The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Paul Abayon, Philippines.
The disputed domain name <accenture-ph.com> is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2019. On September 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 17, 2019, 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.
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 September 19, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 14, 2019.
The Center appointed Douglas Clark as the sole panelist in this matter on November 7, 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, founded in 2009 as Accenture, 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 has spent on average USD 69 million in advertising from 2009 to 2017.
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 6, 8, 9, 14, 16, 18, 20, 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.
The Complainant is also the owner of the domain name <accenture.com>.
The Respondent is an individual based in United States.
The disputed domain name was registered on July 13, 2019 and does not resolve to an active page.
The Complainant contends that the disputed domain name <accenture-ph.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 additional hyphen and shortened geographical term “ph” do not affect the similarity of the disputed 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 extensive advertisements seen under its trade name in the world. 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.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name <accenture-ph.com> is confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s ACCENTURE mark in full with a hyphen and a geographical term “ph” which commonly represents the Philippines. The Complainant’s trademark is clearly recognizable in the disputed domain name. The additional geographical term does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s ACCENTURE mark.
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
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 (e.g., 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.
The Panel finds that the disputed domain name <accenture-ph.com> was registered in bad faith and is being used in bad faith. Other than the geographical indicator “ph” the disputed domain name is identical to the Complainant’s trademark and the disputed domain name can only have been registered to attract users to a website under the disputed domain name.
The fact that the disputed domain name does not resolve to an active page does not preclude a finding that it has been used in bad faith. It is well established that passive use or non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. See, WIPO Overview 3.0, section 3.3, Telstra Corporative Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003.
Under all the circumstances of this case as described above, the Panel is convinced that the Respondent registered the disputed domain name with the Complainant’s mark in mind and has used the disputed domain name in bad faith.
The third part of paragraph 4(a) of the Policy is therefore satisfied.
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-ph.com> be transferred to the Complainant.
Date: November 26, 2019
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