Accenture Global Services Limited v Richard Y
WIPO Case No. D2024-0418
•21-03-2024
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Accenture Global Services Limited v. Richard Y
Case No. D2024-0418
1. The Parties
The Complainant is Accenture Global Services Limited, Ireland, represented by McDermott Will & Emery
LLP, United States of America.
The Respondent is Richard Y, India.
2. The Domain Name and Registrar
The disputed domain name <accentureitsolutions.online> is registered with Hostinger Operations, UAB (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2024.
On January 30, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 31, 2024, 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 (Privacy Protect, LLC (PrivacyProtect.org)) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 31,
2024, 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
February 5, 2024.
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 5, the due date for Response was February 27, 2024. The Respondent sent informal email communications to the Center on February 7 and February 8, 2024. The Center notified the commencement of Panel appointment process on February 28, 2024.
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The Center appointed Christos A. Theodoulou as the sole panelist in this matter on March 7, 2024. 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 in strategy, consulting, digital, technology, and operations under the name ACCENTURE and is the owner of the ACCENTURE trademark and company name, and marks fully incorporating the ACCENTURE trademark (collectively the “ACCENTURE Marks”), according to the uncontested allegations of the Complainant.
| Complainant filed a United States of America trademark application (Application Serial No.76/154,620) for | The Complainant is the owner of the ACCENTURE Marks and its variations. On October 6, 2000, in the United States: |
| - | Indian Trademark Registration No. 967046, ACCENTURE, registered on October 30, 2000; |
| - | Indian Trademark Registration No. 967047, ACCENTURE, registered on October 30, 2000; |
| - | Indian Trademark Registration No. 1240312, ACCENTURE, registered on September 29, 2003; |
| - | United States Trademark Registration No. 2665373 ACCENTURE & Design, registered on December 24, 2002; |
| - | United States Trademark Registration No. 2884125 ACCENTURE & Design, registered on September 14, 2004; |
- United States Trademark Registration No. 3091811 ACCENTURE, registered on May 16, 2006; Further, the Complainant owns the domain name <accenture.com>. The Complainant registered this domain name on August 29, 2000.
The disputed domain name <accentureitsolutions.online> was registered on December 11, 2023. At the time of the filing of the Complaint, the disputed domain name resolved to a website that advertises services such as web design, UX design, web marketing, and web applications development (Annex T of the Complaint).
The Respondent, as it can be inferred from the case file, seems to be active in the IT field. No other information is available in the file.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that the Respondent registered and is using the disputed domain name in bad faith.
The Complainant contends that it searched public corporate and address records for the “Accenture Solutions” and “Accenture IT Solutions” names listed on the website at the disputed domain name, as well as the Los Angeles, California address listed on the website, and has been able to find no information suggesting that the “business” purported to be the subject of the website at the disputed domain name is a legitimate entity or operation. Therefore, the Complainant says that it appears that the Respondent has
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chosen to use the Complainant’s famous ACCENTURE trademark in the disputed domain name to create a
direct affiliation with the Complainant and its business, and to cause confusion amongst consumers. The
Complainant also alleges that the Respondent’s activities constitute passing off, in that the Respondent is
trying to pass itself off as the Complainant, a leader known around the world in relation to consulting and
business management services in a wide array of categories, including digital marketing and design. The
Complainant also contends that the nature of the disputed domain name alone, comprising the
Complainant’s ACCENTURE trademark paired with the descriptive terms “IT and “solutions,” and alleging to
have operations in Los Angeles, immediately suggests that the Respondent is holding itself out as an affiliate
of the Complainant in California. This false suggestion causes even further confusion when noting the
Complainant has a significant business presence in Los Angeles. Moreover, the Complainant claims that the
Respondent is using the disputed domain name to mislead Internet users who are searching for the
Complainant, but instead reach the Respondent’s disputed domain name, where the Respondent is holding
itself out as offering, competing with, or have the potential to compete with, the Complainant’s goods and
services in relation to digital marketing and design. Such competing use is a disruption of
the Complainant’s business and is in bad faith pursuant to Policy.
B. Respondent
The Respondent did not substantially reply to the Complainant’s contentions. On February 7, 2024, the Respondent stated “Firstly, my Domin is not interlinking with anyone, and is currently working. If party have any issue then they can contact us directly, and we can close this matter by mutual understanding.” On February 8, 2024, the Respondent stated “If I transfer my domain to complainant then how much they pay for my business which is hampering due to them? It's been more than a week my business is hampering due to this.”
6. Discussion and Findings
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in
ACCENTURE.
The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
The entirety of the mark is reproduced within the disputed domain name. The mere fact that the Respondent has added “it” and “solutions”, to the Complainant’s trademark, all terms presented in one word, and added the generic Top-Level Domain (”gTLD“) “.online” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, this is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd., WIPO Case No. D2002-10211021; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252.
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In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point
and holds that the disputed domain name <accentureitsolutions.online> is confusingly similar to the
Complainant’s trademark ACCENTURE for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.
In particular, the Respondent has failed to prove (i) use of the domain name (or demonstrable plans for such use) with a bona fide offering; (ii) being commonly known by the domain name; or (iii) legitimate noncommercial or fair use.
Moreover, the Respondent does not seem to have any trademark registrations including the term
“accenture”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the
Complainant, with whom there seems to exist no relationship whatsoever.
The Panel also finds that the disputed domain name is inherently misleading. WIPO Overview 3.0, section
2.5.1.
As a conclusion on this point, the Panel finds that the Complainant has established that the Respondent has
no rights or legitimate interests in respect of the disputed domain name and has thus satisfied paragraph
4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Accenture Global Services Limited v. ICS Inc/PrivacyProtect.org, WIPO Case No. D2013-2098). Therefore, the registration of the disputed domain name was in bad faith.
From the elements at hand, “it was unlikely that the Respondent was not aware of Complainant and its that its mark is well-known globally and is vested with significant goodwill”. See
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With regards to use, the Panel finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark.
According to the allegations of the Complainant, the “Respondent is using the Domain Name to mislead
Internet users who are searching for Complainant, but instead reach Respondent’s Domain Name”, through
which the Respondent competes with the Complainant, thus also disrupting the business of the Complainant.
As a result, the Respondent is making a bad faith use of the confusingly similar disputed domain name.
Finally, the fact that the Respondent has failed to specifically address the Complainant’s contentions, reinforces the Panel’s finding of bad faith registration and bad faith use.
As a consequence of the above, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, thus satisfying the third element 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 <accentureitsolutions.online> be transferred to the Complainant.
/Christos A. Theodoulou/
Christos A. Theodoulou
Sole Panelist
Date: March 21, 2024
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