The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“USA”).
The Respondent is Oneandone Private Registration, 1&1 Internet Inc, USA / Gulam Sayeed Pasha, United Arab Emirates.
The disputed domain name <accenture-trading.com> (the “Domain Name”) is registered with 1&1 IONOS Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2019, naming the Respondent as Oneandone Private Registration, 1&1 Internet Inc.
The Center sent its request for registrar verification to the Registrar on July 9, 2019. The Registrar replied on July 13, 2019, confirming that the Domain Name is registered with it, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies, that the Domain Name will expire on May 25, 2020, that the Domain Name has been locked against change by the registrant, that the language of the registration agreement is English, and that the current registrant registered or acquired the Domain Name on May 25, 2019. The Registrar also provided the contact details for the Domain Name held on its WhoIs database.
The Center forwarded the contact details provided by the Registrar to the Complainant on July 22, 2019, inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 24, 2019, naming the Respondent as Gulam Sayeed Pasha and updating the Complaint to report and discuss a new web page located at the Domain Name.
The Center verified that the Complaint and the amended Complaint satisfied the formal requirements of the 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 paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2019. In accordance with paragraph 5 of the Rules, the due date for Response was August 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2019.
The Center appointed Jonathan Turner as the sole panelist in this matter on August 29, 2019. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
The Complainant provides management consulting, business process, technology, outsourcing and other services. It has offices and operations in more than 200 cities in 56 countries.
The Complainant commenced using the mark ACCENTURE in relation to its services at the beginning of 2001. The Complainant has registered this mark in the USA and in more than 140 other countries. The registrations include USA Mark No. 3,091,811, registered on May 16, 2006, pursuant to an application on October 26, 2000.
The Complainant has promoted the mark ACCENTURE through its website at “www.accenture.com” and extensive advertising expenditure ranging from USD 67 million to USD 77 million in each of the years from 2009 to 2017. The mark has been recognized by a number of analysts as a leading global brand.
The Complainant supports social development projects such as an initiative called “skills to succeed” that has equipped more than 1.2 million people around the world with the skills to find a job or build a business. The Complainant also sponsors sports championships and cultural activities.
The Domain Name was registered on May 25, 2019. At the date of filing of the original Complaint the Domain Name located a web page that presented sponsored links to further search pages or to commercial websites of other parties. At the date of filing of the amended Complaint the Domain Name located a WordPress website template without any non-template content other than the words “Accenture Building Materials Trading”.
The Complainant sent an email on June 18, 2019 to the address listed in the public WhoIs data for the Domain Name, requesting the underlying WhoIs data in order to contact the registrant. The Registrar replied by email the same day, instructing the Complainant to complete a web form, and stating that it would ensure that the message is forwarded to the domain owner’s email address. The Complainant completed the form, but did not receive any reply.
The Complainant contends that the Domain Name is confusingly similar to the mark ACCENTURE in which it has registered and unregistered rights. The Complainant points out that the Domain Name consists of this mark followed by a hyphen, the descriptive term “trading” and the generic Top-Level Domain (“gTLD”) suffix, which is normally discounted in making the comparison required by the first substantive requirement of the UDRP.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name or any corresponding name. The Complainant points out that ACCENTURE is not a generic or descriptive term which the Respondent could have any interest in using, but rather is the Complainant’s established and distinctive mark. The Complainant confirms that the Respondent is not affiliated with the Complainant and has not been licensed by the Complainant to use its ACCENTURE mark. The Complainant maintains on information and belief that the Respondent is not commonly known by the Domain Name and points out that the Respondent used a privacy proxy service to mask its identity. The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name and that neither of the web pages described above makes a bona fide offering of goods or services.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant observes that the Respondent must have known of the Complainant under its well-known and distinctive mark. The Complainant contends that the Respondent’s use of the Domain Name for a page displaying sponsored links to third party websites intentionally attempted to attract Internet users to that web page by creating a likelihood of confusion with the Complainant’s mark for commercial gain in the form of click-through commissions. The Complainant further submits that the subsequent retention of the Domain Name locating only a template constitutes a passive use in bad faith.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 4(a) of the Policy, to succeed in this Complaint, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is convenient to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s failure to file a response. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
The Panel finds on the evidence that the Complainant has registered and unregistered rights in the mark ACCENTURE.
The Panel further finds that the Domain Name is confusingly similar to this mark. The Domain Name consists of this mark followed by a hyphen, the word “trading” and the gTLD suffix, “.com”. The word “trading” is descriptive and does not prevent a finding of confusing similarity, while the gTLD suffix should be discounted for the purpose of this requirement.
The first requirement of the UDRP is satisfied.
The Panel considers that the Respondent’s use of the Domain Name to locate a page displaying sponsored links to commercial websites of third parties does not constitute a bona fide offering of goods or services for the purposes of paragraph 4(c)(i) of the UDRP. No real goods or services were provided and it was not bona fide because it used the Domain Name to attract Internet users by its confusing similarity to the Complainant’s established and distinctive mark. Nor was it a legitimate noncommercial or fair use; on the contrary it was commercial since the Respondent profited by click-through commissions, unfair, and misleadingly diverted consumers.
The subsequent direction of the Domain Name to a template also did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and in any case was after notice of the dispute.
In addition, it is clear that the Respondent is not commonly known by the Domain Name and was not licensed to use it or connected with the Complainant.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. The second requirement of the UDRP is satisfied.
Given the extent of the Complainant’s established reputation under its distinctive ACCENTURE mark and the obvious confusing similarity of the Domain Name to this mark, it can be inferred that the Respondent knew of the Complainant’s reputation and intended to target the Complainant by its registration of the Domain Name.
Furthermore, the Panel finds on the undisputed evidence that the Respondent intentionally attempted to attract Internet users to its web page displaying sponsored links by creating a likelihood of confusion with the Complainant’s mark as to the source of that web page or location, for commercial gain in the form of click‑through commissions.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. There is no evidence displacing this presumption. Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to direct that the Domain Name be transferred to the Complainant.
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 <accenture-trading.com> be transferred to the Complainant.
Date: September 12, 2019
Stay updated! Get new cases and decisions by daily email.