Accenture Global Services Limited v PRASHANT DHAR, Accenture

WIPO Case No. D2022-3181

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. PRASHANT DHAR, Accenture

Case No. D2022-3181

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 PRASHANT DHAR, Accenture, India.

2. The Domain Name and Registrar

The disputed domain name <accenturecompany.net> is registered with Google LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2022. On August 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2022, 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 September 9, 2022, 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 14, 2022. The Respondent sent an informal communication to the Center on September 9, 2022, September 15, 2022, September 16, 2022, and September 17, 2022. The Center sent a Possible Settlement communication to the parties on September 12, 2022, and September 19, 2022.

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 October 6, 2022. In accordance with the Rules, paragraph
5, the due date for Response was October 26, 2022. The Center proceeded to panel appointment on
November 2, 2022.

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The Center appointed Redondo Aguilera, Ada L as the sole panelist in this matter on November 8, 2022.
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 a broad range of services and solutions in strategy, consulting, digital, technology and operations under the name ACCENTURE and is the owner of the ACCENTURE trademark and company name.

Accordingly, the Complainant is the owner of the ACCENTURE Trademark rights, in many jurisdictions of the
world, included but not limited the United States of America, with the following registrations at the United

States Patent and Trademark Office:

Registration Registration

Trademark Goods and services Number date

ACCENTURE	Various goods and services in	3,091,811	May 16, 2006
classes: 9, 16, 35, 36, 37, 41 and 42
ACCENTURE (design)	Various goods and services in	2,665,373	December 24, 2002
classes: 9 16, 35, 36, 37, 41 and 42
ACCENTURE (design)	Various goods and services in	3,340,780	November 20, 2007
classes: 6, 8, 9, 14, 16, 18, 20, 21 24 and 28
ACCENTURE (design)	Various goods in classes 18,	2,884,125	September 14, 2004
25 and 28
ACCENTURE (design)	Various services in classes 35	3,862,419	October 19, 2010
and 36

The Complainant owns and operates the website at “accenture.com”, since 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 ACCENTURE mark has been recognized in Interbrand’s Best Global Brands Report since 2002, when it ranked 53rd. The ACCENTURE mark ranked 32nd in the 2021 Interbrand’s Best Global Brands Report, its second highest ranking ever in the report.

Also, the Complainant supports numerous social development projects worldwide in connection with the ACCENTURE Marks including, but not limited to, its SKILLS TO SUCCEED initiative, which has equipped more than 3 million people around the world with the skills to find a job or build a business. Millions of sports fans encounter the ACCENTURE Marks, as the Complainant has served as a communications, media and entertainment partner for the Golden State Warriors basketball team, providing fan experiences, a mobile app, and education initiatives. And from 2012 to 2017, the Complainant was the Official Technology Partner for the RBS 6 Nations Rugby Championship. Moreover, the Complainant was a global umbrella sponsor of the World Golf Championships and the title sponsor of 11 the series’ season-opening event, the Accenture Match Play Championship. Information regarding the Complainant’s involvement with the Golden State Warriors and in the RBS 6 Nations Rugby Championship.

The Complainant also has collaborated with various groups on cultural initiatives across the world. For example, it collaborated with the Louvre Museum to develop new technological programs designed to support the Louvre’s initiatives to spread culture, enhance its image and reach new segments of the public.

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The Complainant is also an official connections partner of the Cannes Lions Festival, and in 2017, the long time before the date on which the Respondent registered the disputed domain name.

Complainant introduced innovative wearable technologies allowing delegates to exchange business
information by simply bumping wrists. Information regarding the Complainant’s collaboration with the Louvre
Museum and Cannes. As a result of the above-described extensive use and promotion, the ACCENTURE

The disputed domain name was registered on July 24, 2022, nearly 20 years after the Complainant first registered its ACCENTURE mark in the United State of America, and also almost 17 years after the trademark registration in India. The disputed domain name <accenturecompany.net> resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to its trademark ACCENTURE due to the fact that the trademark is included in its entirety with the addition of the word “company”. Also, the Complainant argues that the Respondent has no rights or legitimate interests with respect to the disputed

domain name and finally, that the Respondent registered and is using the disputed domain name in bad

faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, however the Respondent sent several
informal communications to the Center on September 9, September 15, September 16, and September 17,
2022. The Respondent consented to remedy in its informal communication from September 9, September
16, and September 17, 2022. Despite the Respondent consented to remedy, the Panel still finds it

appropriate to proceed to a substantive decision on the merits.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established its trademark rights on the ACCENTURE trademark. The test that a panel must do in order to establish if a domain name is confusingly similar to a trademark involves the comparison between the trademark and the disputed domain name.

Regarding whether the disputed domain name is identical or confusingly similar to the ACCENTURE trademark, this Panel observes that the disputed domain name is comprised of: (a) the Complainant’s trademark ACCENTURE entirely; (b) with the addition of the word “company”; (c) followed by the generic Top-Level Domain (“gTLD”) “.net”.

The disputed domain name incorporates the Complainant’s trademark ACCENTURE in its entirety. It is well established that where a domain name incorporates a complainant’s trademark in its entirety, the domain name will be normally considered confusingly similar to that mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The disputed domain name also comprises the word “company”. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.

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The addition of the gTLD “.net” is a technical requirement and therefore is irrelevant in this case to determine the confusing similarity between the trademark and the disputed domain name.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired
no trademark or service mark rights; or (iii) the respondent is 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.

Even though the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a domain name in dispute, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made out, the burden of proof shifts to the respondent to come forward with relevant allegations and evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with arguments or evidence proving its rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that the Respondent is not commonly known by the disputed domain name or the trademark ACCENTURE, and also the Complainant sustains that the Respondent has not been authorized by the Complainant to register or use the trademark ACCENTURE in any way including the disputed domain name. The website that is displayed on the disputed domain name does not show any bona fide offering of goods or services, due to the fact that disputed domain name is inactive.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response to the Complainant’s contentions from the Respondent, the prima facie case established by the Complainant has not been refuted by the Respondent.

In the present case, the Panel has the view that the Respondent, by using the trademark ACCENTURE in
the disputed domain name without any content or as inactive website, does not constitute a bona fide
offering goods or services or legitimate noncommercial or fair use within paragraphs 4(c)(i) and (iii) of the
Policy. Regarding paragraph 4(c)(ii) of the Policy, the Panel notes that there is no evidence that the
Respondent has been commonly known by the term “accenture” or the disputed domain name.

In conclusion, in this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence in its informal communications sent to the Center to rebut the Complainant’s prima facie case. However, the Respondent consented to transfer to the Complainant the disputed domain name. Furthermore, the Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the ACCENTURE trademark. That the Complainant does not have any type of business relationship with the Respondent.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name to demonstrate or show that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services:

(a) The Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons
to justify the choice of the term “accenture” in the disputed domain name and in its business operation.

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There has been no evidence to show that the Complainant has licensed or otherwise permitted the
Respondent to use the ACCENTURE marks or to apply for or use any domain name incorporating the

ACCENTURE trademark.

(b) There has been no evidence adduced to show that the Respondent has been commonly known by the
disputed domain name. There has been no evidence adduced to show that the Respondent has any
registered trademark rights with respect to the disputed domain name. The Respondent registered the
disputed domain name long after the ACCENTURE trademarks became widely known. The disputed

domain name is confusingly similar to Complainant’s ACCENTURE trademarks.

(c) There has been no evidence presented in the present case to show that the Respondent is making a
legitimate noncommercial or fair use of the disputed domain name. The website resolved by the disputed

domain name is currently inactive.

(d) The constitution of the disputed domain name with the addition of the term “company” cannot constitute

fair use as it impersonates or suggests sponsorship or endorsement to the Complainant’s trademark.

In light of the above, the Complainant has complied with the second element of the Policy. Accordingly, the

Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

This Panel finds that, based on the record, the Complainant has demonstrated the existence of the accordingly it is a cumulative requirement.

Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. In order to prevail under the Policy, the

The Panel is satisfied that the Respondent must have been aware of the trademark ACCENTURE when it registered the disputed domain name as the disputed domain name contains the trademark ACCENTURE in its entirety, together with the word “company”, term that could be related to the ACCENTURE company itself.

The Panel finds that the evidence in the case shows that the Respondent registered and has used the disputed domain name in bad faith.

The Panel accepts the Complainant’s submissions that the Respondent registered the disputed domain name with the intention of referring to that trademark. The Panel also accepts the Complainant’s contention that the additional term “company” in the disputed domain name can create confusion or risk of association of the disputed domain name with the Complainant, even if the website at the present moment is inactive.

The disputed domain name is currently inactive. In terms of inactive domain names, section 3.3 of the WIPO Overview 3.0 provides: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding.”

Section 3.3 of the WIPO overview 3.0 further states:

“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.”

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In the present case, the Complainant’s ACCENTURE trademark is well known, the Respondent did not reply to the Complainant’s contentions and there is not implausibility of any good faith use which the domain name put itself. Taking into account all the circumstances of this case, the Panel concludes that the current

inactive use of the disputed domain name by the Respondent is in bad faith.

In the absence of convincing evidence and rebuttal to the contrary from the Respondent, the choice of the disputed domain name and the conduct of the Respondent are indicative of registration and use of the disputed domain name in bad faith.

The Panel therefore finds that the disputed domain name has been registered and used in bad faith.

Therefore, the Panel sustain that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

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 <accenturecompany.net> be transferred to the Complainant.

/Ada L. Redondo A./
Ada L. Redondo A.
Sole Panelist
Date: November 18, 2022.