s use of the ACCENTURE marks. Upon information and belief, Respondent has made no bona fide offering of goods or services in connection with the Domain Name.

b) The widespread recognition of the ACCENTURE trademarks among consumers and the fact that Complainant’s adoption and first use of the marks significantly predates Respondent’s registration of the Domain Name, shifts the burden of proof to Respondent to establish that it has rights and/or legitimate interests in the Domain Name.

c) Respondent is using the Domain Name to impersonate Complainant in emails to Complainant’s affiliates and third party business customers in an effort to perpetrate fraud. Therefore, Complainant has no legitimate interests other than fraud. Complainant has been made aware of these fraudulent emails in connection with the misleading use of Complainant’s name in the Domain Name. Thus, Respondent clearly registered the Domain Name in an attempt to appear associated or affiliated with Complainant, and Respondent did not use or have an intention to use the Domain Name in connection with a bona fide offering of goods or services.

d) There is no evidence to suggest that Respondent has been commonly known by the Domain Name, and there is no justification or apparent need for Respondent to use “accenture” in the Domain Name other than fraud. The website at the Domain Name is currently merely a landing page that diverts customers to other pages.

e) Respondent was therefore aware of Complainant and the ACCENTURE trademarks, and was using the Domain Name to unfairly take advantage of the confusing similarity between the ACCENTURE trademarks and the Domain Name. Complainant has never authorized Respondent to use its trademarks in the Domain Name or otherwise, and has never had any dealings with Respondent which could give rise to such rights.

f) Respondent has taken unfair advantage of Complainant and its rights in order to unfairly capitalize on Complainant’s goodwill and reputation, which cannot amount to any right or legitimate interest. There is no indication that Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Instead, Respondent deliberately chose the Domain Name, which is essentially identical to Complainant’s ACCENTURE mark in an attempt to impersonate and defraud consumer by this confusing similarity. It is clear that Respondent has no legitimate interest in the Domain Name.

Based on the above, Complainant submits that it has established a prima facie case and that Respondent is precluded from relying on any of the grounds under paragraph 4(c) of the Policy.

(iii) Registered and used in bad faith

Complainant submits that the Domain Name has been registered and is being used by Respondent in bad faith on the following grounds:

(a) Respondent has no rights or legitimate interests in the Domain Name, which in itself is evidence of bad faith.

(b) Respondent is using the Domain Name to impersonate Complainant in emails to Complainant’s affiliates and third party business customers in an effort to perpetrate fraud, which is evidence of bad faith. Registration of a domain name in an attempt to appear associated or affiliated with another to obtain money or other materials constitutes bad faith use and registration.

(c) The Domain Name does not reflect or correspond to Respondent’s name or company trade name. Respondent first began using the ACCENTURE trademarks well after Complainant first began using the ACCENTURE mark. The ACCENTURE trademarks have acquired distinctiveness through their extensive use for several years by Complainant in commerce, so that they are immediately recognizable to consumers as being associated with Complainant. Due to the wide recognition of the ACCENTURE trademarks, it is inconceivable that Respondent was not aware of Complainant’s ACCENTURE trademarks at the time it registered the Domain Name, particularly since Respondent was impersonating Complainant in its emails.

(d) Due to the confusing similarity between the Domain Name and the ACCENTURE trademarks, and the fact that Respondent had to have been aware of Complainant and its trademarks, it is reasonable to infer that the Domain Name was registered to mislead and confuse users into believing that the Domain Name is associated with Complainant and its trademarks, and that Respondent is an authorized reseller or partner of Complainant (which is false), in order to commit fraud through email phishing schemes.

(e) Respondent’s registration and use of the Domain Name must involve bad faith in circumstances where the registration and use of it was made in the full knowledge of Complainant’s prior rights in the ACCENTURE trademarks, and in circumstances where Respondent did not seek permission from Complainant for such registration and use.

(f) An email received from a user from an email account from the Domain Name is likely to mislead users into believing that the email address is associated with a partner, affiliate or other authorized party of Complainant. In these circumstances of blatant misappropriation of Complainant’s brand, there can be no possible grounds on which to find that Respondent’s registration and use of the Domain Name, other than in bad faith and for the sole purpose of intentionally attempting to mislead in order to commit fraud. Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the ACCENTURE trademarks as to the source, sponsorship, affiliation, or endorsement of the email source, which may also cause damage to Complainant’s reputation. Further, Complainant is highly concerned that Respondent will continue use of the Domain Name in connection with commercial activities in the future and/or sell the Domain Name to a third party to do the same.

Complainant accordingly submits that the Domain Name was registered and is being used in bad faith, satisfying paragraph 4(a)(iii) of the Policy.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in its globally well-known ACCENTURE trademark, based on its trademark registrations and use of the mark in the United States and elsewhere. See Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted, WIPO Case No. D2013-2099 (finding that complainant has rights in the mark ACCENTURE).

Further, the Panel determines that the Domain Name is confusingly similar to the ACCENTURE mark, as the Domain Name incorporates the mark in its entirety, while merely adding the acronym “llp,” which is commonly used for the phrase “limited liability company”. The addition of this term does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8; see also Accenture Global Services v. Name Redacted, WIPO Case No. D2018-1038 (panel found that “investments” was a generic designation in the disputed domain name <accentureinvestments.com> and that “the addition of such a generic designation does not serve sufficiently to distinguish the disputed domain name from the Complainant’s mark.)”

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its ACCENTURE trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name has been used not only to resolve to a landing webpage with links that purport to redirect users to consulting services competitive with Complainant, but also in emails used to impersonate Complainant to Complainant’s affiliates and third party business customers in an effort to perpetrate fraud. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Names in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. Based on the evidence, there is little doubt that Respondent was aware of Complainant and its well-known ACCENTURE mark, and intentionally targeted that mark, when it registered the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s distinctive ACCENTURE trademark in its entirety, along with the acronym “llp”. Given the fame of the ACCENTURE trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its ACCENTURE mark when registering the Domain Name. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 (finding that it was unlikely that the respondent was unaware of complainant and its ACCENTURE mark at the time the disputed domain name was registered, as complainant demonstrated that its mark is well-known globally and is vested with significant goodwill); Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226 (where a domain name is “so obviously connected with such a well-known name and products, (…) its very use by someone with no connection with the products suggests opportunistic bad faith”).

This point is further confirmed by Respondent’s use of the Domain Name in connection with emails sent to Complainant’s affiliates and third party business customers in an effort to perpetrate fraud. An email received from an email account with the Domain Name included in its address is likely to mislead users into believing that the email address is associated with a partner, affiliate or other authorized party of Complainant. In these circumstances, it is clear that the Domain Name has been registered in bad faith and for the purpose of intentionally attempting to mislead in order to commit fraud. Respondent is acting in bad faith by purposefully creating a likelihood of confusion with the ACCENTURE trademark as to the source, sponsorship, affiliation, or endorsement of the email source.

In conclusion, in this case, where Respondent failed to submit a reply to Complainant’s contentions, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element 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 Domain Name <accenturellp.net> be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: September 14, 2018