The Complainant is Accenture Global Services Limited of Chicago, United States of America, represented by DLA Piper US LLP, United States of America.
The Respondent is "Accenture" of Paris, France.
The disputed domain name <accenture-fr.com> is registered with Register.IT SPA (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 20, 2016. On February 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 23, 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. On February 24, 2016, the Center sent an email communication to the Complainant, confirming that the Registration Agreement for the disputed domain name was French, and inviting the Complainant to submit evidence of an agreement between the Parties that the language of proceedings should be English; or submit the Complaint translated into French; or submit a request for English to be the language of proceedings. On February 25, 2016, the Center received an email communication from the Complainant, followed on the same day by another mail in which the Complainant requested English to be the language of proceeding. The Respondent did not reply to that request.
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 in both English and French, and the proceedings commenced on March 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 24, 2016.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 4, 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.
The Complainant is a company seated in Ireland that provides management consulting, technology and outsourcing services under the brand ACCENTURE since 2001, notably with regards to personnel, recruitment and human relation services. The Complainant is ranked in the Fortune Global 500 and has been listed No. 45 in Fortune's 100 World's Most-Admired Companies in 2014. It has received numerous awards for its business, products and services provided under the ACCENTURE mark.
The Complainant holds trademark rights in the ACCENTURE mark that has been registered on a worldwide basis, notably in the United States of America, where the Complainant filed its first application on October 6, 2000 for classes 9, 16, 35, 36, 37, 41 and 42, a filing that got registered on May 16, 2006 (Reg. No. 3,091,811). The Complainant also owns trademark rights in ACCENTURE in France where the Respondent is arguably located, where it holds a registration No. 3071818 under the same classes with a priority date as of December 19, 2000.
The Complainant has significantly invested in marketing campaigns to promote its ACCENTURE mark, including in the Save the Children program, the Solidarity Marathon in Buenos Aires, cultural initiatives such as a collaboration with the Louvre Museum to develop new technological programs or sports events such as the World Golf Championships. The Complainant also was the Official Technology Partner for the 2012 and 2013 RBS 6 Nations Rugby Championship, a partnership that will continue until 2017.
In 2014, the ACCENTURE mark has been recognized in the "Interbrand's Best Global Brands report" as the 44th most valuable trademark in the world, respectively 55th by the BrandZ – Top 100 Brand Ranking.
The Complainant owns and operates under the domain name <accenture.com> since August 29, 2000.
The Respondent registered the disputed domain name <accenture-fr.com> on December 15, 2015, which automatically redirects visitors to the Complainant's official website <accenture.com>.
On January 4, 2016, a person using an email address associated with the Respondent sent an email to at least two of the Complainant's customers, claiming to be D. C., a "sale manager of ACCENTURE SAS", with an address in Paris, France, requesting payment. D. C., a true Complainant's employee, did never send or authorize the sending of this email.
The Complainant argues that its ACCENTURE mark amounts to a well-known trademark. It first asserts that the disputed domain name <accenture-fr.com> is confusingly similar to its ACCENTURE mark as it entirely incorporates such mark.
The Complainant then affirms that the Respondent has neither rights nor legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise permitted the Respondent to use its mark. The Respondent does not make a bona fide offering of goods or services.
The Complainant finally alleges that the Respondent registered and uses the disputed domain name in bad faith. Considering the well-known character of the ACCENTURE mark, the Complainant is of the opinion that the Respondent had constructive notice that the ACCENTURE mark was a registered trademark prior to the registration of the disputed domain name. According to the Complainant, the Respondent registered, used and, upon information and belief, continues to use the disputed domain name to intentionally mislead and confuse consumers into believing that the Respondent is the Complainant or at least affiliated with the Complainant in order to obtain money from individuals and consumers. Such use obviously consists of a use in bad faith. The Respondent's bad faith would all the more be obvious than the WhoIs information is incorrect.
The Respondent did not reply to the Complainant's contentions.
Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. In the present case, the language of the Registration Agreement is French.
The Complainant submitted its Complaint in English and requested the language of the proceeding to be English based on, among others, the correspondence from the Respondent to a third party which is entirely in English. The Respondent has not submitted any comments in this regard despite having been given the opportunity. The Center notified the commencement of the administrative proceeding in both English and French. In these circumstances, and taking into account the Respondent's default, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate in this case to determine that the language of the proceeding be English.
Paragraph 15(a) of the Rules instructs this Panel to "[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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 has been registered and is being used in bad faith.
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of numerous verbal trademarks throughout the world consisting of the word "Accenture", including in France where the Respondent is arguably located. As already ruled by prior UDRP panels (Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098), there is no doubt in the Panel's opinion that the ACCENTURE mark enjoys a wide reputation.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark, a well-known one, consists of the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The addition of a geographical term such as "fr" (for France) is merely descriptive and does not exclude the confusing similarity (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363). To the contrary, it rather strengthens the confusing similarity by making Internet users mistakenly believe that the website might be the Complainant's official website in France.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent panels developed a consensual view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent's burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
In the present case the Complainant is the owner of numerous ACCENTURE trademarks. The Complainant has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
On its side, the Respondent has not answered to the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of the Complainant's trademarks. In the present case, the Complainant is the owner of numerous ACCENTURE trademarks, which enjoy a worldwide reputation.
Considering the worldwide reputation of the ACCENTURE mark, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name <accenture-fr.com> in good faith, without having been aware of the ACCENTURE trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
There is no doubt in the Panel's opinion that the Respondent was very well aware of the Complainant's trademarks, and that the disputed domain name has been registered, and is being used to attract Internet users to the Respondent's website for commercial gain, by creating a likelihood of confusion and leading Internet users to believe that the Respondent's website is the Complainant's official website in France, or at least affiliated to the Complainant. As evidenced by the emails sent by the Respondent on January 4, 2016, the disputed domain name <accenture-fr.com> is used for scam purposes, which obviously has to be considered as use in bad faith.
Consequently, the Panel is of the opinion that the disputed domain name <accenture-fr.com> has been registered and is being used in bad faith under the paragraph 4(a)(iii) 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 name <accenture-fr.com> be transferred to the Complainant.
Date: April 8, 2016
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