PwC Business Trust v. CulitoSa

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

PwC Business

Trust v. CulitoSa

Case

No. D2001-1109

1. The Parties

1.1 The Complainant

is a trust formed in June 1998, in accordance with the provisions of the Delaware

Business Trust Act, with its head office located in New York, U.S.A.

1.2 The Respondent is

CulitoSa, based on WHOIS information provided to the Registrar of the Domain

Name at issue, located at O'Donnell 31, Madrid 28009, Spain. The administrative,

technical and billing contact listed against the Domain Name is Maria Navarro.

2. The Domain Name

and Registrar

2.1 The Domain Name,

the subject of this dispute, is

<price-waterhouse-coopers.com>

2.2 The Domain Name

is registered with Internet Domain Registrars, t/a Registrars.com, Suite 1900,

One Bentall Centre, 505 Burrard Street, Vancouver, BC, Box 44, Canada V7X 1M6.

3. Procedural History

3.1 The Complaint was

filed electronically on September 10, 2001, and in hard copy on September 11,

2001.

3.2 The Complainant

elected to have the dispute decided by a single-member Administrative Panel.

3.3 No legal proceedings

have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules"), paragraph 3(b)(xi)).

3.4 As required by the

Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00

has been made by bank transfer, payable to World Intellectual Property Organization.

3.5 The Complainant

agreed that its claim and remedies concerning the registration of the Domain

Name, the dispute, or the dispute’s resolution shall be solely against the Domain

Name holder and waives all such claims and remedies against (a) the WIPO Arbitration

and Mediation Center and Panelists, except in the case of deliberate wrongdoing,

(b) the concerned Registrar, (c) the Registry Administrator, (d) the Internet

Corporation for Assigned Names and Numbers, as well as their directors, officers,

employees and agents.

3.6 On September 17,

2001, the WIPO Arbitration and Mediation Center ("the Center") transmitted

via e-mail to Internet Domain Registrars, t/a Registrars.com, Suite 1900, One

Bentall Centre, 505 Burrard Street, Vancouver, BC, Box 44, Canada V7X 1M6, a

request for registrar verification in connection with this case and on September

28, 2001, the Center received a verification response confirming that the domain

names are registered with Internet Domain Registrars and that the Registrant

for the domain name is the Respondent.

3.7 A copy of this Complaint,

together with the cover sheet as prescribed by the Supplemental Rules, has been

sent or transmitted to the Respondent on October 15, 2001, pursuant to

Rules, paragraph 2(b).

3.8 A copy of this Complaint

has been sent or transmitted to the concerned Registrar, Internet Domain Registrars

on October 15, 2001.

3.9 On November 7, 2001,

the Respondent was determined to be in default for failing to submit a Response.

3.10 The single Panel

member, Cecil O.D. Branson, Q.C., submitted a Statement of Acceptance and Declaration

of Impartiality and Independence and was duly appointed on December 11, 2001,

in accordance with paragraph 15 of the Rules. The Panel was required to forward

its decision to the Center by December 25, 2001.

3.11 The Panel finds

that it was properly constituted and appointed in accordance with the Rules

and the Supplemental Rules.

4. Factual Background

4.1 The following facts

were asserted by the Complainant, were uncontested, and this Panel finds them

to be proven in this case.

4.2 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. The PricewaterhouseCoopers organization arose from the merger

of the two internationally well known predecessor organizations of firms, namely

Price Waterhouse and Coopers & Lybrand.

4.3 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. The Complainant provided evidence

taken from the websites of member firms the worldwide PricewaterhouseCoopers

organization illustrating the range and depth of their activities.

4.4 There are PricewaterhouseCoopers

offices throughout Spain namely in Madrid, Barcelona, Bilbao, La Coruna, Las

Palmas (Canary Islands), Logrono, Malaga, Murcia, Oviedo, Palma (Mallorca),

Pamplona, San Sebastian, Santa Cruz (Tenerife), Santander, Seville, Valencia,

Valladolid, Vigo, Vitoria, and Zaragoza.

4.5 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.

4.6 The member firms

of the worldwide PricewaterhouseCoopers organization are widely advertised and

promoted and are some of the best known consulting businesses in the world.

Their services are advertised worldwide, and are mentioned daily in articles

in the national newspapers and other publications of developed countries. The

Complainant provided a selection of articles mentioning member firms of the

worldwide PricewaterhouseCoopers organization during the course of a number

of recent days taken from the Financial Times web site on September 2, 2001.

4.7 The Complainant

is the proprietor of applications and registrations for the trademark PRICEWATERHOUSECOOPERS

in, inter alia, Spain, European Union and the United States of America. Complainant

provided details of these applications and registrations, along with a summary

table. These registrations are held in the name of the Complainant. The Complainant

owns corresponding trademark applications and registrations for PRICEWATERHOUSECOOPERS

in many other countries of the world.

4.8 Member firms of

the worldwide PricewaterhouseCoopers organization have registered in many countries

of the world domain names which contain the element PRICEWATERHOUSECOOPERS.

In this regard, Complainant provided prints from the relevant "whois" databases

confirming that the following Domain Names have been registered by PricewaterhouseCoopers

LLP (which is a member firm of the worldwide PricewaterhouseCoopers organization:

Domain Name Date

Registered

<pricewaterhousecoopers.com> 21st

September 1997

<pricewaterhousecoopers.net> 20th

July 1998

<pricewaterhousecoopers.org> 20th

July 1998

<pricewaterhousecoopers.co.uk> 7th

July 1998

4.9 The member firms

of the worldwide PricewaterhouseCoopers organization rely on the PRICEWATERHOUSECOOPERS

trade 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 trademark

and one of the major business assets of the member firms of the worldwide PricewaterhouseCoopers

organization.

4.10 On or about July

24, 2001, Complainant's UK in-house trademark counsel became aware that the

Respondent had obtained registration of the Domain Name when she conducted a

"whois" search showing the Domain Name owner as "CulitoSa". In view of the Spanish

address recorded for both the registrant and the administrative, technical and

billing contact, Complainant felt it was reasonable to suppose that CulitoSa

was intended to indicate a Spanish limited liability company, registered under

the name Culito SA.

4.11 On July 25, 2001,

Spanish counsel, Carlos Polo & Associados, was instructed on behalf of the

Complainant to make contact with Culito SA and with the administrative, technical

and billing contact listed against The Domain Name, Maria Navarro. The Spanish

counsel duly wrote on July 30, 2001, to Culito SA by registered mail to the

Madrid address given against The Domain Name. The Spanish Post Office provided

a certificate confirming that the letter had been mailed, but it later returned

the letter stating that it could not be delivered because the addressee was

not known at the address provided. A copy of the letter and a copy of the Spanish

Post Office's two communications, along with English translations of each of

these documents were provided by the Complainant.

4.12 The Complainant’s

Spanish counsel then tried calling the telephone number listed against the administrative,

technical and billing contact for The Domain Name. This turned out to be a mobile

telephone number which was answered by a person claiming not have any knowledge

about Maria Navarro and indicating that the number was his private mobile telephone

number. Complainant's Spanish counsel checked with the Madrid Telephone Information

Service who responded that there is no number listed in Madrid for a company

under the name Culito S.A. The Madrid Telephone Information Service was

requested to provide the telephone number listed against the address given for

Maria Navarro in the details of The Domain Name, namely 31 O'Donnell. The Service

reported that there is no number for any Maria Navarro at that address.

4.13 The Complainant's

Spanish counsel also obtained two commercial reports, one on Culito S.A. and

another on Ms. Navarro, both of which were negative. Culito S.A. does not

appear to be a Spanish company and no Maria Navarro is known at the 31 O'Donnell

address. The Complainant provided copies of the commercial reports and English

translations, along with a copy of the Complainant's Spanish counsel's final

report dated August 16, 2001.

4.14 The e-mail address

given against the Domain Name, namely elcid@rete-mail is incomplete and unusable.

The Complainant provided a copy of the e-mail delivery failure report dated

1st September. Neither <rete-mail.com> nor <rete-mail.es> resolve

to an active web page suggesting that the Registrant's failure to provide a

real e-mail address was not the result of a typographical error.

4.15 The Complainant

produced a print of the website page for <price-waterhouse-coopers.com>

which indicates that the address resolves to a holding page provided by the

registrar for the Domain Name and not to any web page of the Respondent. The

Domain Name is therefore inactive, and there is no evidence of it every having

been otherwise.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant

says that The sole distinguishing element of the Domain Name is the word "PRICEWATERHOUSECOOPERS",

that the ".com" element and the two hyphens are non-distinctive and should be

discounted when comparing the Domain Name with the Complaint's PRICEWATERHOUSECOOPERS

name and trademark.

5.2 PRICE-WATERHOUSE-COOPERS

is identical or virtually identical to the following:

a. The partnership,

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

organization, use of which name commenced in July 1998, and has continued uninterrupted

since that time.

b. The subject matter

of the Complainant's trade mark applications and registrations, the earliest

of which date back to June 1998, before the date of the registration of the

Domain Name

c. The trademark, which

since 1998, has been extensively used under licence from the Complainant by

the member firms of the worldwide PricewaterhouseCoopers organization to identify

their accounting and consulting businesses and the trade origin of the products

and services they provide.

d. The combination of

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

of the member firms of the worldwide PricewaterhouseCoopers organization, namely

"Price Waterhouse" and "Coopers & Lybrand".

5.3 The Complainant

submits that The Respondent should be considered as having no rights or legitimate

interests in respect of the Domain Name for, inter alia, the following

reasons:

a. There is no evidence

the Respondent does or ever did conduct any legitimate business or activities

under the name PRICE-WATERHOUSE-COOOPERS or the Domain Name or any variant.

b. There is no evidence

the Respondent has or ever did have any bona fide interest in establishing any

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

the Domain Name or any variant. In this respect, the Complainant contends that

to the extent the Respondent attempts to show an intention 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 to a purchaser. Any such intended use would not be bona fide

for the purposes of these proceedings.

5.4 The Complainant

further submits that the Domain Name should be found to have been registered

and used in bad faith, inter alia, for the following reasons:

a. The Respondent is

based in and resident in Spain, one of the larger of the EU member states. In

view of the enormous promotion and public recognition of the name and trade

mark PRICEWATERHOUSECOOPERS generated by the Complainant and its licensees both

in Spain and worldwide the Respondent must have been aware, when it registered

the Domain Name in December 1999, of the Complainant's and its licensees'

business in, use of, and rights in and to the name and mark PRICEWATERHOUSECOOPERS.

As stated earlier, to the best of the Complainant's belief, the Complainant

and the member firms of the worldwide PricewaterhouseCoopers organization are

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

PRICEWATERHOUSECOOPERS. It is submitted that in these circumstances, mere registration

of the Domain Name constitutes bad faith use and registration for the purpose

of the Policy and these proceedings.

b. The enquiries carried

out by the Complainant's Spanish counsel suggest that the contact information

provided by the Respondent when it applied to register the Domain Name was false.

In particular it appears that the Respondent gave a false or at least a misleading

Registrant name (CulitoSa), gave a false address both for the Registrant and

the Registrant's Administrative/Technical/Billing contact, gave a false telephone

number and a false or at least incomplete email address.

c. It appears that the

Domain Name has not been used by the Respondent since it was established more

than 18 months ago.

5.5 The Complainant

submits further that, under the Policy, "inaction" along with other

factors, can constitute bad faith.

5.6 The Complainant

submits further that:

(i) The Respondent must

have been aware when it registered the Domain Name that it consisted of the

Complainant's name and trademark.

(ii) Thus, the Respondent

must have registered the Domain Name primarily for the purpose of selling, renting

or otherwise transferring the Domain Name to the Complainant or one of the member

firms of the worldwide PricewaterhouseCoopers organization who are, and must

have been recognised by the Respondent to be, the exclusive owner and users

of an identical or confusingly similar trade mark and trading name (Policy para.

4.b(i)).

(iii) Further, the Respondent

must have registered the Domain Name in order to prevent the Complainant and

the member firms of the worldwide PricewaterhouseCoopers organization, from

reflecting their name and mark in a corresponding domain name (Policy para 4.b(ii)).

(iv) And the Respondent

must have registered the Domain Name primarily for the purpose of disrupting

the business of the Complainant and/or the members of the worldwide PricewaterhouseCoopers

organization (Policy para 4.b.(iii).

5.7 As an alternative

argument, the Complainant submits that it is found that the registration and

use of the Domain Name by the Respondent does not fall within the indicia

of bad faith listed in 4(b) of the Policy it is respectfully submitted that

the Panel should in any event find that the Respondent's registration and use

of the Domain Name was in bad faith for the following reasons:

(1) The Respondent conducts

no legitimate business or any legitimate offering of goods or services from

any web pages established under the Domain Name;

(2) The Respondent is

not and has never been known by the Domain Name;

(3) The Respondent is

not making legitimate non-commercial or fair use of the Domain Name.

B. Respondent

5.8 The Respondent has

not filed a Response to the Complaint. Under para. 5(e) of the Rules, it

is provided that if a Respondent does not submit a Response, in the absence

of exceptional circumstances, the Panel shall decide the dispute based upon

the Complaint. As no exceptional circumstances have been brought to the Panel’s

attention, it proceeds to make the findings below on the basis of the material

contained in the Complaint.

C. No Other Submissions

5.9 The Panel has not

received any other requests from Complainant or Respondent regarding further

submissions, beyond the Complaint, waivers or extensions of deadlines, and the

Panel has not found it necessary to request any further information from the

Parties.

6. Discussion and

Findings

6.1 Paragraph 4(a) of

the Policy states that the Complainant must prove each of the following requirements:

(i) 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; and

(ii) that the Respondent

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

(iii) that the Domain

Name has been registered and is being used in bad faith.

These matters are considered

in turn below.

(i) The domain name

registered by Respondent is identical or confusingly similar to a trademark

or service mark in which Complainant has rights.

6.2 This first factor

contains two elements:

First, does Complainant

have rights in a relevant mark, and second, is the Domain Name identical or

confusingly similar to that mark. Plaza Operating Partners, Ltd. v. POP Data

Technologies and Joseph Pillus, WIPO

Case No. D2000-0166.

6.3 This Panel accepts

that the Complainant is the holder of the registration for the marks referred

to as above.

6.4 The only difference

between the Domain Name, <price-waterhouse-coopers.com> and the marks

in which Complainant has rights, as above, is the insertion of a hyphen [-]

between the word "price" and the word "waterhouse" and between

the word "waterhouse" and the word "coopers".

6.5 "Essential"

or "virtual" identity is sufficient for the purposes of the Policy:

The Stanley Works and Stanley Logistics Inc. v. Cam Creek Co. Inc., WIPO

Case No. D2000-0113, Nokia Corp. v. Nokiagirls.com a.k.a IBCC,

WIPO Case No. D2000-0102, and America Online, Inc. v. Anson Chan,

WIPO

Case No. D2001-0004.

6.6 The use of a hyphen

between two words is so de minimus as not to constitute a material difference

between the mark in which Complainant holds rights and the Domain Name registered

to the Respondent: Channel Tunnel Group Ltd. v. Powell, WIPO

Case No. D2000-0038; Pep Boys Manny, Moe and Jack of California v. E-Commerce

Today, Ltd. eResolution Case No. AF-0145.

6.7 This Panel finds

that the Domain Name <price-waterhouse-coopers.com> is identical or confusingly

similar to the PRICEWATERHOUSECOOPERS name and mark in which Complainant has

rights.

(ii) Respondent has

no rights or legitimate interests in respect of the domain name.

6.8 Respondent is not

a licensee of the Complainant PricewaterhouseCoopers nor is it authorized to

use Complainant’s PRICEWATERHOUSECOOPERS name and mark. The Respondent registered

the <price-waterhouse-coopers.com> Domain Name without the authorization,

knowledge or consent of Complainant.

6.9 Once a Complainant

makes a prima facie showing that a Respondent lacks rights in the Domain

Name, the burden of proof shifts to the Respondent to come forward with demonstrable

evidence proving a legitimate interest in the Domain Name. Document Technologies,

Inc. v. International Electronic Communications Inc. WIPO

Case No. D2000-0270; Universal City Studios, Inc. v. G.A.B. Enterprises

WIPO

Case No. D2000-0416; Drexel University v. David Brouda, WIPO

Case No. D2001-0067. This is consistent with the Policy in para. 4(c)(iii),

which speaks in terms of the Respondent demonstrating his rights or legitimate

interests in the Domain Name for legitimate non-commercial or fair use purposes.

The Policy strikes a fair relationship between the overall onus of proof in

regard to an issue in a case as contrasted with the proof of a fact material

to that issue. This Panel finds that the Complainant has made a prima facie

showing, as above.

6.10 This Panel finds

that the Respondent has no rights or legitimate interests in respect of the

Domain Name <price-waterhouse-coopers.com>.

(iii) The domain

name has been registered and is being used in bad faith.

6.11 It has been held

that a failure of a Respondent to file a Response entitles the Panel to draw

an inference adverse to the Respondent’s that there is no basis for finding

that the Respondent should have had any good faith reason for registering

and using the Domain Name in issue. See: Isabelle Adjani v. Second Orbit

Communications, Inc. WIPO

Case No. D2000-0867.

6.12 As held in Bill

Withers v. Robert Dominico et al, WIPO

Case No. D2000-1621, it has been established in a number of cases that registration

together with "inaction" and other facts can constitute bad faith

use. See also: Telstra Corp. Ltd. v. Nuclear Marshmallows WIPO

Case No. D2000-0003; Ingersoll-Rand v. Frank Gully, d/b/a Advcomren WIPO

Case No. D2000-0021; Guerlain, S.A. v. Peikang WIPO

Case No. D2000-0055; Compaq Compute Corp v. Boris Beric WIPO

Case No. D2000-0042; Sanrio Company, Ltd. and Sanrio Inc. v. Neric

Lau WIPO

Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com

WIPO

Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink

Source, Inc. WIPO

Case No.D2000-0090; Stralfors AB v. P D S AB, WIPO

Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO

Case No. D2000-0075.

6.13 There are other

facts that provide sufficient evidence of bad faith in this case. It has been

held that the taking by a Respondent of deliberate steps to ensure that its

true identity cannot be determined and communication with it cannot be made

is evidence of bad faith. See: Telstra Corp. Ltd. v. Nuclear Marshmallows

WIPO

Case No. D2000-0003; Home Director, Inc. v. Home Director, WIPO

Case No. D2000-0111; Geoffrey Inc. v. Babys Russian, WIPO

Case No. D2000-1011; McClatchy Newspapers, Inc. v. Moldava S.A. WIPO

Case No. D2001-0304.

6.14 That this is the

situation in the case before this Panel has been demonstrated to the fullest.

6.15 Given the evidence

put forward by the Complainant, and the lack of any Response from the Respondent,

this Panel finds that the Domain Name <price-waterhouse-coopers.com> has

been registered and is being used in bad faith.

7. Decision

7.1 This Panel finds

and decides that:

(a) the Domain Name

is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights;

(b) the Complainant

has established that Respondent has no rights or legitimate interests in respect

of the Domain Name <price-waterhouse-coopers.com>;

(c) the Complainant

has established that the Domain Name has been registered, and is being used

in bad faith.

7.2 The ruling of this

Panel is that the registration of the Domain Name <price-waterhouse-coopers.com>

be transferred to the Complainant.

Cecil O.D.

Branson, Q.C.

Sole Panelist

Dated: December

14, 2001

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