WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Larry Cole
Case No. D2017-0243
1. The Parties
The Complainant is Accenture Global Services Limited of Dublin, Ireland, represented by DLA Piper US LLP, United States of America (“United States”).
The Respondent is Larry Cole of Puchong Jaya, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <accenturetrust.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 8, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 February 15, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 8, 2017.
The Center appointed Eduardo Machado as the sole panelist in this matter on March 22, 2017. 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 a multinational company that provides management consulting, technology services and outsourcing services under the name “Accenture”. The Complainant has offices and operations in more than 200 cities in 56 countries.
The Complainant began using the mark ACCENTURE in connection with various products and services, including, but not limited to, its management consulting, technology services and outsourcing services, since January 2001. Nowadays, the Complainant owns registrations for the mark ACCENTURE in 144 countries, including United States trademark Registration No. 3,091,811, registered on May 16, 2006.
The Complainant owns and operates under the domain name <accenture.com> since August 29, 2000.
The disputed domain name <accenturetrust.com> was registered on May 3, 2016. The disputed domain is currently inactive.
5. Parties’ Contentions
A. Complainant
The Complainant states that:
1. The disputed domain name <accenturetrust.com> is confusingly similar to the ACCENTURE mark, fully incorporating the Complainant’s mark;
2. The Complainant’s ACCENTURE mark is a distinctive and well-known trademark throughout the world;
3. The word“accenture”is not a descriptive or generic term but, rather, was coined by the Complainant;
4. The Respondent has no right or legitimate interest in the disputed domain name;
5. Before being inactive, the disputed domain name used to resolve to a website for a business entitled “Accenture Trust Bank”;
6. The website the disputed domain name used to resolve to was merely a mock website for a business that did not exist, and a mock website which is not linked to an actual business does not constitute a legitimate noncommercial or fair use of a domain name;
7. The Respondent acted in bad faith in registering and using the disputed domain name, as the Respondent adopted the Complainant’s well-known mark in an attempt to appear associated or affiliated with the Complainant. 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. Therefore, the Respondent is intentionally attempting to attract users by creating a likelihood of confusion with the Complainant ACCENTURE mark.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, 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;
(ii) the Respondent has no right 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.
A. Identical or Confusingly Similar
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 Panel finds that the Complainant has proven to be the holder of numerous registered trademarks throughout the world consisting of ACCENTURE. In fact, the Complainant’s ACCENTURE mark enjoys a wide reputation, being known worldwide, as it’s been ruled by prior UDRP panels (see Accenture Global Services Limited v. ICS Inc. / PrivacyProtect.org,
WIPO Case No. D2013-2098 and Accenture Global Services Limited v. Jean Jacque / Luck Loic,
WIPO Case No. D2016-1315).
Previous UDRP panels have agreed 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 and the addition of a descriptive term is not sufficient to avoid a finding of confusing similarity (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,
WIPO Case No. D2009-1437; America Online, Inc. v. Anson Chan,
WIPO Case No. D2001-0004; Oki Data Americas, Inc. v. ASD, Inc.,
WIPO Case No. D2001-0903; and Viacom International Inc. v. Frank F. Jackson and Nancy Miller,
WIPO Case No. D2003-0755)
Therefore, this Panel concludes that the Complainant has fulfilled the first requirement under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
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.
The Panel notes that prior UDRP panels developed a consensus 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”)).
On the record, the Panel verifies that the Complainant is the owner of several ACCENTURE trademarks and that it 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.
The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. Likewise, no evidence has been found to suggest that the Respondent has commonly been known by the disputed domain name; nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, considering the absence of a response and the above-mentioned facts, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered and Used in Bad Faith
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)).
The Panel agrees it is highly unlikely that the Respondent was not aware of the Complainant’s rights by the time it registered the disputed domain name. In this sense, based on the record, the Panel accepts the Complainant’s allegation that the Respondent was aware that the ACCENTURE mark was a registered trademark at the time of the registration of the disputed domain name.
Indeed, the term “accenture” is an invented term that has achieved worldwide recognition and, thus, it is not likely that the Respondent’s choice of the disputed domain name was random.
In addition, although the disputed domain name does not resolve to an active website currently, the Panel accepts the Complainant’s allegation and evidence that the address previously shown on the contact tab of the website at the disputed domain name is actually the address of the Complainant’s office in Malaysia. In other words, it is clear that the Respondent was copying the Complainant’s address, confirming that the Respondent has had prior knowledge of the Complainant and its marks.
In light of this, the Panel concludes that the Respondent is intentionally attempting to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s ACCENTURE mark.
Consequently, the Panel finds that the disputed domain name <accenturetrust.com> has been registered and has been used in bad faith under the 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 name <accenturetrust.com> be transferred to the Complainant.
Eduardo Machado
Sole Panelist
Date: March 31, 2017
