The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“United States”).
The Respondent is Contact Privacy Inc. Customer 1246518020, Canada / Name Redacted.
The disputed domain name <accenture.llc> is registered with Google LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2020. On March 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 4, 2020, 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 March 9, 2020 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 March 11, 2020.
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 March 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 3, 2020. The Center received a third party’s communications by email on March 27, 2020 and on April 10, 2020 in which it was claimed that the person named as Respondent was not in fact the registrant of the disputed domain name, but that the person’s identity had been stolen and used fraudulently to transact the registration.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 28, 2020. 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 is an international company that provides a wide range of business services. The Complainant has a presence in more than 200 cities in 56 countries and has been doing business under its trademark ACCENTURE since January 1, 2001.
The Complainant has more than 1,000 trademarks comprising the word ACCENTURE standing alone or in combination registered in 140 countries of which the following trademarks are representative for the purposes of the present proceeding:
ACCENTURE, United States Patent and Trademark Office (“USPTO”), principal register, filed on October 26, 2000, registered on May 16, 2006, registration number 3091811, in classes 9, 16, 35, 36, 37, 41, and 42;
ACCENTURE and design, USPTO, principal register, filed on November 17, 2000, registered on December 24, 2002, registration number 2665373, in classes 9, 16, 35, 36, 37, 41, and 42;
ACCENTURE and design, USPTO, principal register, filed on February 26, 2003, registered on September 14, 2004, registration number 2884125, in classes 18, 25, and 28.
The Complainant promotes itself by means of the Internet and conducts business through its own domain name <accenture.com>. Its global advertising expenditure in recent years has been in the region of USD 67 million per year.
The background of the Respondent is discussed below. The disputed domain name was registered on February 20, 2020 and does not resolve to an active website.
The Complainant’s contentions include the following.
The Complainant states that it has rights in numerous trademarks and has produced copies of registration documents in respect of those listed in section 4 above, and others. The Complainant says its trademark is well known internationally and some registrations have achieved incontestable status under United States law. The Complainant has listed many awards, rankings and forms of recognition it has received including multiple appearances in the Fortune 100 Best Companies to Work For, and Fortune 100 Most Admired Companies. Other rankings include Forbes’ The World’s Most Valuable Brands, Forbes’ World’s Most Powerful Brands, Dividend Channel’s Top 25 Socially Responsible Dividend Stocks, TELEOS and The Know Network repeatedly as a Global Most Admired Knowledge Enterprise. The Complainant has sponsored, for example, sports teams, the Rheingau Musik Festival in Germany, and has collaborated with the Louvre Museum, France.
The Complainant says that the disputed domain name is confusingly similar to its trademark, the whole of which it incorporates. The only difference is the added generic Top-Level Domain (“gTLD”) “.llc” as a technical component of the disputed domain name, which should be of no significance in the determination of confusing similarity. The Complainant says its trademark is coined and distinctive and was first registered nearly 18 years before the disputed domain name.
The Complainant further contends that the Respondent has no legitimate interests in the disputed domain name. The Complainant’s trademark is not a generic or descriptive term. The Complainant has no connection with the Respondent, who has not been permitted to use the Complainant’s trademark or to register any domain name incorporating the trademark. The disputed domain name and the name by which the Respondent is or has apparently been known are different. The Respondent is not making a legitimate, noncommercial fair use of the disputed domain name.
The Complainant says the disputed domain name is not in use for a bona fide offering of goods or services or in any other use. It is passively held and resolves to a notice that the website cannot be reached. The Complainant submits that, having made out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name, the onus is upon the Respondent to prove otherwise.
The Complainant contends that the disputed domain name was registered and is being used in bad faith by the Respondent. The Respondent had constructive notice or should have been aware of the Complainant’s trademark in the United States and in many other jurisdictions before registration of the disputed domain name.
The Complainant says the disputed domain name is passively held without use or legitimate purpose in circumstances in which the Complainant’s trademark is distinctive and globally renowned in its field of business. It is implausible that the Respondent’s purpose was other than to trade off the fame of the Complainant’s trademark.
The Complainant submits that the use of a privacy service by the Respondent to conceal the identity of the holder of the disputed domain name is further indicative of bad faith.
The Complainant has cited a number of previous decisions under the Policy, including cases brought by the Complainant, that it considers lend weight to its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply formally to the Complainant’s contentions. On March 27, 2020, the third party sent an email to the Center, which was forwarded to the Complainant. The email stated that the person named as the Respondent knew nothing of the registration of the disputed domain name, but had discovered a series of deductions from a debit card in multiples of USD 12.00 in favour of “Google Domain”. The deductions were fraudulent and the matter was being investigated by the fraud department of the debit card issuer.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
Thus it is necessary to identify the correct Respondent, who is defined under paragraph 1 of the Rules as “the holder of a domain-name registration against which a complaint is initiated”.
The person revealed by the Registrar as being the holder of record of the disputed domain name, and therefore named as Respondent in the Amended Complaint, denies all knowledge of the matter and alleges their identity was used fraudulently in order to register the disputed domain name.
As discussed in the decision in Ingenico Group v. Contact Privacy Inc. Customer 1245626487 / Name Redacted, WIPO Case No. D2019-2899, a defence of identity theft by a named respondent should be supported by evidence, unless it is clear that the relevant complainant supports the assertion of identity theft. In the present instance, that is so. The email from the third party comprising the statement of facts surrounding the allegedly fraudulent payments from the Respondent’s debit card was received by the Center and forwarded to the Complainant on March 27, 2020. The Complainant replied on the same day, in a conciliatory tone and offering to resolve the matter as quickly as possible.
On April 10, 2020, the Complainant wrote to the Respondent saying, among other things: “Rest assured, however, the complaint has not been filed against you personally, since you are not the actual registrant of the domain name”. The Panel therefore makes a preliminary finding that the Complainant accepts that the Respondent is not the guiding mind behind the registration of the disputed domain name.
In light of the potential identity theft, the Panel has redacted the Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case, pursuant to the Rules, paragraph 16(b).
The Panel is satisfied that the Center complied with paragraph 2 of the Rules in endeavouring to serve the Complaint upon the proper Respondent. As stated by the panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, the Center “goes to some lengths to ensure that proper service is effected on the named registrant at the place disclosed in the WHOIS database or in the information supplied to the domain name Registrar. Some registrants provide only a post office box number or a convenience address. If the place of service does not happen to be the Respondent’s address as advised to the Registrar, then the Respondent has only him or herself to blame in that circumstance”.
The copies of trademark registration documents produced by the Complainant are accepted by the Panel as evidence that the Complainant has rights in the trademark ACCENTURE for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name is <accenture.llc>. The gTLD “.llc” need not be taken into account in the assessment of confusing similarity. The remainder of the disputed domain name, “accenture”, is clearly identical to the Complainant’s trademark. Accordingly, the Panel finds for the Complainant under paragraph 4(a)(i) of the Policy.
The Complainant states that it has no relationship with the Respondent, which has not been authorised to use the Complainant’s trademark in any way. In addition, the Complainant states that the Respondent is not commonly known by the disputed domain name, and has not used the disputed domain name for a bona fide offering of goods or services, or a noncommercial or fair use. Furthermore, the Complainant’s trademark is distinctive and not generic or descriptive.
The Complainant having stated a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to demonstrate otherwise. The Respondent may establish rights or legitimate interests in a disputed domain name under paragraph 4(c) of the Policy by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent has not contested the Complainant’s prima facie case and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraph 4(c) of the Policy or otherwise. In accordance with paragraph 5(f) of the Rules, the Panel finds that the Respondent is without rights or legitimate interests in the disputed domain name and finds for the Complainant under paragraph 4(a)(ii) of the Policy.
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances, without limitation, that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The disputed domain name does not resolve to any meaningful website and no evidence has been produced to the effect that it has any other application such as the basis of a legitimate email address. A screen capture made by the Complainant showed that entering the disputed domain into an Internet browser yielded effectively a blank page, with the statement “This site can’t be reached [/] www.accenture.llc’s server IP address could not be found [/ ...]”
Non-use of a disputed domain name does not obviate a finding of use in bad faith. Although previous decisions under the Policy do not constitute binding precedent, the principles discussed in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”) have gained wide recognition by UDRP panels. Noting the criteria summarised in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 3.3, the Panel finds on the evidence, and on the balance of probabilities, that the Complainant’s trademark is invented and distinctive; the Respondent did not reply to the Complaint or offer any evidence of any intended use of the disputed domain name in good faith; and there is no reasonably plausible use to which the disputed domain name could be put that would not conflict with the Complainant’s trademark.
The criteria proposed in Telstra provide a useful guide and it is not necessary to fulfil all of them. To quote the panel in that decision, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith”.
The circumstances exemplified in paragraph 4(b) of the Policy are without limitation. They are considerably compounded in this case by the evident use, on the balance of probabilities, of the identity of another person without their knowledge in order to obtain registration of the disputed domain name. In all the circumstances and on the totality of the evidence, the Panel finds on the balance of probabilities that the disputed domain name was registered and is being used in bad faith within the meaning 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 disputed domain name <accenture.llc> be transferred to the Complainant.
In Annex 1 attached to this Decision, for the avoidance of doubt and in order for this order to be implemented, the Panel identifies the name of the person on record as being the registrant of the disputed domain name and orders that the disputed domain name <accenture.llc> be transferred from that person to the Complainant.
In accordance with paragraph 16(b) of the Rules, the Panel directs that the Center shall not publish Annex 1 of this Decision.
Dr. Clive N.A. Trotman
Date: May 12, 2020
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