The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (the “United States”).
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Andy Salimon, United States.
The disputed domain name <ar-accenture.com> (the “Domain Name”) is registered with Wild West Domains, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2019. On August 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 3, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 6, 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 September 11, 2019.
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, and the proceedings commenced on September 20, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2019.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on October 22, 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.
The Complainant states that began using the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services, on January 1, 2001, and has offices and operations in more than 200 cities in 56 countries. Since January 2001, the Complainant has extensively used and continues to use the mark ACCENTURE in connection with various services and specialties, including management consulting and business process services, which comprises various aspects of business operations such as supply chain and logistics services, as well as technology services and outsourcing services, to name only a few.
The Complainant owns several trademark registrations in the United States for the ACCENTURE mark and ACCENTURE & Design mark, and variations thereof, such as the following:
- Registration No 3,091,811, ACCENTURE, registered on May 16, 2006 for various goods and services in classes 9, 16, 35, 36, 37, 41, and 42;
- Registration No 2,665,373, ACCENTURE, registered on December 24, 2002, for various good and services in classes 9, 16, 35, 36, 37, 41, and 42;
- Registration No 3,340,780, ACCENTURE, registered on November 20, 2007, for various goods in classes 6, 8, 9, 14, 16, 18, 20, 21, 24, and 28;
- Registration No 2,884,125, ACCENTURE, registered on September 14, 2004, for various goods in Classes 18, 25, and 28;
- Registration No 3,862,419, ACCENTURE, registered on October 19, 2010, for various services in classes 35 and 36.
These registrations (together, the “ACCENTURE Marks”) are valid and subsisting and serve as prima facie evidence of the Complainant’s rights on the ACCENTURE Marks. Furthermore, some of these registrations are incontestable and are conclusive evidence of the Complainant’s exclusive right to use the ACCENTURE Marks in the United States in connection with the stated goods and services. (Annex D of the Complaint.)
The Complainant owns and operates the website at “www.accenture.com”. The Complainant registered this domain name on August 30, 2000. At this website, Internet users can find detailed information about the management consulting, technology services, outsourcing and myriad other services offered by the Complainant and its global offices in connection with the ACCENTURE Marks. The Complainant has developed substantial goodwill in its ACCENTURE name and its ACCENTURE Marks, as well as its official domain name.
The Respondent registered the Domain Name on June 28, 2019 and it resolves to an inactive page.
The Complaint states that the Domain Name is highly similar to the ACCENTURE Marks. The only difference between the Domain Name and the ACCENTURE Marks is that the Domain Name adds the letters “A” and “R” with a hyphen, as a prefix. Those letters do not appear to have any meaning in this context – or, in the alternative, the letters could reference known acronyms or descriptive geographic references, such as the state of Arkansas (AR), or the country of Argentina (AR). According to the WhoIs records, the Domain Name was registered on June 28, 2019, more than 17 years after the Complainant first registered its ACCENTURE mark in the United States.
The ACCENTURE Marks are distinctive and famous, as recognized in previous UDRP decisions: Accenture Global Services Limited. ICS Inc./PrivacyProtect.org, WIPO Case No. D2013-2098.
The ACCENTURE Marks consists of a coined term and, as such, should be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand. As established in previous cases, “accenture” is not a descriptive or generic term but, rather, was coined by the Complainant, so consumers associate this term exclusively with the Complainant and its products and services.
On the other hand, the Complaint asserts that adding random characters or a descriptive term to a trademark in a domain name fails to negate confusing similarity. See Accenture Global Services Limited v. Kali, WIPO Case No. D2019-1065 (finding the domain name <in-accenture.com> confusingly similar to the ACCENTURE trademark, stating “[t]he ACCENTURE Mark is clearly recognizable within the Domain Name. The addition of the prefix ‘in-’ does not prevent the Domain Name from being confusingly similar to the ACCENTURE Mark.”). The Domain Name is confusingly similar to the ACCENTURE Marks, as well as the domain name <accenture.com>, and is likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Name.
Finally, the Complainant states that in assessing a likelihood of confusion between a registrant’s domain name and a complainant’s mark, “points of similarity are weighed more heavily than points of difference”. See Nintendo of America, Inc. v. Gray West International, WIPO Case No. D2000-1219 (finding the domain name <pokemon-games.com> confusingly similar to Complainant’s POKEMON trademark); Accenture Global Services Limited v. Whois Privacy Protection Service, Inc./Robert Green, WIPO Case No. D2013-2100 (finding the domain name <accenture-uk.com> confusingly similar to Complainant’s ACCENTURE mark and finding that the addition of “UK” is purely descriptive and does not distinguish the domain name from the trademark). In this case, Respondent’s addition of the letters “A” and “R” to the Domain Name does nothing to reduce its confusing similarity with the ACCENTURE Marks. As such, Internet users are very likely to be confused as to whether an association exists between the Domain Name and the Complainant.
The ACCENTURE Marks are not a generic or descriptive term in which the Respondent might have an interest. The ACCENTURE Marks are globally famous and have acquired secondary meaning through Complainant’s substantial, continuous, and exclusive use of the marks in connection with Complainant’s goods and services. The Respondent is neither affiliated with, nor has it been licensed or permitted to use the ACCENTURE Marks or any domain names incorporating the ACCENTURE Marks.
The Respondent is not commonly known by the Domain Name, nor was it known as such prior to the date on which the Respondent registered the Domain Name to trade on the value of the Complainant’s famous trademark, and the Respondent has chosen to use the Complainant’s famous ACCENTURE Marks as part of its Domain Name to create a direct affiliation with the Complainant and its business. Therefore, the Respondent is not making a legitimate, noncommercial fair use of the Domain Name. Policy, paragraph 4(c)(iii).
The Respondent is not using the Domain Name for any purpose at this time. Instead, the Domain Name resolves to a page that is otherwise blank except for an Internet browser error message stating “this site can’t be reached”. (Annex T of the Complaint.) Prior UDRP panels have found that the inactive holding of a Domain Name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Respondent’s failure to use the Domain Name to provide a bona fide offering of goods and services confirms that it does not have a right or legitimate interest in the Domain Name, particularly since the Complainant has proven its rights in the ACCENTURE Marks.
The Complainant notes that the Respondent has held the Domain Name for over two months and has failed to make any developments or “demonstrable preparations” to use the Domain Name with a bona fide offering of goods or services. The Respondent registered the Domain Name 18 years after the Complainant began using its ACCENTURE mark in commerce and 19 years after the Complainant had registered the domain name <accenture.com>.
Given the Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE Marks on the Internet, the Respondent was or should have been aware of the ACCENTURE Marks long prior to registering the Domain Name. In the present case, the Complainant has demonstrated that the ACCENTURE Marks are distinctive and well known throughout the world, and it is highly unlikely that Respondent registered the Domain Name independently for its own purposes. A high degree of renown attaches to the ACCENTURE Marks as a result of its extensive use and promotion of the trademark in relation to its world-renowned business management consulting, technology services and outsourcing services, such that it is implausible for the Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of the ACCENTURE Marks. Furthermore, Respondent has concealed its identity using a WhoIs proxy service. These facts are indicative of the Domain Name being held passively and in bad faith. See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”) Similar to the above-referenced cases, the Respondent’s failure to use the Domain Name is evidence of bad faith registration and use of the Domain Name.
Finally, given the well-known status of the ACCENTURE Marks and the Complainant’s registration and use of the domain <accenture.com>, there is no reason for the Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of the Complainant’s Marks.
The Respondent did not reply to the Complainant’s contentions.
The Panel considers that all the information provided by the Complainant attests that the Domain Name <ar-accenture.com> is confusingly similar to the ACCENTURE Marks. Further, the Domain Name reproduces exactly and completely the well-known trademark ACCENTURE, with all its letters placed in the same order.
Accordingly, the Panel agrees with the Complainant’s contentions that the adjunction of the prefix formed by the letters “a” and “r” should be disregarded as does nothing to reduce its confusing similarity with the Complainant’s ACCENTURE Marks. The Panel reaches the same conclusion regarding the hyphen included in the Domain Name.
Therefore, this first requirement has been satisfied.
The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests it may have in the Domain Name. Neither has the Respondent refuted the allegations made by the Complainant.
Moreover, the Panel has not found the occurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the owner of registered trademarks and associated domain names, including the ACCENTURE Marks which are prior to the Respondent’s registration of the Domain Name, and that it has not licensed the use or exploitation of its ACCENTURE Marks to the Respondent.
Accordingly, and considering the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complainant has also fulfilled the second element required by the Policy.
This third element requires the Complainant to prove that the Domain Name (1) was registered in bad faith and (2) is being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The disputed domain name incorporates the ACCENTURE Marks entirely. The addition of prefixed letters “a” and “r” does not modify the overall impression of the Domain Name which is confusingly similar to the Complainant’s trademarks.
The Panel finds the Respondent must have had knowledge of the ACCENTURE Marks and its rights therein at the time the Respondent registered the Domain Name. These findings are based on: (i) the Complainant’s trademarks having a strong reputation and being widely known internationally; (ii) the Domain Name is confusingly similar to the Complainant’s trademark; (iii) the above finding of the Respondent having no rights or legitimate interests in the Domain Name, and (iv) the Respondent is not using the Domain Name for any purpose at this time, instead it resolves to a page that is otherwise blank except for an Internet browser error message stating “this site can’t be reached”.
Finally, given the confusing similarity of the Domain Name with the ACCENTURE Marks and in light of the use given to the Domain Name, the Panel agrees that the Respondent’s motive to register the Domain Name can only have been to create a likelihood of confusion with the Complainant’s ACCENTURE Marks within the meaning of paragraph 4(b)(iv) of the Policy.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 3.3, describes the circumstances under which the passive holding of a domain will be considered to be a bad faith registration: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See Andrey Ternovskiy dba Chatroulette v. WhoisGuard Protected, WhoisGuard, Inc. / Armando Machado, WIPO Case No. D2018-0082.
Consequently, for all these reasons, the Panel finds that the Complainant has met the third element required of 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 Domain Name <ar-accenture.com> be transferred to the Complainant.
Rodrigo Velasco Santelices
Date: October 28, 2019
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