The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP, United States of America (“US”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Cotteleer Christiaan, Belgium.
The disputed domain name <accenture-cas.com> is registered with NameCheap, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 18, 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 May 20, 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 May 21, 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 May 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2020.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on June 22, 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 Accenture Global Services Limited, an international company that provides services and solutions in strategy, consulting, technology, and operations, under the ACCENTURE mark. The Complainant has offices in more than 200 cities in 56 countries.
The Complainant is the owner of various registrations worldwide for the ACCENTURE mark, including US trademark registration number 3,091,811 registered on May 16, 2006 in relation to goods and services of classes 9, 16, 35, 36, 37, 41 and 42.
The Complainant owns the domain name <accenture.com>, which was registered on August 29, 2000.
The disputed domain name was registered on April 20, 2020. According to the evidence presented by the Complainant, the disputed domain name used to resolve to a hosted website that promotes other sponsored click-through links and websites.
Firstly, the Complainant asserts that the disputed domain name is confusingly similar to the ACCENTURE mark. The only difference between the disputed domain name and Complainant’s ACCENTURE mark is the addition of a hyphen and the letters “CAS”, which appear to be intended to create a direct reference to Complainant’s “Accenture CAS” business division resulting from Complainant’s 2010 acquisition of CAS Computer Anwendungs-und Systemberatung AG (“CAS”), a leading international provider of Customer Relationship Management (“CRM”) and mobility software focused on retail execution and trade promotions for the consumer products industry.
Secondly, the Complainant contents that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, its ACCENTURE mark is not a generic or descriptive term in which the Respondent might have an interest. The Complainant asserts that the Respondent is neither affiliated with, nor has it been licensed or permitted to use the Complainant’s ACCENTURE mark or any domain names incorporating the ACCENTURE mark. Moreover, the Complainant claims that the Respondent is not commonly known by the disputed domain name and it appears that Respondent has chosen to use Complainant’s famous ACCENTURE mark as its domain name to create a direct affiliation with Complainant and its business. The Complainant also mentions that the disputed domain name was used to create an “@Accenture-CAS.com” email address, which was used to pose as a representative of the Complainant to send an email message to Notebook.de seeking to acquire IT products and otherwise perpetuate a financial fraud under the Complainant’s name.
Thirdly, the Complainant claims that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent had constructive notice that the ACCENTURE mark was a registered trademark in the US and many other jurisdictions worldwide. Further, the Complainant asserts that the Respondent is not using the website at the disputed domain name for any legitimate purpose, but instead this website promotes other sponsored click-through links and websites.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy places a burden on the Complainants to prove the presence of three separate elements. The three elements can be summarized as follows:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants has rights; and
(ii) the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the Top-Level Domain suffix “.com” may be disregarded (LEGO Juris A/S v. Whois Data Protection Sp. z o.o. / Mirek Nowakowski ROSTALCO Sp. z o.o., WIPO Case No. D2012-0607).
The relevant part of the disputed domain name is therefore the section “accenture-cas”, which contains the elements “accenture” and “cas”. The “accenture” element is identical to the word element of the ACCENTURE mark, while the element “cas” has no descriptive meaning in the English language. As noted by many previous UDRP panels, where a trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element (See Accenture Global Services Limited v. Domains By Proxy, LLC / Norman Shaaban, WIPO Case No. D2018-0731). Here, the ACCENTURE mark is readily identifiable within the disputed domain name. Moreover, the inclusion of “cas” in this case appears to refer to the Complainant’s own Accenture CAS business division and software tools.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the ACCENTURE mark and as a consequence, the Complainant has met the requirement of paragraph 4(a)(i) of the Policy.
The overall burden of proof on this element rests with the Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. (See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1 and cases cited therein).
The Panel notes the following circumstances presented in the Complaint in relation to any possible rights or legitimate interests of the Respondent in the disputed domain name: (a) the Respondent is not affiliated or related to the Complainant in any way; (b) the Respondent is neither licensed nor authorized by the Complainant to use its marks; (c) there is no evidence that the Respondent has been commonly known by the disputed domain name; (d) the Respondent has not demonstrated use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. In particular, the use of the disputed domain name to run click-through links or to redirect users to sponsored websites does not qualify as a bona fide offering of goods and services (See Maker Studios, Inc. v. ORM LTD / Contact Privacy Inc. Customer 0137258808, WIPO Case No. D2014-0918).
Accordingly, in the absence of any evidence to support a possible basis on which the Respondent may have rights or legitimate interests in respect of the disputed domain name, the Panel accepts the Complainant’s unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and concludes that the second element of paragraph 4(a) of the Policy is satisfied.
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove the registration as well as use in bad faith of the disputed domain name.
Firstly, the disputed domain name was registered years after the ACCENTURE was registered. In the Panel’s opinion, the notoriety of use of the Complainant’s mark all around the world and the similarity of the disputed domain name with the mark itself indicates that the Respondent knew or should have known about the Complainant’s rights when registering the disputed domain name (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). As previously noted, the inclusion of “cas” in the disputed domain name appears to refer to the Complainant’s own Accenture CAS business division and software tools.
Secondly, the Respondent’s use of the disputed domain name to redirect Internet user to commercial websites through various sponsored click-through links constitutes bad faith and indicates that Respondent registered and is using the disputed domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s ACCENTURE mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In addition, the Respondent used a privacy shield for the registration of the disputed domain name. While the use of a privacy shield cannot be considered in itself as use in bad faith, once connected with additional elements, it may be further evidence of a registration and use in bad faith (Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. D2009-0571).
In the light of above, the Panel finds that paragraph 4(a)(iii) of the Policy is 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-cas.com> be transferred to the Complainant.
Date: July 6, 2020
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