Accenture Global Services Ltd. v. David Tracey
Claim Number: FA1804001780765
Complainant is Accenture Global Services Ltd. (“Complainant”), represented by Christina L. Martini of DLA Piper, Illinois, USA. Respondent is David Tracey (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <accenturellp.us>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 6, 2018; the Forum received payment on April 6, 2018.
On April 10, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <accenturellp.us> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@accenturellp.us. Also on April 16, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(c)(viii).
[i.] Complainant began using the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services, on January 1, 2001. See Accenture Global Services Limited v. Domains By Proxy, LLC/Name Redacted (Case No. D2013-2099)(finding that Complainant has rights in the mark ACCENTURE). Complainant has offices and operations in more than 200 cities in 56 countries.
[ii.]Since January 2001, Complainant has extensively used and continues to use the mark ACCENTURE in connection with various services, including management consulting, technology services and outsourcing services.
[iii.] To help protect its trademark rights in the ACCENTURE Mark and to put others on notice of those rights, on October 6, 2000, Complainant filed a United States trademark application (Application Serial No. 76/154,620) for the mark ACCENTURE, covering computer software, pamphlets, business consulting services, financial services, computer installation services, educational services and computer consulting services, among many other goods and services. This application matured to registration (Reg. No. 3,091,811) on May 16, 2006. The following table incorporates a representative list of United States trademark registrations for the ACCENTURE Mark and ACCENTURE & Design Mark, and variations thereof.
|
Mark |
Goods and Services |
Registration No. |
Registration Date |
|
ACCENTURE |
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42 |
3,091,811 |
May 16, 2006 |
|
ACCENTURE > |
Various goods and services in Classes 9, 16, 35, 36, 37, 41 and 42 |
2,665,373 |
December 24, 2002 |
|
ACCENTURE |
Various goods in Classes 6, 8, 9, 14, 16, 18, 20, 21, 24 and 28 |
3,340,780 |
November 20, 2007 |
|
ACCENTURE |
Various goods in Classes 18, 25 and 28 |
2,884,125 |
September 14, 2004 |
|
ACCENTURE & Design |
Various services in Classes 35 and 36 |
3,862,419 |
October 19, 2010 |
These registrations are valid and subsisting, and serve as prima facie evidence of Complainant’s ownership of the ACCENTURE Mark and the validity of the ACCENTURE Mark. Furthermore, some of these registrations are incontestable and are conclusive evidence of Complainant’s exclusive right to use the ACCENTURE Mark in the United States in connection with the stated goods and services. 15 U.S.C. §§ 1065 and 1115(b).
[iv.] In order to help protect its trademark rights on an international basis, Complainant owns registrations for the ACCENTURE Mark and ACCENTURE & Design mark in more than 140 countries. Complainant owns more than 1,000 registrations for the marks ACCENTURE, ACCENTURE & Design and many other marks incorporating the ACCENTURE brand for a variety of products and services including, but not limited to, its management consulting, technology services and outsourcing services.
[v.] The ACCENTURE Mark has been advertised in connection with various media and has been written about in the press. Below is a list of Complainant’s annual advertising expenditures worldwide since 2009:
|
Year |
Advertising Expenditures (USD) |
|
2009 |
$77 million |
|
2010 |
$67 million |
|
2011 |
$66 million |
|
2012 |
$67 million |
|
2013 |
$69 million |
|
2014 |
$70 million |
|
2015 |
$67 million |
|
2016 |
$67 million |
|
2017 |
$69 million |
A representative sampling of Complainant’s global advertisements and press clippings featuring the ACCENTURE Mark was provided.
[vi.] Complainant has relied on the Internet as a forum to promote and disseminate information regarding the various offerings under the ACCENTURE
Mark including, but not limited
to, management consulting, technology services, outsourcing services
and software solutions. Complainant owns and operates the website
at ACCENTURE.COM. Complainant registered this domain name on 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 Complainant and its global offices in connection with the ACCENTURE Mark.
[vii.] The ACCENTURE Mark has been recognized as a leading global brand by reputable brand consulting companies in the industry. The ACCENTURE Mark has been recognized in Interbrand’s Best Global Brands Report since 2002, when it ranked 53rd. The ACCENTURE Mark ranked 37th in the 2017 Interbrand’s Best Global Brands Report, its highest ranking ever in the report.
[viii.] The ACCENTURE Mark has been recognized by Kantar Millward Brown, a leading market research and brand valuation company, in its annual BrandZ – Top 100 Brand Ranking since 2006 when it was ranked 58th. In 2017, the ACCENTURE brand ranked 32nd, its highest Brandz ranking ever.
[ix.] Complainant has been recognized for its business services and brand recognition. For the past 16 years, it has been listed in the Fortune Global 500, which ranks the world’s largest companies. In addition, Complainant has appeared in various other top rankings by Fortune. A chart summarizing these awards is shown below:
|
Year |
Award |
|
2009 |
Fortune 100 Most Admired Companies Ranking #49 |
|
2009 |
Fortune 100 Best Companies to Work For Ranking #52 |
|
2010 |
Fortune 100 Best Companies to Work For Ranking #84 |
|
2011 |
Fortune 100 Best Companies to Work For Ranking #99 |
|
2011 |
Fortune 100 Most Admired Companies Ranking #43 |
|
2012 |
Fortune 100 Most Admired Companies Ranking #49 |
|
2012 |
Fortune 100 Best Companies to Work For Ranking #92 |
|
2013 |
Fortune 100 Best Companies to Work For Ranking #91 |
|
2014 |
Fortune 100 Best Companies to Work For Ranking #90 |
|
2014 |
Fortune 100 Most Admired Companies Ranking #45 |
|
2015 |
Fortune 100 Best Companies to Work For Ranking #98 |
|
2015 |
Fortune 100 Most Admired Companies Ranking #49 |
|
2016 |
Fortune 100 Best Companies to Work For Ranking #84 |
|
2016 |
Fortune 100 Most Admired Companies Ranking #36 |
[x.] Complainant has received numerous awards for its business, products and services provided under the ACCENTURE Mark. A sampling of these awards is detailed in the chart below:
|
Source |
Award |
Year |
|
GLASSDOOR |
No. 6 on Glassdoor’s High Rated CEOs in the UK |
2014 |
|
ETHISPHERE |
World’s Most Ethical Companies |
2008- |
|
list |
2016 |
|
|
BARRON’S |
No. 29 on Barron’s 500 |
2015 |
|
DIVIDEND CHANNEL |
Accenture was named as one of Dividend Channel’s Top 25 Socially Responsible Dividend Stocks |
2012 |
|
FORBES |
Ranked No. 69 on Forbes’ inaugural World’s Most Powerful Brands |
2012 |
|
FORBES |
Ranked No. 79 on Consumer Perception |
2012 |
|
BARRON’S 500 |
Ranked No. 139 of the 500 largest publicly traded companies |
2012 |
|
Women’s Business Enterprise National Council’s |
Recognized as America’s Top Corporations of Women’s Business Enterprises list (2009- 2012) |
2012 |
|
FORTUNE |
Ranked No. 23 on the North America regional list as Fortune’s biennial Top Companies for Leaders list |
2011 |
|
STANDARD & POOR’S S&P 500 |
Included in Standard & Poor’s S&P 500 |
2011 |
|
FORTUNE |
Included in the list of top 500 |
2002- |
|
GLOBAL 500 |
corporations worldwide as |
2011 |
|
measured by revenue for ten |
||
|
consecutive years |
||
|
MANAGEMENT TEAM 500 |
Ranked No. 44 as top 500 companies with best image in the Netherlands |
2011 |
|
BRAND FINANCE’S Global 500 |
Ranked No. 157 in Brand Finance’s Global 500 |
2011 |
|
TELEOS and THE KNOW NETWORK |
Recognized for the thirteenth time as a Global Most Admired Knowledge Enterprise |
2010 |
[xi.] Complainant supports numerous social development projects worldwide in connection with the ACCENTURE Mark including, but not limited to, its SKILLS TO SUCCEED initiative, which has equipped more than 1.2 million people around the world with the skills to find a job or build a business.
[xii.] The ACCENTURE Mark is encountered by millions of sports fans as Complainant has served as the Official Technology Partner for the 6 Nations Rugby Championship since 2012. Moreover, Complainant was a global umbrella sponsor of the World Golf Championships and the title sponsor of the series' season-opening event, the Accenture Match Play
[xiii.] 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. Complainant has been a concert sponsor for the Rheingau Musik Festival in Germany since 1997, which is one of Germany’s premier music festivals.
[xiv.] Complainant is an affiliate of an entity named ACCENTURE LLP, which is registered under the laws of the United States.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a.] The Domain Name is Confusingly Similar to the ACCENTURE Mark (Rule 3(c)(ix)(1); Policy ¶4(a)(i)).
[i.] The Domain Name is confusingly similar to the ACCENTURE Mark.
[ii.]The Domain Name is highly similar to Complainant’s well-known ACCENTURE mark. The only difference between the Domain Name and Complainant’s ACCENTURE mark is that the Domain Name adds the generic corporate designation “LLP.” Moreover, the Domain Name is identical to the corporate name of one of Complainant’s affiliates.
[iii.] The Domain Name was registered on March 21, 2018, more than 16 years after Complainant first registered its ACCENTURE Mark.
[iv.] The ACCENTURE Mark is distinctive and well-known. See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org (WIPO Case No. D2013- 2098)(finding that Complainant demonstrated that its ACCENTURE mark has been extensively used, is well-known globally, is vested with significant goodwill and carries distinction). The ACCENTURE Mark consists of a coined term and, as such, should be afforded a wide scope of protection, particularly in view of the ubiquitous nature of the brand (as demonstrated by the heavy advertising presence worldwide). See Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org (WIPO Case No. D2013-2098)(finding that the word “accenture” is not a descriptive or generic term but, rather, was coined by Complainant, so consumers associate this term exclusively with Complainant and its products and services owing to the international goodwill that Complainant has developed in the ACCENTURE mark over the years).
[v.]“It is well established that the mere” addition the .US top-level domain does not distinguish a domain name and “is not taken into consideration” when examining the similarity of a domain name and a trademark. Accor v. Gary Weber (Forum FA0707001039728).
[vi.] Moreover, corporate designations are generic and do not materially distinguish a domain name from another’s trademark. Fluor Corporation v. Mike Raymond (Forum FA1504001614387)(finding the addition of the corporate designation “BV” did not materially distinguish the FLUOR-BV.COM domain name from the FLUOR trademark). The Domain Name’s inclusion of the generic corporate designation “LLP” does not materially distinguish it from the ACCENTURE Mark.
[vii.] Finally, in assessing a likelihood of confusion between a registrant’s domain name and a complainant’s mark, “points of similarity are weighed more heavily than points of difference.” See Nintendo of America, Inc. v. Gray West International (WIPO Case No. D2000-1219)(finding the domain name POKEMON-GAMES.COM confusingly similar to Complainant’s POKEMON trademark); Accenture Global Services Limited v. Whois Privacy Protection Service, Inc./Robert Green (WIPO Case No. D2013-2100)(finding the domain name ACCENTURE-UK.COM confusingly similar to Complainant’s ACCENTURE mark and finding that the addition of “UK” is purely descriptive and does not distinguish the domain name from the trademark). Respondent’s addition of the generic corporate designation “LLP” to the Domain Name does nothing to reduce its confusing similarity with Complainant’s ACCENTURE Mark.
[viii.] In this case, Respondent has fully incorporated Complainant’s registered ACCENTURE Mark into the Domain Name, and the addition of the generic corporate designation “LLP” fails to meaningfully distinguish the Domain Name from Complainant’s ACCENTURE mark. As such, Internet users are very likely to be confused as to whether an association exists between the Domain Name and Complainant.
[b.] Respondent Has No Legitimate Interests in the Domain Name (Rule 3(c)(ix)(2); Policy ¶4(a)(ii))
[i.] Consistent with Paragraph 4(c) of the Policy, a respondent can demonstrate a legitimate interest in a domain name by proving one of the following: (i) it is the owner or beneficiary of a trade or service mark that is identical to the domain name; (ii) before notice of the dispute, the respondent made use or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services; (iii) the respondent is commonly known by the domain name; or (iv) the domain name is used for a legitimate noncommercial or fair use purpose without intent for commercial gain. The Respondent in this case can demonstrate none of these criteria and, therefore, has no legitimate interest in the Domain Name.
[ii.]Upon information and belief, Respondent has made no bona fide offering of goods or services in connection with the Domain Name.
[iii.] The website at the Domain Name is currently inactive. A screenshot of the website at the Domain Name is attached.
[iv.] On March 21, 2018, one of Complainant’s vendors received a letter (hereinafter, the “Letter”), which appears to be on Complainant’s letterhead as it depicts Complainant’s ACCENTURE (and design) mark.
[v.] The Letter claims that Complainant changed its bank account, and it requests that Complainant’s vendor deliver all invoices due to Complainant to a new bank account.
[vi.] The Letter also requests that further communications from the vendor to Complainant be delivered to a new email address associated with the “accenturellp.us” email host, which is Respondent’s email host, not Complainant’s email host.
[vii.] The Letter is purportedly signed by Pierre Nanterme, who is Complainant’s Chief Executive Officer.
[viii.] By virtue of the Letter, it is clear the Respondent registered the Domain Name in an effort to mislead Complainant’s vendors and others into believing that Respondent is associated or affiliated with Complainant for the purpose of obtaining ill-gotten commercial gains.
[ix.] Complainant has not licensed or otherwise permitted Respondent to use its ACCENTURE Mark, or to apply for or use any domain name incorporating the mark. See Telstra Corporation Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000- 0003)(finding that the respondent had no rights or legitimate interest in the domain name where the complainant did not license or permit the respondent to use any of its trademarks).
[x.] Moreover, Respondent is not commonly known by the domain name and, therefore, cannot claim a legitimate interest in the Domain Names under Paragraph 4(c)(ii) of the Policy.
[xi.] In summary, there is no indication that Respondent is making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain. Instead, Respondent deliberately chose a Domain Name that is identical to Complainant’s ACCENTURE Mark and appears to be attempting to achieve commercial gain by misleading Complainant’s vendors. It is clear that Respondent has no legitimate interest in the Domain Name, in view of Complainant’s prior statutory and common law rights in the ACCENTURE Mark and the facts and analysis set forth above.
[c.] Respondent Registered and is Using the Domain Name in Bad Faith (Rule 3(c)(ix)(3); Policy ¶4(a)(iii))
[i.] The Policy establishes that, for purposes of Paragraph 4(a)(iii), “bad faith” registration and use of a domain name can be established by a showing of circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to respondent’s website or other online location, by creating a likelihood of confusion with complainant’s mark as to source, sponsorship, affiliation or endorsement of respondent’s website or location, or of a product or service on respondent’s website or location. See Policy, Paragraph 4(b)(iv).
[ii.]Respondent had constructive notice that the ACCENTURE Mark was a registered trademark in the United States and many other jurisdictions worldwide.
[iii.] Given Complainant’s worldwide reputation and the ubiquitous presence of the ACCENTURE Mark on the Internet, Respondent was or should have been aware of the ACCENTURE Mark long prior to registering the Domain Name. See Caesars World, Inc. v. Forum LLC (Case No. D2005-0517)(finding Respondent registered the domain name CAESARSPALACEPOKER.COM in bad faith after it knew or should have known about Complainant’s trademarks); see also Accenture Global Services Limited v. ICS Inc./PrivacyProtect.org (WIPO Case No. D2013-2098)(finding that it was unlikely that the respondent was not aware of Complainant and its ACCENTURE mark at the time the disputed domain name was registered, as Complainant demonstrated that its mark is well- known globally and is vested with significant goodwill).
[iv.] Registration of a domain name in an attempt to appear associated or affiliated with another to obtain money or other materials constitutes bad-faith use and registration. See e.g., The Prudential Assurance Co. Ltd. v. Prudential Securities Ltd. (WIPO Case No. D2009-1561)(finding bad faith registration where Respondent used the domain name to attempt to obtain bank account and other personal information from third parties); MasterCard Int’l Inc. v. Jose Carlos Bisognin Panzenhagen (WIPO Case No. D2009-0864)(finding bad faith registration where Respondent appeared to attempt to induce people into believing he was connected with a legitimate MasterCard website for “phishing” and/or “identity-theft purposes”). Respondent registered, used and, upon information and belief, continues to use the Domain Name to intentionally mislead and confuse vendors into believing that Respondent is Complainant and/or is associated or affiliated with Complainant in order to obtain payments from Complainant’s vendor.
[v.] Sending a fraudulent email pretending to be associated or affiliated with a complainant is strong evidence of bad faith. Total Temperature Inc. v. Bob Lee / Dlsvls LLC (WIPO Case No. D2015-0818)(finding bad faith where the respondent sent an email claiming to be the complainant’s chief executive officer). Here, Respondent appears to have sent a letter posing as Complainant’s chief executive officer, proving that Respondent registered the Domain Name in bad- faith attempt to mislead Complainant’s vendor.
[vi.] In a highly similar case, a Uniform Domain Name Dispute Resolution Policy panelist agreed to transfer the disputed domain name, finding that the domain name was used and registered in bad faith. See Accenture Global Services Ltd. v. Christophe Eck (WIPO Case No. D2017-0557)(transferring the domain name ACCENTURE-GROUP.TECH domain name to Complainant when the registrant sent a domain name to Complainant’s senior executives using an email address incorporating Complainant’s Chairman and Chief Executive Officer’s name).
[vii.] As such, it appears that Respondent did not register the Domain Name to actually offer services but, instead, registered and is using the Domain Name for the bad-faith purpose of intentionally misleading vendors and others to believe that Respondent is associated or affiliated with Complainant for monetary gain.
[viii.] As such, it appears that Respondent did not register the Domain Name to actually offer services but, instead, registered and is using the Domain Name for the bad-faith purpose of intentionally attempting to appear associated or affiliated with Complainant and its ACCENTURE Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the ACCENTURE mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,665,373, registered Dec. 24, 2002). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant has sufficiently demonstrated its rights in the ACCENTURE mark per Policy ¶4(a)(i).
Complainant claims Respondent’s <accenturellp.us> domain name is confusingly similar to the ACCENTURE because Respondent merely adds the generic term “llp”, a common abbreviation for a juridical entity (a limited liability partnership), and the “.us” ccTLD to the mark. The addition of a generic term and/or abbreviation to a mark is are insufficient changes to distinguish a disputed domain name from a mark under Policy ¶4(a)(i). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta); see also Crocs, Inc. v. [Registrant], FA 1043196 (Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶4(a)(i) analysis, as a top-level domain is required of all domain names”). <accenturellp.us> is confusingly similar to the ACCENTURE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in <accenturellp.us> because Respondent (i) is not authorized to use Complainant’s ACCENTURE mark and (ii) is not commonly known by the disputed domain name. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “David Tracey”. There is no obvious similarity to the disputed domain name. A lack of evidence in the record indicating the respondent was authorized to register a domain name using a complainant’s mark supports a finding Respondent does not have rights or legitimate interests in the disputed domain name under Policy ¶4(c)(iii). See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(iii).
There is no evidence in the record indicating Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶4(c)(i)). Respondent has no rights under Policy ¶4(c)(i).
Complainant claims Respondent’s lack of rights or legitimate interests in the disputed domain name is proven by Respondent’s failure to use the name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶4(c)(ii) and (iv). Respondent’s fails to make an active use of the <accenturellp.us> domain name, other than as an email server to further Respondent’s fraudulent scheme (which hardly qualifies as a bona fide use). Respondent does not host a web site at the disputed domain name. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Respondent does not use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(ii) and (iv).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <accenturellp.us> domain name in bad faith pass itself off as Complainant and attract users for commercial purposes. Respondent sends physical letters to Complainant’s vendors, directing the vendors to pay a different bank account. The vendors are provided with a new email address to use (based at the disputed domain name instead of Complainant’s real domain name). Passing off as a complainant demonstrates bad faith under Policy ¶4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The fact some of the scheme is done through the physical mails (instead of email) does not prevent this Panel from finding Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent had actual knowledge of Complainant’s rights in the ACCENTURE mark when it registered the <accenturellp.us> domain name. Respondent registered the domain name using Complainant’s mark (which is a fanciful mark). Respondent went to the trouble of sending out letters using Complainant’s letterhead. Respondent used Complainant’s chief executive officer’s name and title for the letters. Respondent used Complainant’s Chicago address. Coincidence? This Panel thinks not. Such actions raise the reasonable inference Respondent knew about Complainant’s mark, See also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Such a series of “coincidences” are obviously not plausible. Respondent had actual knowledge of Complainant’s mark. Respondent registered and is using the disputed domain name in bad faith under Policy ¶4(a)(iii).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <accenturellp.us> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 24, 2018
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