WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Whois Privacy Protection Service by onamae.com / Lee Black

Case No. D2019-1965

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 Whois Privacy Protection Service by onamae.com, Japan / Lee Black, Japan.

2. The Domain Name and Registrar

The disputed domain name <accenyure.com> is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2019. On August 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 16, 2019 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 August 21, 2019.

On August 16, 2019, the Center transmitted an email in English and Japanese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on August 20, 2019. 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 in English and Japanese of the Complaint, and the proceedings commenced on September 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2019.

The Center appointed Douglas Clark as the sole panelist in this matter on October 16, 2019. 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 an international business that provides management consultancy, technology and outsourcing services. The Complainant’s business is based in Ireland and has presence in over 200 cities in 56 countries. It has also done extensive worldwide advertising for its brand.

The Complainant is the owner of various ACCENTURE trademarks in the United States in different class of goods and services including Registration No. 3,091,811 in Classes 9, 16, 35, 36, 37, 41 and 42, registered on May 16, 2006; Registration no. 2,665,373 in classes 9, 16, 35, 36, 37, 41 and 42, registered on December 24, 2002; Registration No. 3,340,780 in classes 16, 18, 21, 24 and 28, registered on November 20, 2007; Registration No. 2,884,125 in classes 18, 25 and 28, registered on September 14, 2004; and Registration No. 3,862,419 in Classes 35 and 36, registered on October 19, 2010. The Complainant also owns more than 1,000 registrations for the ACCENTURE trademark in more than 140 countries including Japan.

The Complainant is also the owner of domain name <accenture.com>.

The Respondent is an individual based in Japan.

The disputed domain name was registered on May 15, 2019. According to the evidence provided by the Complainant, the disputed domain name resolved to a page displaying pay-per-click links. The disputed domain name currently resolves to a page that seems to be a platform for the sale of the disputed domain name.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the disputed domain name <accenyure.com> and the trademark ACCENTURE are confusingly similar. The disputed domain name contains ACCENTURE in its entirety as the distinctive part of the disputed domain name. The misspelled letter “y” does not affect the similarity of the domain name from the registered trademark.

No rights or legitimate Interests

The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any trademark registrations for ACCENTURE. It, therefore, has no rights or legitimate interests in the disputed domain name. There is also no relationship between the Parties and the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.

Registered and used in bad faith

The Complainant submits that there is no doubt that before registration of the disputed domain name the Respondent knew of the Complainant’s rights in the ACCENTURE trademark given its worldwide reputation and the wide variety of advertisements seen under its trade name in the world, which includes Japan. The Respondent acquired the disputed domain name to disrupt the business of the Complainant and/or to prevent the Complainant from reflecting its mark in a corresponding domain name.

B. Respondent

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

6. Discussion and Findings

6.1 Language of Proceedings

The Language of the registration agreement is in Japanese.

The Complainant requests that the language of proceedings be English on the grounds the website under the disputed domain name resolves to a webpage in English; the Respondent corresponded with the Complainant in English; and the disputed domain name is a “type-squatted” version of the Complainant’s English name. Further, the Complainant would incur additional costs in translating the complaint.

Paragraph 11(a) of the Rules provides that:

“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, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The Center made a preliminary determination to:

1) accept the Complaint as filed in English;

2) accept a Response in either English or Japanese;

3) appoint a Panel familiar with both languages mentioned above, if available.

The final determination of the language of the proceedings lies with this Panel.

The Respondent did not respond to the Center’s preliminary determination. This Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.

As set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays and expense. The Respondent also seems to understand the English language as evident in an email from the Respondent offering to sell the disputed domain name for USD 100 sent to the Complainant’s counsel on August 16, 2019.

These factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.

6.2 Substantive Issues

A. Identical or Confusingly Similar

The disputed domain name <accenyure.com> is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s ACCENTURE mark in full with a replacement of the letter “t” to a “y”. The disputed domain name is therefore confusingly similar to the Complainant’s registered trademark.

The first element of paragraph 4(a) of the Policy is therefore satisfied.

B. Rights or Legitimate Interests

The Respondent has not responded to the Complaint to assert any rights or legitimate interests. Section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

The Respondent has no business or any kind of relationships (i.e. licensor, distributor) with the Complainant. Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

The second element of paragraph 4(a) of the Policy is therefore satisfied.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has no hesitation in finding that the disputed domain name <accenyure.com> was registered in bad faith and is being used in bad faith.

The Panel finds that the Respondent would not have chosen and registered the disputed domain name in good faith without having been aware of its existing trademark, especially given its reputation and extensive use of the distinctive trademark in the world. The word “Accenyure” in itself bears no meaning, it is unlikely that the Respondent came up with this name on its own accord. The Panel is of the view that the misspelling is a type of typo-squatting and was done to create a potentially common “QWERTY” keyboard typographical error in an attempt to divert customers to the disputed domain name. (See Tumblr, Inc. v. Jingsheng Feng, WIPO Case No. D2013-0454).

On August 16, 2019, the Respondent emailed the Complainant and requested payment of USD 100 for a “domain registration fee and transfer manual fee”. According to the evidence provided by the Complainant, the disputed domain name resolved to a page displaying pay-per-click links of third parties, which shows that the Respondent was trying to unfairly profit from the complainant’s reputation. The disputed domain name currently resolves to a page that process the sale of website domains. The header of the website bears the phrase “Buy Accenyure.com For USD 200”.

These serve as clear evidence that the Respondent registered the disputed domain name with the Complainant in mind and targeting the Complainant’s trademark, and with the intention of selling it for what would likely be more than the Respondent’s out of pocket expenses contrary to paragraph 4(b)(i) of the Policy.

For the above reasons, the third part of the paragraph 4(a) of the Policy is therefore satisfied.

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 <accenyure.com> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: November 7, 2019