Accenture Global Services Limited v zhanglu

WIPO Case No. D2024-1012

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Accenture Global Services Limited v. zhanglu

Case No. D2024-1012

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 zhanglu, China.

2. The Domain Name and Registrar

The disputed domain name <accenturevip.com> is registered with Alibaba.com Singapore E-Commerce

Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2024.
On March 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On March 8, 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 (Unknown registrant) and contact information in the Complaint.
The Center sent an email communication to the Complainant on March 8, 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 March 12, 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
Complaint, and the proceedings commenced on March 14, 2024. In accordance with the Rules, paragraph
5, the due date for Response was April 3, 2024. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 4, 2024.

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The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 11, 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 a management consulting company, providing technology and outsourcing services as well.

In addition to the <accenture.com> domain name which was registered on August 29, 2000, and is used to host the Complainant’s official website, the Complainant is the owner, amongst others, of the following trademark registrations (Annex D to the Amended Complaint):

- United States Trademark Registration No. 2,665,373 for the word and device mark ACCENTURE,

registered on December 24, 2002, successively renewed, in classes 9, 35, 36, 37, 41 and 42;

- United States Trademark Registration No. 3,091,811 for the word mark ACCENTURE, registered on May 16, 2006, successively renewed, in classes 9, 16, 35, 36, 37, 41 and 42; and

- United States Trademark Registration No. 7,266,256 for the word mark ACCENTURE, registered on January 9, 2024, in classes 9, 35, 36, 37, 41 and 42.

The disputed domain name was registered on February 27, 2024, and presently does not resolve to an active webpage.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant asserts to have started using its ACCENTURE trademark on January 2001, in connection with management consulting, technology services, and outsourcing services, currently operating in more than 200 cities in 120 countries, and holding trademark rights in more than 140 countries.

The Complainant further asserts to have extensively used and promoted its ACCENTURE trademark which has become distinctive and globally famous, enjoying notoriety and having acquired substantial goodwill, as can be illustrated by its rankings in Interbrand’s Best Global Brands Report since 2002, Kantar Millward

Brown’s BrandZ – Top 100 Brand Rankings since 2006, and Fortune Global 500’s The World’ Most Valuable
Brands.

In addition, the Complainant claims to support numerous social projects worldwide as well as to sponsor sports events such as the World Golf Championships and cultural activities such as a collaboration with the Louvre Museum to develop new technological programs to spread culture and reach new segments of the public.

According to the Complainant, the disputed domain name incorporates its well-known ACCENTURE trademark in its entirety with the addition of the acronym “vip” which does not preclude a finding of confusing similarity thereof.

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As to the Respondent’s absence of rights or legitimate interests in the disputed domain name, the
Complainant argues that:

i.         the Complainant’s trademark is not a generic or descriptive term in which the Respondent might have

an interest;

ii.         the Respondent is neither affiliated with, nor has it been licensed or permitted to use the

Complainant’s trademark or any domain name relating to it;

iii. the Respondent is not commonly known by the disputed domain name, nor was it known as such prior to the registration date of the disputed domain name; and

iv. the Respondent is not using the disputed domain name for any valid or legitimate purpose, neither fair use, what does not characterize a bona fide use of the disputed domain name.

In what it relates to the bad faith registration of the disputed domain name, the Complainant asserts that the Respondent had notice of the ACCENTURE trademark, duly registered and well-known in many jurisdictions worldwide, being it unlikely that the Respondent was not aware of it when registering the disputed domain

name. Furthermore, the Respondent is not using the disputed domain name for any legitimate purpose,
what indicates that the disputed domain name is being passively held and thus being used in bad faith under

the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present so as to have the disputed domain name transferred, according to 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 shown rights in respect of a trademark or service mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain
name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
Although the addition of other terms (here “vip”) may bear on assessment of the second and third elements,

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the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

The Panel finds the second element of the Policy has been established.

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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

UDRP panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding. Although 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, and (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s trademark, and the composition of the disputed domain name, the fact the Respondent has not replied to the Complaint and finds that in the circumstances of this case the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Other factors that corroborate with the Panel’s finding of bad faith of the Respondent are:

a. the absence of a reply by the Respondent;

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b.	the implausibility of any good faith use to which the disputed domain name may be put; and
c.	the indication of what appears to be false or incomplete contact details by the Respondent for

registering the disputed domain name, since the Written notice could not be sent to the address indicated by

the courier service.

The Panel finds that the Complainant has established 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 <accenturevip.com> be transferred to the Complainant.

/Wilson Pinheiro Jabur/
Wilson Pinheiro Jabur
Sole Panelist
Date: April 22, 2024