Accenture Global Services Limited v Rashed, Accenture Building

WIPO Case No. DAE2022-0003

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. Rashed, Accenture Building
Materials Trading L.L.C

Case No. DAE2022-0003

1. The Parties

The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery LLP,

United States of America.

The Respondent is Rashed, Accenture Building Materials Trading L.L.C, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name, <accenture-trading.ae> (the “Domain Name”), is registered with AE Domain

Administration (.aeDA).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 24, 2022. On

March 24, 2022, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the Domain Name. On March 25, 2022, AE Domain Administration (.aeDA) 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 UAE Domain Name Dispute

Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute
Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute

Resolution Policy – UAE DRP (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the the due date for Response was April 17, 2022. The Respondent did not submit any Response. Accordingly, the

Center notified the Respondent’s default on April 20, 2022.

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The Center appointed Tony Willoughby as panelist in this matter on April 26, 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, which has provided a variety of management, technology and

consulting services under and by reference to the name “Accenture” since 2001. It is the registered proprietor of

numerous trade mark registrations covering its name, including by way of example:

United Arab Emirates Registration No. 33597 dated October 7, 2002 ACCENTURE (word) in class 35 for business management consulting and related services.

The Complainant operates a website connected to its <accenture.com> domain name, a domain name which it registered on August 30, 2000.

The Domain Name was created on September 24, 2019 and registered on October 2, 2021, and does not appear to be (or ever to have been) connected to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Complainant’s ACCENTURE

trade mark; that the Respondent has no rights in respect of the Domain Name; that the Domain Name has
been registered in bad faith and although not actively in use nonetheless constitutes use in bad faith within the

meaning of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the
Complainant must prove each of the following, namely that:

(i)        the Domain Name is identical or confusingly similar to a trade mark or service mark in which the

Complainant has rights; and

(ii)       the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii)      the Domain Name has been registered or is being used in bad faith.

Given the similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”),

the Panel takes note of the applicable sections of the WIPO Overview of WIPO Panel Views on Selected UDRP

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Questions, Third Edition (“WIPO Overview 3.0”), where relevant.

B. Identical or Confusingly Similar

The Domain Name comprises the Complainant’s registered trade mark ACCENTURE followed by a hyphen, the

dictionary word, “trading”, and the “.ae” country code Top-Level Domain.

Section 1.7 of WIPO Overview 3.0 explains the test for identity or confusing similarity under the first element of the UDRP, equally applicable to the Policy, and includes the following passage:

“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a

trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the

domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”

The Complainant’s ACCENTURE registered trade mark is readily recognizable in its entirety in the Domain

Name. The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Complainant recites the circumstances set out in paragraph 4(c) of the Policy, any of which if found by the
Panel to be present shall demonstrate rights or legitimate interests for the purposes of this element of the Policy,
and contends that none of them is applicable. The Complainant asserts that it has no connection with the
Respondent and has granted the Respondent no permission to use its ACCENTURE trade mark.

In support of its case the Complainant has cited a previous case under the Policy involving its ACCENTURE trade mark, namely Accenture Global Services Limited v. Jack Martinez, WIPO Case No. DAE2018-0001 in which the panel stated:

“Based on the record in this proceeding, the Panel is satisfied that the Complainant’s ACCENTURE mark is

highly distinctive and famous throughout the world, including in the United Arab Emirates where the Respondent

is based.

Given the Complainant’s renown and goodwill worldwide, including in United Arab Emirates, it is inconceivable

that the Respondent did not have knowledge of the Complainant’s ACCENTURE trademark at the time of

registration of the disputed domain name.

As the disputed domain name reproduces the mark in its entirety with the mere addition of the descriptive term

“tech”, the Respondent, on the balance of probabilities, has registered the disputed domain name with the

purpose of deliberately causing confusion amongst Internet users in order to take unfair advantage of the

Complainant’s goodwill and reputation.”

The Panel is satisfied that the Complainant has produced sufficient evidence, unchallenged by the Respondent, to establish the existence of a substantial international reputation and goodwill under its ACCENTURE registered trade mark covering inter alia the United Arab Emirates, the home jurisdiction of the Respondent.

The Complainant acknowledges that according to the WhoIs record for the Domain Name, the Respondent has

a trading name, “accenture building materials trading l.l.c”, and therefore potentially has a defence under

paragraph 4(c)(ii) of the Policy on the basis that he or his business is commonly known by a name reflecting the Domain Name. However, the Complainant has conducted an investigation of the records of the Department of

Economic Development in Dubai, “which revealed that the license for a company with the name of ‘Accenture

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Building Materials’ was cancelled on June 3, 2018, and the records of the Department of Economic

Development in Dubai do not show any active entity by this name”. Again, the Respondent has not challenged

this evidence.

The Panel finds on the balance of probabilities that the Respondent registered the Domain Name fully aware of

the Complainant’s reputation and goodwill in respect of “Accenture”, anticipating that the Domain Name would
be associated with the Complainant. The Panel concludes that the Respondent’s use of the unregistered

business name “accenture building materials trading l.l.c” when registering the Domain Name was nothing more

than a device intended by the Respondent to provide him with a defence to the Complaint under
paragraph 4(c)(ii) of the Policy. In the view of the Panel, on no basis could the selection of such a name, in such
a manner and for such a purpose give rise to rights or legitimate interests in respect of the Domain Name in the

hands of the Respondent.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D. Registered or is Being Used in Bad Faith

The Panel has found in C above that the Respondent, with no rights or legitimate interests in respect of the

Domain Name, registered the Domain Name fully aware of the Complainant’s reputation and goodwill in respect

of “Accenture” anticipating that the Domain Name would be associated with the Complainant. The Panel cannot

conceive of any legitimate use that the Respondent could make of the Domain Name.

Thus, the Respondent knew when registering the Domain Name that in his hands the Domain Name was inherently deceptive. The Panel finds that the Domain Name has been registered in bad faith.

Under the Policy, a finding of bad faith registration is sufficient on its own for the Complainant’s purpose. The

Complaint succeeds.

7. Decision

For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <accenture-trading.ae>, be transferred to the Complainant.

/Tony Willoughby/

Tony Willoughby

Sole Panelist
Date: May 3, 2022