PwC Business Trust v. C Est SA

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

PWC Business

Trust v. C’Est SA

Case No.

D2001-0359

1. The Parties

The Complainant is

PWC Business Trust, a Delaware business trust with its principal place of

business at New York, N.Y., U.S.A. The Complainant is represented by Mr

Ian Bartlett of Beck Greener, Patent & Trademark Attorneys of London,

U.K.

The Respondent is C’Est

SA of Luxembourg. The Respondent is represented by Dr John Hulbert.

2. The Domain Name

and Registrar

The domain name at

issue is <price-waterhouse-coopers.net>. The domain name is registered

with Melbourne IT of Melbourne, Victoria, Australia (‘the Registrar’). The

name was registered on March 21, 2000.

3. Procedural History

The Complaint submitted

by PWC Business Trust was received on March 13, 2001, (electronic version)

and March 11, 2001, (hard copy) by the World Intellectual Property Organization

and Mediation Center ("WIPO Center").

On March 19, 2001,

a request for Registrar verification was transmitted by the WIPO Center

to the Registrar, requesting it to:

- Confirm that

a copy of the Complaint had been sent to it by the Complainant as requested

by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that

the domain name at issue is registered with the Registrar.

- Confirm that

the person identified as the Respondent is the current registrant of the

domain name.

- Provide full

contact details, i.e., postal address(es), telephone number(s), facsimile

number(s), email address(es), available in the Registrar’s WHOIS database

for the registrant of the disputed domain name, the technical contact,

the administrative contact and the building contact for the domain name.

- Confirm that

the Uniform Domain Name Dispute Resolution Policy ("UDRP") was

in effect.

- Indicate the

current status of the domain name.

By email dated

March 19, 2001, the Registrar advised WIPO Center as follows:

- It had received

a copy of the Complaint from the Complainant.

- It is the Registrar

of the domain name registration <price-waterhouse-coopers.net>.

- The Respondent

is shown as the "current registrant" of the domain name at Blvd.

General S. Paton 158, Luxembourg.

- The administrative

contact is Dr John Hulbert at the same address.

- The UDRP applies

to the registration.

- The disputed

domain name registration is currently in ‘licenced’ status.

The Registrar has currently

incorporated in its agreements the Uniform Domain Name Dispute Resolution

Policy adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN").

The advice from the

Registrar that the domain name in question is in licensed status indicates

the Respondent has not requested that the domain name at issue be deleted

from the domain name database. The Respondent has not sought to terminate

the agreement with the Registrar. Accordingly, the Respondent is bound by

the provisions of the Registrar’s Uniform Domain Name Dispute Resolution

Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction

of the Panel.

Having verified that

the Complaint satisfied the formal requirements of the Uniform Policy and

the Uniform Rules, the WIPO Center on March 29, 2001, transmitted by

post-courier and by email a notification of the Complaint and Commencement

of Administrative Proceedings to the Respondent. A copy of the Complaint

was also emailed to the Registrar and ICANN.

The Respondent was

advised that a Response to the Complaint was required within 20 calendar

days. The Respondent was also advised that any Response should be communicated,

in accordance with the Rules, by four sets of hard copy and by email. A Response

was filed by the Respondent on April 14, 2001 (electronic) and April 17,

2001 (hard copy).

WIPO Center invited

the Honorable Sir Ian Barker QC of Auckland, New Zealand

to serve as sole Panelist in the case. It transmitted to him a statement

of acceptance and requested a declaration of impartiality and independence.

The Panelist duly advised acceptance and forwarded to the WIPO Center a

statement of impartiality and independence. The Panel finds that the Administrative

Panel was properly constituted in accordance with the Rules and the Supplemental

Rules.

On May 3, 2001, WIPO

Center forwarded to the Panel by courier the relevant submissions and the

record. In terms of Rule 15(b), in the absence of exceptional circumstances,

the Panel is required to forward its decision by May 16, 2001.

The Panel has independently

determined and agrees with the assessment of WIPO Center that the Complaint

meets the formal requirements of the Rules for Uniform Domain Name Dispute

Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules")

and the Supplemental Rules.

The language of the

administrative proceeding is English, being the language of the registration

agreement.

4. Factual Background

The Complainant was

formed in June 1998 and owns all right, title and interest in and to the

PRICEWATERHOUSECOOPERS name and mark and certain other intellectual property

rights for the benefit of the member firms of the worldwide PricewaterhouseCoopers

organization, which arose from the merger of the two internationally well-known

firms, namely Price Waterhouse and Coopers & Lybrand.

The worldwide PricewaterhouseCoopers

organization’s member firms make up the world’s largest professional services

organization, providing a full range of business and advisory services to

leading global, national and local companies and to public institutions.

These services include audit, accounting and tax advice; management, information

technology consulting; human resource consulting; financial advisory services

including mergers & acquisitions, business recovery, project finance

and litigation support; and business process outsourcing services. The member

firms of the worldwide PricewaterhouseCoopers organization have offices

in most countries, and in most cities of developed countries, throughout

the world and have around 9000 partners and over 150,000 employees.

Since July 1998, all

activities of the Complainant and the member firms of the worldwide PricewaterhouseCoopers

organization have been carried out by reference to the name PRICEWATERHOUSECOOPERS.

Total revenue for the member firms of the worldwide PricewaterhouseCoopers

organization for the period July 1, 1999 to June 30, 2000 exceeded US $

21 billion.

The member firms of

the worldwide PricewaterhouseCoopers organization are widely advertised

and promoted. They advertise their services worldwide, and are mentioned

frequently in articles in the national newspapers and other publications

of developed countries. The Complainant is not aware of any other business,

trading anywhere in the world, which uses the name or trade mark PRICEWATERHOUSECOOPERS

or any similar name, for any products or services at all.

The Complainant is

the proprietor of applications and registrations for the trade mark PRICEWATERHOUSECOOPERS

in, inter alia, the United States of America, United Kingdom and the European

Union. The Complainant owns corresponding trade mark applications and registrations

for PRICEWATERHOUSECOOPERS in many other countries of the world. Member

firms of the worldwide PricewaterhouseCoopers organization have registered

in many countries of the world domain names which contain the element PRICEWATERHOUSECOOPERS.

The member firms of

the worldwide PricewaterhouseCoopers organization rely on the PRICEWATERHOUSECOOPERS

marks owned by the Complainant and on the domain names owned by the member

firms of the worldwide PricewaterhouseCoopers organization to attract potential

clients and customers to the business and to web sites of the said member

firms. The PRICEWATERHOUSECOOPERS name and mark is the Complainant’s primary

trade mark and one of the major business assets of the member firms of the

worldwide PricewaterhouseCoopers organization.

On February 7, 2001,

the Complainant became aware that the Respondent had obtained registration

of the disputed Domain Name when an anonymous person using the pseudonym

"Dave Jones’ emailed this information to the Senior Partner of PricewaterhouseCoopers

Sarl, (PwC Luxembourg) the Luxembourg based member firm of the worldwide

PricewaterhouseCoopers organization. The email also alleged that Dr Hulbert

planned to use the website for making mailshots of his home page to key

decision makers in Luxembourg and to invite persons with grievances against

PricewaterhouseCoopers to use the site.

The email advised that

Dr John Hulbert is listed as the administrative contact against the Domain

Name and that he has the same address as the Respondent.

On February 16, 2001,

an employee of PwC Luxembourg telephoned Dr Hulbert. He recorded a note

of his conversation. Dr Hulbert stated that he would not withdraw the present

content from the website accessed via the Domain Name and that he intended

to publish further "information" on the website.

On March 8, 2001, the

Complainant’s trademark attorney telephoned and spoke to

Dr Hulbert. A record

of the telephone conversation was kept. During this conversation:

(a) Dr Hulbert

admitted responsibility for the website and the administration of

the Domain Name.

(b) Refused

to transfer the Domain Name to the Complainant for the sum expended

in obtaining its registration.

(c) Stated

that he intended to use the domain name to provide him with "the

oxygen of publicity".

Neither the Complainant

nor any member firm of the worldwide PricewaterhouseCoopers organization

(PwC) has given any consent, licence or authorization to the Respondent

or to any other person, for the use or registration of the Domain Name.

The Respondent and

Dr Hulbert claim a long relationship with the PwC firms, having been involved

in joint contracts with the European Commission in diverse technical areas.

The Respondent acknowledges

that there is little doubt that the reputation of PwC will be tarnished

by revelations that may appear on the website. Rightly so, in its view.

5. Parties’ Contentions

Complainant

(a) The disputed

domain name <price-waterhouse-coopers.net> is identical or virtually

identical to the following:

(i) The partnership,

legal name and/or trading name of the member firms of the worldwide

PricewaterhouseCoopers organization, use of this name having commenced

in July 1998 and having continued uninterrupted since that time.

(ii) The subject

matter of the Complainant’s trade mark applications and registrations,

the earliest of which date back to June 1998.

(iii) The

trade mark, is used under licence from the Complainant by member firms

of the worldwide PricewaterhouseCoopers organization to identify their

accounting and consulting businesses and the trade origin of the products

and services they have provided under the name and trademark since

July 1998. It is a well-known trade mark in many countries of the

world including the EU member states and the USA.

(iv) The combination

of three out of the four primary elements in the names of the two

predecessor firms of the worldwide PricewaterhouseCoopers organization,

namely "Price Waterhouse" and "Coopers

& Lybrand".

(b) The Respondent

has no rights or legitimate interests in respect of the Domain Name for

the following reasons: There is no evidence that the Respondent conducts

any legitimate business or activities under the name PRICE-WATERHOUSE-COOPERS

or the Domain Name or any variant thereof, nor that he has any present

or bona fide interest in establishing any legitimate business or activities

under these names. To the extent that the Respondent intends to conduct

a business or non-profit making activity under the Domain Name, such business

or activity will be a sham for the purpose of attempting to protect the

Domain Name from transfer under these or similar proceedings and thereby

to increase the value of the Domain Name for onward sale to the Complainant

or member firms of the worldwide PricewaterhouseCoopers organization.

Any such intended use would not be bona fide.

(c) The Respondent

by implication admits the Domain Name refers to the Complainant by posting

the following statement on the web page accessed via the Domain Name:

"This is NOT

an official site of PriceWaterhouseCoopers".

This is a publish test

page for a new site which will be about them. It will initially cover details

of the infamous circa 21,000,000 Euro contract with the European Commission

called Techserv. Watch this space. PwC want to suppress this site so watch

for coming details. However, other related mirror sites are coming on stream.

This shows the Respondent

was fully aware the Domain Name referred to the Complainant and the member

firms of the Complainant’s organization.

(d) The Domain

Name should be considered as having been registered and as having been

used in bad faith for the following reasons:

(i) The Respondent

is based and resident in Luxembourg. In view of the enormous promotion

and public recognition of the name and trade mark PRICEWATERHOUSECOOPERS

generated by the Complainant and its licensees, the Respondent must

have been aware, when it registered the Domain Name of the Complainant’s

and its licensees’ business in, use of, and rights in and to the name

and mark PRICEWATERHOUSECOOPERS. The Complainant and the member firms

of the worldwide PricewaterhouseCoopers organization are the only

users in the EU, USA and other countries, of the name and trade mark

PRICEWATERHOUSECOOPERS. In these circumstances, mere registration

of the Domain Name constitutes bad faith use and registration for

the purpose of the Policy and these proceedings.

(ii) The Respondent

admitted during the telephone conversation with the Complainant’s

attorney on March 8, 2001 that he intended to use the Domain Name

to post information damaging to the Complainant, on the web pages

established at the Domain Name. That this was the Respondent’s intention

is confirmed by the web page set up at the Domain Name as quoted above.

(iii) The

web page attached to the Domain Name is stated to be ‘under construction’.

This fact may deceive the public into believing the web site of the

worldwide PricewaterhouseCoopers organization or a corresponding member

firm cannot be accessed, or is temporarily "down" or is

otherwise inoperative or not in business. Such confusion is liable

to damage the businesses of the PricewaterhouseCoopers organization

and its member firms, in particular because a substantial amount of

their business is promoted and conducted via the internet and web

sites belonging to the said organization and its member firms. This

potential for confusion and resultant damage to the Complainant and

the member firms of the worldwide PricewaterhouseCoopers organization

shows that the registration and any use of the Domain Name by the

Respondent is in bad faith.

(iv) The likelihood

of confusion is not diminished by the assertion "This is NOT

an official site of PriceWaterhouseCoopers". It is well known

that such disclaimers do not avoid confusion: the disclaimer may not

be noticed. A user visiting the site will be expecting to see the

name "PricewaterhouseCoopers" and it is to that name that

such a visitor’s eye will be directed rather than to the attempted

disclaimer. Further, the word "unofficial" does not necessarily

mean "unauthorized". Even if it were noticed by internet

users, it would not necessarily or unambiguously convey the message

that the site is not endorsed by the Complainant or members of the

Complainant’s organization. In addition, visitors to the Complainant’s

web site come from all over the world and not all of them can be expected

to understand the meaning of the word "unofficial".

(v) By registering

and/or using the Complainant’s name and mark in the Domain Name the

Respondent has rendered itself "competitive" with the Complainant

for the purposes of the Policy, paragraph 4.b.(iii).

(vi) In telephone

calls with PwC Luxembourg and the Complainant’s attorney, as detailed

above, and by posting the web page shown the Respondent has admitted

that it intends to use the Domain Name for purposes detrimental to

the Complainant and the PricewaterhouseCoopers organization’s member

firms.

Respondent

The Respondent’s Response

is diffuse and contains much material which, in the opinion of the Panel,

is irrelevant to the decision which the Panel is required to make in terms

of the UDRP. For example, the Respondent is critical of ICANN, the Policy,

WIPO and the World Trade Organization. It claims that big business is ‘colonizing’

the Internet as is shown by the alleged history of 10-1 decisions under

the Policy in favour of big business.

The Respondent and

its Dr Hulbert claim to have had a long relationship with PwC and its predecessors.

Apparently, a major contract (‘Techserve’) with which the Respondent and

a PwC predecessor were involved turned sour. Respondent alleges that this

was because of serious irregularities by PwC personnel. Respondent has been

unable to obtain redress either through the PwC hierarchy or the Luxembourg

court system.

Respondent has specifically

stated in the Response that "the domain name under dispute was purchased

for the sole intent of utilizing the resultant website to publicise evidence

and facts concerning wrongdoings under the Techserve contract". Techserve

was the contract over which the parties had major differences. The evidence

which is to appear on the website is said by the Respondent to be ‘totally

provable’.

The Respondent’s allegations,

relevant to the Complaint and to the criteria which the Panel has to follow

can be summarised thus:

(a) Complainant

should have mentioned in the Complaint:

(i) its long

association with Respondent, a company which wrote the biggest single

business consultancy contract from the European Commission in Luxembourg;

and

(ii) the difficulties

with the Techserve contract.

(b) The Complainant

and its predecessor, Coopers & Lybrand, shared offices with the Respondent.

They operated jointly to mutual advantage in providing services to the

European Commission. More recently, they were involved together in expanding

into Eastern Europe. Respondent was part of a network of companies that

bid for contracts under the PwC name.

(c) The Respondent’s

use of the domain name is not for the purposes of commercial gain but

is legitimate and fair, although the use may involve tarnishing of the

name.

(d) Respondent

did not register and does not use the domain name in bad faith. Its intention

has been "solely to provide a response from the hierarchy of PwC

to take responsibility for the dishonest acts by their partners and to

provoke a public enquiry and/or audit by the European Commission and/or

National Governments involved into the well documented misdeeds which

occurred under the Techserve contract".

(e) The information

from which Complainant asserts that Respondent wishes to sell the name

is anonymous, dubious and prejudicial.

(f) Complainant

does not generally use the name Price WaterhouseCoopers in its domains.

Rather it uses PwC. In other words, Complainant had no intention of using

the full name on a website.

(g) Respondent

is not a competitor but is ‘just a concerned and somewhat screwed citizen’.

(h) The Complainant’s

assertion that mere registration of the domain name constitutes bad faith

is "… megalomania gone mad".

6. Discussion and

Findings

Paragraph 15(a) of

the Rules instructs the 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".

The burden for the

Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- that the

domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has

rights;

- that the

Respondent has no legitimate interests in respect of the domain name;

and

- that the

domain name has been registered in bad faith.

The Respondent does

not (and could not sensibly) challenge that the disputed domain name is

identical or confusingly similar to the Complainant’s marks. The Panel so

holds.

The Complainant gave

the Respondent no rights or legitimate interests in the disputed domain

name. That finding can sometimes be sufficient for the Complainant to discharge

the initial evidential burden. Paragraph 4(a)(ii) of the Policy indicates

that a Respondent can demonstrate rights or legitimate interests in the

domain name. Thus:

(a) before any

notice to you of the dispute, your 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 and services; or

(i) you (as

an individual, business or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or

service mark rights; or

(ii) you are

making a legitimate non-commercial or fair use of the domain name,

without intent for commercial gain to misleadingly direct customers

or to tarnish the trademark or service mark at issue.

The Respondent cannot

point to any evidence that could properly bring it into the above categories.

The Respondent admits that its use of the name might tarnish the Complainant’s

marks but that the website is not operated for commercial gain. That assertion

cannot be correct. Respondent and its alter ego, Dr Hulbert clearly have

a long-standing dispute with the Complainant or PwC.

Operating a website

seeking or providing information deleterious to PwC is part of Respondent’s

strategy to obtain what Dr Hulbert considers is justice or redress against

PwC. As such, that is an operation for indirect commercial gain. Nor is

the use of the name in the circumstances articulated a ‘fair’ use.

The second criteria

is already established.

Paragraph 4(b) of the

Policy states:

"For the purposes

of paragraph 4(a)(iii), the following circumstances, in particular but

without limitation, if found by the Panel to be present, shall be evidence

of the registration and use of a domain name in bad faith:

(i) circumstances

indicating that you have registered or you have acquired the domain

name primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration the complainant who is the owner of the

trademark or service mark or to a competitor of that complainant,

for valuable consideration in excess of your documented out-of-pocket

costs directly related to the domain name; or

(ii) you have

registered the domain name in order to prevent the owner of the trademark

or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct;

or

(iii) you

have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using

the domain name, you have intentionally attempted to attract, for

commercial gain, Internet users to your web site or other on-line

location, by creating a likelihood of confusion with the complainant’s

mark as to the source, sponsorship, affiliation, or endorsement of

your web site or location or of a product or service on your web site

or location."

It should be noted

that the circumstances of bad faith are not limited to the above.

The Panel considers

that the Respondent has registered and used the domain name in "bad

faith" for the reasons set out in the summary of the Complainant’s

submissions. There has clearly been blatant use by the Respondent of the

Complainant’s mark for the purpose of continuing the Respondent’s ongoing

campaign against PwC. Bad faith is clearly shown by the deliberate choice

of a name which belongs to a worldwide organization. The fact that the Respondent

maintains claims against PwC is immaterial to a dispute under the Policy.

It may be able to have those disputes resolved in other fora. The Panel

has no view on the validity of Respondent’s claims against PwC. They are

irrelevant to the decision.

The criterion is therefore

proved to the satisfaction of the Panel.

7. Decision

The Panel accordingly

decides:

(a) that the

domain name registered by the Respondent is confusingly similar to

the trademark to which the Complainant has rights;

(b) that the

Respondent has no rights or legitimate interests in respect of the

domain name;

(c) that the

Respondent’s domain name has been registered and is being used in

bad faith.

Accordingly, pursuant to

paragraph 4(i) of the Policy, the Panel requires that the registration of the

domain name <price-waterhouse-coopers.net> be transferred to the Complainant.

Hon. Sir

Ian Barker QC

Sole Panelist

Dated: May

10, 2001

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