WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Registration Private, Domains By Proxy, LLC / John V

Case No. D2020-0189

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States / John V, Indonesia.

2. The Domain Names and Registrar

The disputed domain names <accentureconsulting.co>, <accentureconsulting.training> and <accenture-training.co> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2020. On January 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 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 January 30, 2020.

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 February 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2020.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on March 3, 2020. 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, an international company that provides services and solutions in strategy, consulting, technology, and operations, under the trademark ACCENTURE. The Complainant has offices in more than 200 cities in 56 countries.

The Complainant owns, among others, the following trademark registrations:

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

The disputed domain names were registered on December 9, 2019. According to evidence provided by the Complainant, the disputed domain name <accentureconsulting.training> used to resolve to a website that displayed “Accenture Training”, along with content copied from a third-party website. The disputed domain names <accentureconsulting.co> and <accenture-training.co> resolve to static webpages, which feature the phrase “website coming soon!”.

5. Parties’ Contentions

A. Complainant

The Complainant argued the following:

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

That the Complainant owns more than 1,000 registrations for the ACCENTURE and ACCENTURE & Design trademarks in 140 countries, to cover a variety of products and services.

That the Complainant has developed substantial goodwill in its “Accenture” business name and its ACCENTURE trademark.

That the Complainant owns and operates the domain name <accenture.com> where Internet users can find information about the services that it offers.

That since 2009, the Complainant has been spending from USD 66 to USD 77 million annually in advertising worldwide.

That the ACCENTURE trademark has been recognized by reputable brand consulting companies as a leading global brand.

That the Complainant has received numerous awards for its business, as well as the products and services provided under the ACCENTURE trademark.

That the Complainant supports numerous social development projects worldwide, and has collaborated with various groups on cultural initiatives across the world, in connection with the ACCENTURE trademark.

That the ACCENTURE trademark has become distinctive and famous globally long prior to the date on which the Respondent registered the disputed domain names.

(i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

That the disputed domain names are confusingly similar to the Complainant’s ACCENTURE trademark.

That the only difference between the disputed domain names and the Complainant’s ACCENTURE trademark is the addition of the descriptive terms “consulting” and/or “training” as part of the disputed domain names, or as a generic Top-Level Domain (“gTLD”).

That these terms intend to create a direct reference to the Complainant’s primary business services in the areas of consulting and training.

That the disputed domain names were registered more than 17 years after the Complainant first registered its ACCENTURE trademark in the United States.

That, in accordance with the decisions of previous UDRP panels, the ACCENTURE trademark is distinctive and famous.

That the addition of the gTLD “.training” and the country code top-level domain (“ccTLD”) “.co” to the disputed domain names is without legal significance and does not reduce their confusing similarity with the Complainant’s ACCENTURE trademark.

That Internet users are very likely to be confused as to whether an association between the disputed domain names and the Complainant’s ACCENTURE trademark exists.

(ii) The Respondent has no rights or legitimate interests in the disputed domain names.

That the Respondent has no legitimate interest in the disputed domain names.

That the Respondent is neither affiliated with, nor has he been licensed or permitted to use the Complainant’s ACCENTURE trademark, or any domain name incorporating such trademark.

That the Respondent is not commonly known by any of the disputed domain names.

That the Respondent has chosen to use the Complainant’s famous ACCENTURE trademark in the disputed domain names to create a direct affiliation with the Complainant and its consulting and training business.

That the Respondent is not making a legitimate, noncommercial, or fair use of the disputed domain names.

That the disputed domain name <accentureconsulting.training> resolves to a website which content has been copied from a third-party webpage, and which displays the name “Accenture Training” in different places.

That, by using the name “Accenture Training” on the website to which the disputed domain name <accentureconsulting.training> resolves, the Respondent is trying to pass itself off as the Complainant, which confirms the lack of the Respondent’s legitimate interest under the Policy.

That the disputed domain name <accentureconsulting.co> and the disputed domain name <accenture-training.co> resolve to inactive web pages, which state “website coming soon!”.

That the Respondent’s failure to use the disputed domain names to provide a bona fide offering of goods and services confirms that he does not have any rights to, or legitimate interests in the disputed domain names.

That the Respondent has chosen the disputed domain names to trade off the reputation and goodwill associated with the Complainant’s ACCENTURE trademark, and to cause confusion amongst Internet users.

(iii) Registration and use in bad faith.

That the Respondent had constructive notice of the registered trademark ACCENTURE in the United States and in many other jurisdictions worldwide.

That given the Complainant’s worldwide reputation and its ubiquitous presence on the Internet, the Respondent was or should have been aware of the ACCENTURE trademark long prior to registering the disputed domain names.

That on December 19, 2019, the Complainant sent a letter to the “[...]@accentureconsulting.training” email address listed at the corresponding website, requesting that the Respondent cease using the disputed domain names.

That when no response was received from the Respondent, on January 6, 2020, the Complainant sent a follow-up email requesting an answer, but that the Respondent has not provided any reply to said communication.

That the Respondent is using the disputed domain name <accentureconsulting.training> to mislead Internet users who are searching for the Complainant.

That by using the “Accenture” name, the Respondent is offering, competing with, or having the potential to compete with the Complainant’s goods and services in relation to consulting and training.

That this competing use is a disruption of the Complainant’s business, which constitutes bad faith pursuant to the Policy.

That the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s ACCENTURE trademarks as to the source, sponsorship, affiliation or endorsement of the disputed domain name <accentureconsulting.training>.

That the passive or inactive holding of the disputed domain name <accentureconsulting.co> and the disputed domain name <accenture-training.co> indicates use in bad faith under the Policy.

That it is implausible for the Respondent to have registered the disputed domain names for any purpose other than to trade off the reputation and goodwill of the Complainant’s ACCENTURE trademarks.

That given the well-known status of the Complainant’s ACCENTURE trademarks, there is no reason for the Respondent to have registered the disputed domain names other than to trade off the reputation and goodwill of the Complainant’s trademark.

B. Respondent

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

6. Discussion and Findings

The Complainant must prove that the three elements of paragraph 4(a) of the Policy have been met:

(i) the disputed domain names are 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 with respect to the disputed domain names; and

(iii) the disputed domain names have been registered and used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed factual allegations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V., WIPO Case No. DMX2012-0013; and Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Identical or Confusingly Similar

The disputed domain names incorporate the Complainant’s registered trademark ACCENTURE in its entirety, with the inclusion of the term “consulting” and the ccTLD “.co” (<accentureconsulting.co>), the term “training”, plus a hyphen and the ccTLD “.co” (<accenture-training.co>), and the addition of the term “consulting” and the gTLD “.training” (<accentureconsulting.training>). The inclusion of these descriptive terms in the disputed domain names does not preclude a finding of confusing similarity with the Complainant’s trademark.

Furthermore, the mere addition of a hyphen to the disputed domain name <accenture-training.co> is also not sufficient to avoid a finding of confusing similarity between the disputed domain name and the ACCENTURE trademark (see Six Continents Hotels, Inc. v. Georgetown, Inc., WIPO Case No. D2003-0214 and Philip Morris USA Inc. v. Nelia Andrade, WIPO Case No. D2018-0098).

The inclusion of the ccTLD “.co” in the disputed domain names <accentureconsulting.co> and <accenture-training.co>, and of the gTLD “training” in the disputed domain name <accentureconsulting.training> is due to a standard technical requirement of the structure of the domain name system; therefore, it lacks relevance in assessing the concurrence of identity or confusing similarity in this proceeding (see Minerva SA v. El Yanko, WIPO Case No. D2018-0767; Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000 -0859; and Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300).

Consequently, the Panel finds that the disputed domain names are confusingly similar to the trademark ACCENTURE of the Complainant.

The first element of the Policy has been met.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain names:

(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain names 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 disputed domain names, even if it did no acquire trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant affirms that the Respondent has no rights or legitimate interests in the disputed domain names, that he is not affiliated with the Complainant’s trademark ACCENTURE, and that he has not been granted any license or authorization to use said trademark. The Complainant further states that the Respondent is not commonly known by any of the disputed domain names nor is he making a legitimate, noncommercial, or fair use of the disputed domain names. The Respondent has not contested the Complainant’s contentions.

The Complainant argues that the disputed domain name <accentureconsulting.training> resolved to a website that displayed the wording “Accenture Training”, along with content copied from a third-party website. On the other hand, the Complainant alleges that the disputed domain name <accentureconsulting.co> and the disputed domain name <accenture-training.co> resolve to static webpages, which feature the phrase “website coming soon!”. The Complainant filed some screenshots of the relevant websites to support these affirmations (which have not been challenged by the Respondent).

Taking the foregoing arguments and evidence into account, it is not possible to conclude that the Respondent has undertaken demonstrable preparations in connection with a bona fide offering of goods or services. Moreover, the record of the present case lacks evidence indicating that the Respondent has any rights to, or legitimate interests in the disputed domain names, or that he is commonly known by any of them (see American Society of Hematology v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Andy Abbott, IT Company, WIPO Case No. D2017-1307 and Mou Limited v. Pan Xiaoxiao, WIPO Case No. D2018-2459).

The Respondent has intentionally incorporated the Complainant’s ACCENTURE trademark in the disputed domain names, combining it with the dictionary terms “consulting” and “training”, that are associated with the Complainant’s core services, as well as the gTLD “.training”. None of these conducts suggest that the Respondent is making a legitimate, noncommercial, or fair use of the disputed domain names that would justify their registration and use (see Carrefour v. WhoisGuard, Inc. / Robert Amandin, WIPO Case No. D2019-0761 and ArcelorMittal (SA) v. مسعود ثقفي, WIPO Case No. D2018-1974).

As the Respondent did not submit a Response, and therefore did not rebut the Complainant’s prima facie case, the Panel finds that the Complainant has met the requirement established under the second element of the Policy (see Allianz SE v. Fernando Notario Britez / Oneandone, Private Registration, WIPO Case No. D2013-0279 and Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270).

Therefore, the second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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.

The Complainant has produced evidence showing that it owns registrations for the ACCENTURE trademark in various countries, which dates of registration significantly precede the date of the registration of the disputed domain names.

In addition, the Complainant has credibly submitted that over the years it has developed substantial goodwill in the “Accenture” name and ACCENTURE trademark; and has shown that said mark has been recognized as a leading global brand in its industry. Furthermore, following the decisions of previous UDRP panels, this Panel finds that the ACCENTURE trademark is well known worldwide (see Accenture Global Services Limited v. IC Inc./PrivacyProtect.org, WIPO Case No. D2013-2098 and Accenture Global Services Limited v. Carl Mazzanti, eMazzanti Technologies, WIPO Case No. DCO2017-0013).

In light of the above, this Panel is of the opinion that the Respondent had full knowledge of the Complainant and its ACCENTURE trademark at the time of registration of the disputed domain names. In the absence of any explanation as to why the Respondent chose these disputed domain names, it is natural to conclude that the Respondent registered them in order to take advantage of the renown of the Complainant and its trademarks. This conduct constitutes opportunistic bad faith under the Policy (see Mou Limited v. Pan Xiaoxiao, WIPOCase No. D2018-2459; ArcelorMittal (SA) v. مسعود ثقفي, WIPO Case No. D2018-1974; and Sidley Austin LLP v. Contact Privacy Inc. Customer 1244494545 / Ruthie A Sheffield, WIPO Case No. D2019-1327).

Furthermore, the inclusion of descriptive terms in the disputed domain names (either as a gTLD or in the second-level part of the disputed domain names), which correspond to some of the core services that the Complainant renders (consulting and training), increases the risk of confusion (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755; Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico, WIPO Case No. D2000-0477; and Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203).

In accordance with the evidence filed by the Complaint, which has not been contested by the Respondent, the disputed domain name <accentureconsulting.training> resolved to a website that displayed the wording “Accenture Training” in a stylized manner, along with images and content that implied that such website offered training and consulting services.

The evidence on record does not show any disclaimer that informed Internet users that said website was not associated with the Complainant.

Therefore, the Panel considers that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website to which the disputed domain name <accentureconsulting.training> resolved, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, according to paragraph 4(b)(iv) of the Policy.

Concerning the disputed domain names <accentureconsulting.co> and <accenture-training.co>, the Complainant has submitted arguments and evidence to show that they resolve to a static webpage that displays the caption: “Website coming soon! Please check back soon to see if the site is available.”

Under section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the non-use of a domain name (including a “coming soon” page), would not prevent a finding of bad faith under the doctrine of passive holding. Previous panels appointed under the Policy have held that the passive holding of a domain name that incorporates a well‑known trademark may confirm the bad faith use of a disputed domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”) “The lack of use [of a domain name] by itself does not indicate anything”).

Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy”; see also CBS Broadcasting, Inc. v. Dennis Toeppen, WIPO Case No. D2000-0400.

In order to determine whether the disputed domain names <accentureconsulting.co> and <accenture-training.co> have been held passively under Telstra, the following facts must be analyzed:

- the Complainant’s trademark ACCENTURE is well known worldwide;

- the Respondent has incorporated into these two disputed domain names terms such as “consulting” and “training”, which are directly associated with the Complainant’s core services, and which create a serious risk of confusion;

- the Respondent had full knowledge about the Complainant and its ACCENTURE trademark at the moment of registration of the disputed domain names; and

- the Respondent has failed to submit a Response, or to provide any explanation as to why he registered the disputed domain names.

Taking the above facts into consideration, it is not possible to conceive any credible or plausible active use of the disputed domain names by the Respondent that would not be in bad faith (see Mou Limited v. Pan Xiaoxiao, WIPO Case No. D2018-2459 and Sidley Austin LLP v. Contact Privacy Inc. Customer 1244494545 / Ruthie A Sheffield, WIPO Case No. D2019-1327).

Accordingly, the third element of the Policy has been met.

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 <accentureconsulting.co>, <accentureconsulting.training> and <accenture-training.co> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: March 17, 2020