The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America.
The Respondent is Valentin Petit, France.
The disputed domain names <eservices-accenture.com> and <group-accenture.com> (“Disputed Domain Names”) are registered with Register.IT SPA (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 13, 2020. On February 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 17, 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 February 25, 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 February 27, 2020.
The Registrar also indicated that the language of the Registration Agreement was French. The Center sent an email communication in English and French, to the Complainant on February 25, 2020, inviting the Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into French, or a request for English to be the language of the proceeding. The Complainant filed a request for English to be the language of the proceeding on February 27, 2020. The Respondent did not comment on the language of the proceeding.
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 in English and French, and the proceedings commenced on March 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 24, 2020.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on April 2, 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.
The Complainant is a management consulting firm established in 2001. Working worldwide in connection to various services including management consulting, technology services and outsourcing services. It has offices and operations in more than 200 cities and 56 countries.
In 2018, the Complainant devoted USD 67 million in marketing its services globally. The ACCENTURE trademark has been ranked among the most valuable brands in the world by Interbrand, BrandZ and Fortune.
The Complainant holds worldwide numerous ACCENTURE trademark registrations, including the following registered by the United States Patent and Trademark Office:
|
MARK |
Registration Number |
Registration Date |
|
ACCENTURE |
3091811 |
May 16, 2006 |
|
ACCENTURE > |
2665373 |
December 24, 2002 |
|
ACCENTURE |
3340780 |
November 20, 2007 |
|
ACCENTURE |
2884125 |
September 14, 2004 |
|
ACCENTURE |
3862419 |
October 19, 2010 |
The Disputed Domain Names were registered on January 15, 2020. Both Disputed Domain Names resolve to the same parking page with a warning in French translated as “This domain is already registered” and “Are you interested in this domain name?”.
The Disputed Domain Names are confusingly similar to the ACCENTURE trademark. The only difference between the Disputed Domain Names and the Complainant’s ACCENTURE trademark is the addition of the terms “eservice” and “group”, each followed by an hyphen, preceding the registered trademark. However, adding a descriptive term to a trademark in a domain name fails to mitigate confusing similarity. Indeed, the Respondent’s addition of the terms “eservices” and “group” to the Disputed Domain Names does nothing to reduce confusing similarity with the Complainant’s ACCENTURE trademark. As such, Internet users are very likely to be confused as to whether an association exists between the Disputed Domain Names and the Complainant.
With respect to the second element, the Complainant contends that the Respondent is not an affiliated nor has it been licensed o permitted to use ACCENTURE, itself or, in a corresponding domain name. According to the registrant information, the Respondent is not commonly known by the Disputed Domain Names. Besides, both Disputed Domain Names resolve to a parking page which informs that they have already been registered as well as asking to those interested in them. Therefore, holding inactively a domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Complainant asserts that the Respondent has failed to make any developments or demonstrable preparations to use the Disputed Domain Names in connection to a bona fide offering of goods or services.
Further the Complainant points out that on January 22, 2020, the Respondent tried to impersonate the Complainant. By using “[...]@eservices-accenture.com” email account the Respondent has tried to perpetuate a financial fraud/phising scam in an attempt to acquire products from a third party.
And finally, the Complainant alleges bad faith registration and use of the Disputed Domain Names. Given the well-known value of the ACCENTURE trademark, the Respondent was or should have been aware of the Complainant’s trademark. Moreover, the Respondent was well aware of the Complainant and its trademarks given that the Respondent tried to pose as the Complainant in the above mentioned email. Further, the Complainant supports a finding of bad faith used of the Disputed Domain Names based on the Passive Holding doctrine as set up in the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3.
The Complainant ultimately affirms that the Respondent’s registration of the Disputed Domain Names appeared to attempt to induce people into believing the Respondent was affiliated with ACCENTURE when this is untrue.
The Respondent did not reply to the Complainant’s contentions.
The Panel looks at paragraphs 10 and 11 of the Rules which set up the general powers of the Panel on the language of the procedure. The Complaint was submitted in English. To this end, the Panel notes the silence of the Respondent, the proper notification of the procedure both in English and French together with the Complaint to the Respondent, as well as the Respondent’s email on January 22, 2020, which implies knowledge of English. Hence, the Panel finds that English is the language in which the Decision is to be issued.
Under paragraph 4(a) of the Policy, to succeed the complainant must satisfy the Panel that:
(i) the Disputed Domain Names are identical 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 Names; and
(iii) the Disputed Domain Name were registered and are being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.
The Panel will also take into consideration the WIPO Overview 3.0.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Disputed Domain Name are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant has shown irrefutable trademark registrations on the ACCENTURE trademark. Since the test typically involves a side-by-side comparison of the domain name and the trademark, the Panel finds that the ACCENTURE trademark is recognizable within the Disputed Domain Names. The mere addition of other descriptive terms such as “eservices” or “group” or a hyphen do not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0 section 1.8.
Besides, it is well established that generic Top-Level Domains (“gTLD”), in this case “.com”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
To the satisfaction of the Panel the first requirement is met under paragraph 4(a)(i) of the Policy.
The Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. Namely, that the Complainant has not licensed or otherwise permitted the Respondent to register a domain name involving its trademark, that the Respondent has not been commonly known by the Disputed Domain Names. Further, the Respondent failed to make any demonstrable preparations to use the Disputed Domain Names with bona fide offerings of goods or services since both resolve to parking pages.
In addition, the Respondent tried to impersonate or suggest sponsorship or endorsement by the Complainant when using the “[…]@eservices-accenture.com” email to offer third parties the Complainant’s services. See WIPO Overview 3.0 section 2.5.1: “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner”. Notably, the Panel highlights the accurate information within the email e.g. the address and the full name of the Complainant’s Managing Partner in its Brussels office which reinforces deception.
As noted above, the Respondent did not come forward with relevant evidence and allegation demonstrating rights or legitimate interests in the Disputed Domain Names.
Under these circumstances, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
For the purposes of the Policy, a complainant must establish that the disputed domain name was registered and used in bad faith by the respondent.
The Panel finds that by adding to the Complainant’s well-known trademark an extra descriptive term, the Respondent knew or should have known about the Complainant, ACCENTURE or its business somehow. See Virgin Enterprises Limited v. Michelle Grand, WIPO Case No. D2018-2062. Such knowledge is apparent in the fraudulent email sent on January 22, 2020, by the Respondent.
Moreover, the Panel is of the opinion that the Respondent has used the Disputed Domain Names to impersonate or suggests sponsorship or endorsement by the Complainant. In fact, the Disputed Domain Name <eservices-accenture.com> was involved in an attempt of scam.
Consequently, the Disputed Domain Names have been registered and are being used in bad faith pursuant to paragraph 4(b)(iv) 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 Names <eservices-accenture.com> and <group-accenture.com> be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: April 9, 2020