PwC Business Trust v. Ultimate Search

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PwC Business Trust v. Ultimate Search

Case No: D2002-0087

1. The Parties

1.1 The Complainant is PwC Business Trust, a Delaware business trust which

has a principal place of business at 1301 Avenue of the Americas, New York,

New York 10019, United States of America.

1.2 The Respondent is Ultimate Search, Inc. of GPO Box 7862, Central,

Hong Kong, SAR of China

2. The Domain Name and Registrar

2.1 The domain name upon which this Complaint is based is <pwc.com>.

The registrar of the domain name <pwc.com> as at the date of the

Complaint is Internet Names WorldWide ("INWW").

3. Procedural History

3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute

Resolution Policy approved by the Internet Corporation for Assigned Names

and Numbers ("ICANN") on October 24, 1999, (the "Policy"),

in accordance with the Rules for Uniform Domain Name Dispute Resolution

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

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy in effect as of December 1, 1999,(the "Supplemental

Rules").

3.2 The Complaint was received by the WIPO Arbitration and Mediation

Center (the "Center") by email on January 28, 2002,

and in hard copy on January 31, 2002. The fees prescribed under

the Supplemental Rules have been paid by the Complainant. The Complaint

stated that a copy of the Complaint together with the cover sheet to the

Complaint had been sent to the Respondent as prescribed by the Rules and

the Supplemental Rules, and that a copy of the Complaint together with

the cover sheet to the Complaint had been sent to the concerned registrar

of the domain name in dispute in accordance with the Supplemental Rules.

3.3 On February 1, 2002, the Center sent the Complainant an Acknowledgment

of Receipt of Complaint.

3.4 The Center sent a Request for Registrar Verification to INWW on

February 4, 2002, by email. INWW responded to the Center’s request

by email on February 5, 2002, confirming:

(a) that INWW had received a copy of the Complaint from the Complainant;

(b) that the domain name was registered with INWW;

(c) that the Respondent was the current registrant of the domain

name in dispute;

(d) the Respondent’s contact details;

(e) that the Policy applied to the domain name;

(f) that the current status of the domain name was active;

(g) that the language of the Registration Agreement was English;

and

(h) that under the Registration Agreement "the Registrant

submits to the jurisdiction of the courts as provided in the UDRP

Dispute Policy.".

3.5 The Center sent the Notification of Complaint and Commencement

of Administrative Proceeding on February 5, 2002, to the Respondent

by post/courier, facsimile and email, and to the Complainant by email.

3.6 The Center received the Response from the Respondent on February 26, 2002.

3.7 The Center acknowledged receipt of the Response by email, and

received the hard copy of the Response, on February 26, 2002.

3.8 The Center sent a Request for Candidates to the Complainant by

email on February 26, 2002. The Complainant replied to the Center’s

Request for Candidates by email on March 3, 2002.

3.9 The Center received from the Complainant by email on March 8, 2002,

(and in hard copy on March 12, 2002) a Request to Submit Reply

and Reply to Respondent’s Response, receipt of which was acknowledged

by the Center on March 11, 2002.

3.10 The Panel notes that the normal procedure in Administrative Proceedings

under the Policy is that the Panel essentially reaches its decision based

on the parties’ submissions in the Complaint and the Response. In the

event that the parties make further submissions, whether or not the Panel

considers these further submissions is entirely at the discretion of the

Panel. In this instance, the Panel can see no benefit in considering any

submissions other than the Complaint and Responses, both of which are

perfectly comprehensive and deal with the principles. Accordingly, the

Panel declined to receive any subsequent submission from the Center.

3.11 The Center sent a Notification of Appointment of Administrative

Panel and Projected Decision Date to the Complainant and the Respondent

by email on March 25, 2002.

3.12 The Center sent a transmission of case file to the Panel by email

on March 25, 2002. The documentation was received in hard copy

by the Panel Chairman on March 28, 2002 in Sydney, Australia.

3.13 All other procedural requirements appear to have been satisfied.

4. Factual Background

4.1 Activities of the Complainant

The Panel notes that the only information provided in the Complaint concerning

the activities of the Complainant - PWC Business Trust - is that it is

a Delaware Business trust which was formed in 1998, and which owns all

right, title and interest in and to the PRICEWATERHOUSECOOPERS and PWC

names and marks and certain other intellectual property rights for the

benefit of the member firms of the worldwide PricewaterhouseCoopers organization

which arose from the merger on July 1, 1998, of the two internationally

well-known predecessor organizations of firms, namely, Price Waterhouse

and Coopers & Lybrand.

The following information is asserted in the Complaint regarding the

activities of the PricewaterhouseCoopers organization ("PwC").

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

organization, providing a full range of business, financial and other

services to leading global, national and local companies and to public

institutions. These services include audit, accounting and tax advice;

management, information technology and 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 PwC have offices in most countries, and

in most cities of developed countries throughout the world. PwC has approximately

9000 partners and over 150,000 employees. Total revenue for the firms

of the worldwide PricewaterhouseCoopers organization for the fiscal year

ended June 30, 1999, exceeded $17.3 billion and for the fiscal

year ended June 30, 2000, exceeded $21.5 billion.

PwC maintains a web site at <pwcglobal.com> which is used to direct

Internet users to the various business and financial services offered

by the member firms of the worldwide PricewaterhouseCoopers organization.

The <pwcglobal.com> web site thus functions as a portal which channels

customers and potential customers to information about PwC’s services.

4.2 The Complainant’s trade marks

The following is asserted as fact in the Complaint.

The Complainant has obtained trademark registrations for the PWC mark

in numerous countries around the world, including Hong Kong, SAR of China,

China and Taiwan, Province of China. Other countries in which the mark

has been registered include, among others: the European Union, Bahrain,

Brunei, Cambodia, Costa Rica, Malawi, Mexico, New Zealand, Norway, Papua

New Guinea, Saudi Arabia, South Korea, Switzerland, Thailand and Turkey.

Prior to the merger of Price Waterhouse and Coopers & Lybrand, Price Waterhouse

obtained registration of the mark PW in International Classes 009,

035, 036 and 042, and a copy of a printout from the United States Patent

and Trademark Office ("PTO") web site providing information

on the current status of this registration as at November 26, 2001,

is annexed to the hard copy of the Complaint.

On the date of the merger, July 1, 1998, the Complainant immediately

filed a number of United States trademark applications for the new, nearly

identical mark, PWC, and these applications are pending. Printouts from

the PTO web site providing information on the current status of these

applications as at November 26, 2001, are annexed to the hard

copy of the Complaint.

The PWC mark, for the purposes PwC has used the mark, is inherently distinctive.

Due to the great success and global efforts of PwC, the PWC mark has acquired

extraordinary further distinctiveness. PwC has spent substantial sums

promoting the business, financial and other services rendered under the

PWC mark, creating in the public’s mind an exclusive association between

that mark and PwC. Through continuous use, advertising and promotion,

PwC has created extensive goodwill in the PWC mark.

The PWC mark is famous throughout the world and is known for

clearly and unmistakably calling to mind PwC as the source of high quality

business, financial and other services in a wide range of fields.

Complainant has acquired common law rights in the PWC mark by virtue

of (a) PwC’s extensive use of the mark to identify its services in interstate

and worldwide commerce; (b) PwC’s investment in publicizing and advertising

its services under the PWC mark and the association between the PWC mark

and PwC; (c) the public’s use and association of the mark to refer to

the services provided by PwC; and (d) Complainant’s efforts to protect

its rights in the mark.

Complainant’s foreign trademark registrations, its common law trademark

rights and its pending U.S. trademark applications all establish Complainant’s

clear rights to the PWC trademark under the Policy.

4.3 Activities of the Respondent

The following information concerning the activities of the Respondent

is asserted as fact in the Response.

The Respondent has registered a portfolio of domain names incorporating

common words, generic terms, short terms, and useful phrases. These domain

names are employed in conjunction with an advertising subscription database,

operated by a third party advertising consolidator, to return search results

from the database on the basis of correspondence between terms in the

domain names and search terms for which advertisers have paid subscriptions

on a performance basis.

5. The Complainant’s contentions in the Complaint

5.1 The Complaint asserts that each of the elements specified in paragraph

4(a) of the Policy have been satisfied.

5.2 In reference to the element in paragraph 4(a)(i) of the Policy,

the Complainant alleges that the <pwc.com> domain name is directly identical and confusingly similar to the PWC mark.

5.3 In reference to the element in paragraph 4(a)(ii) of the Policy,

the Complainant alleges that the Respondent has no rights or legitimate

interests in the <pwc.com> domain name because:

(a) the Respondent’s use of the <pwc.com> domain name is

not a bona fide offering of goods or services under Paragraph 4(c)(i)

of the Policy. The Respondent’s strategy of registering large numbers

of domain names, including domain names containing third-party trademarks,

and of adding third-party trademarks to generic domain names, shows

a pattern by Respondent of generating traffic to its portal web sites

by intentionally misdirecting Internet users to those sites. Such

use of a domain name is not legitimate;

(b) in this case, the Respondent’s bad faith use of the PWC trademark

to misdirect the Complainant’s customers and potential customers to

the <pwc.com> and <pwc.usglobal.com> web sites demonstrates

that Respondent’s use of those domain names is not legitimate;

(c) the Respondent is not commonly known by the <pwc.com>

domain name but is rather known by the name Ultimate Search. The Respondent

thus has no rights or legitimate interests in the domain name under

Paragraph 4(c)(ii) of the Policy; and

(d) the Respondent is not making legitimate non-commercial or

fair use of the <pwc.com> domain name under Paragraph 4(c)(iii)

of the Policy, since the Respondent is in fact using the domain name

with the intent of obtaining commercial gain by misleadingly diverting

consumers.

5.4 In reference to the requirements of paragraph 4(a)(iii) of the

Policy, the Complainant alleges Respondent registered and is using the

<pwc.com> domain name in bad faith. In support of this assertion,

the Complainant states:

(a) aside from incorporating Complainant’s PWC mark in the <pwc.com>

domain name, the Respondent has also added the Complainant’s PWC mark

as a lower level domain name to the Respondent’s domain name <usglobal.com>

to create the composite domain name <pwc.usglobal.com>, which

is highly and confusingly similar to Complainant’s domain name <pwcglobal.com>.

PwC uses, and has used for over three years, the domain name <pwcglobal.com>

for its global web site and <@us.pwcglobal.com> as its email

address in the United States. Respondent, plainly aware of Complainant’s

domain name and email address, has intentionally created and used

the nearly identical domain name <pwc.usglobal.com> to attract

Internet users by creating a likelihood of confusion with Complainant’s

mark. Thus, Respondent has intentionally misdirected Internet users

by using the PWC mark;

(b) there is simply no reason for the Respondent to have coupled

the lower level domain name <pwc> with the unrelated domain

name <usglobal.com> other than a bad faith intent to divert

traffic intended for the Complainant’s <pwcglobal.com> web site.

The fact that the Respondent has created and used the <pwc.usglobal.com>

domain name precludes any argument that the <pwc.com> domain

name was chosen by the Respondent without knowledge of PwC’s mark

or for any purpose other than to trade off of the accumulated goodwill

of the Complainant’s PWC mark. Use of the <pwc.usglobal.com>

domain name conclusively demonstrates the Respondent’s bad faith in

registering and using the <pwc.com> domain name, since it establishes

a pattern on the part of the Respondent of using the Complainant’s

PWC trademark to misleadingly divert consumers for the Respondent’s

commercial gain;

(c) the Respondent’s web site itself provides further substantial

evidence of bad faith. The <pwc.com> site offers links to information

in many of the same financial and business categories in which PwC

offers its services. By registering the <pwc.com> domain name

and using it to offer financial and business links, the Respondent

has thus created a high likelihood that Internet users seeking to

access information about PwC’s services will be misdirected to the

Respondent’s site and will mistakenly assume that the Respondent is

affiliated with the Complainant. Because there is no affiliation between

the Respondent and the Complainant, the Complainant has no control

over the nature and quality of any services provided by Respondent

through the <pwc.com> web site. Not only are Internet users

likely to be deceived, but the valuable reputation of the PWC mark

is likely to be diminished, diluted and tarnished by association with

other information offered on the <pwc.com> web site operated

by Respondent, such as information about gambling. Such confusion

is likely to damage PwC, particularly because a substantial amount

of PwC’s business is promoted and conducted via the Internet and via

web sites belonging to the member firms of the worldwide PwC organization.

Even if the initial confusion of some Internet users is dispelled

and those users realize that a business relationship between Respondent

and Complainant is unlikely, Respondent has still gained web site

traffic and revenue and has therefore profited from the deliberately

created confusion engendered by Respondent’s use of the <pwc.com>

domain name;

(d) the Respondent had actual notice of the Complainant’s prior

use of the PWC mark. In addition, the Respondent had constructive

notice of Complainant’s prior use. Such notice may by itself be evidence

of bad faith; and

(e) the Respondent has registered a considerable number of different

domain names, including several domain names that consist of, or incorporate,

third-party registered trademarks. In several cases, the Respondent

has added a lower level domain name consisting of an established third-party

trademark to a seemingly generic domain name to create a domain name

that is confusingly similar to the established trademark. The Respondent

appears to have added the lower level domain names in order to divert

traffic from search engines to the Respondent’s web sites. The Respondent

has also registered a large number of other domain names which appear

to be non-trademarked terms or letter combinations. All or nearly

all of the Respondent’s domain names connect Internet users to seemingly

identical portal-type web sites. The Respondent apparently derives

revenue from directing web traffic from those portal sites to other

web sites, and so derives commercial benefit from increased traffic

to its portal sites. In order to obtain optimal revenue, the Respondent

has registered and used a variety of domain names which are likely

to attract a large amount of traffic. While there may be no bad faith

in registering generic domain names and using them to promote a portal

web site, there is bad faith in registering and using domain names

that incorporate third-party trademarks to increase traffic and revenue.

The previous paragraphs provide ample evidence of such bad faith registration

and use by the Respondent, and this pattern clearly demonstrates Respondent’s

bad faith with regard to the <pwc.com> domain name, which is

but one example of this practice.

6. The Respondent’s contentions in the Response

6.1 In response to the Complainant’s contentions, the Respondent states

that this proceeding relates to the Complainant’s desire to obtain a rare

and valuable three-letter domain name corresponding to the initials of

a trade name used by the Complainant.

6.2 In reference to the first condition, which the Complainant must

prove under paragraph 4(a)(i) of the Policy, the Respondent alleges that

the Complainant has presented no evidence of use of the disputed term

as a trademark, but has merely shown perfunctory registrations in various

countries and regions and has deliberately omitted certain key material

facts. In support of this assertion, the Complainant states:

(a) in respect of the US trademark applications, most of the Complainant’s

US intent-to-use trademark applications have been abandoned due to

lack of evidence of actual use in commerce, and for the remaining

four US applications referred to in the Complaint the Complainant

requested an extension of time to file evidence of actual use as recently

as October 2001. The Complainant’s pending intent-to-use applications

are meaningless as evidence of the existence of a trademark right;

(b) in respect of the non-US trademark applications, it is well

known in the trademark community that there are various registration

documents that may be obtained from certain jurisdictions which do

not require actual use in commerce. They are bare registrations which

do not provide a presumption of validity even in the jurisdictions

where they are issued. For the purpose of this proceeding the Complainant

offers documents from places such as Saudi Arabia, Malawi and Bahrain

because certain types of trademark documents are issued on demand

in these jurisdictions, regardless of whether they reflect an underlying

actual right or are acceptable as proof in these countries. For example,

the Complainant’s Hong Kong trademark registrations are "part

B" registrations which do not have the legal effect of full trademark

registrations and do not have presumptive evidentiary value in Hong

Kong. If anything, the Complainant’s "part B" Hong Kong

registrations provide evidence of a lack of an existing trademark

right in Hong Kong; and

(c) in respect of the issue of distinctiveness, although the letters

"pwc" are the initials of the Complainant’s trade name,

this fact does not by itself establish either use as a trademark or

distinctiveness of such initials. The Complainant has made no showing

of a distinctive trademark interest in the three letters at issue.

The letters "pwc" are generically used to refer to personal

watercraft, and are also used as a trade name by Pratt & Whitney

of Canada (the long-time owner of the <pwc.ca> domain name,

who have also suggested to the Respondent that they are entitled to

the domain name.

6.3 In reference to the second condition, which the Complainant must

prove under paragraph 4(a)(ii) of the Policy, the Respondent states that

this condition is not limited to trademark rights, but includes any legitimate

rights or interests the Respondent may have at law or equity. In respect

of the Respondent’s use of the domain name in dispute, the Response provides

an overview of the activities of the Respondent, which are discussed at

paragraph 4.3 above, and refers to the Complainant’s principal argument

that the Respondent’s addition of the inherently-valuable three-letter

domain name in dispute to its portfolio is not a legitimate use. In response

to this argument, the Respondent states:

(a) that as there is simply no use-based registration of "pwc"

as a trademark to the Complainant, nor is there any directory of common

law claims, there is no reason why the Respondent could not legitimately

register and use the domain name <pwc.com>;

(b) the Respondent is entitled to rely on a prior admission by

the Complainant of the Respondent’s rights in the domain name, made

when the Complainant sent an email to the Respondent dated January 7, 2002

asking, "Would you be interested in selling the domain name?".

The Complainant’s communication, with its invitation to deal (as opposed

to a demand making an offer of settlement) is an admission that the

Respondent does indeed have a legitimate interest in the domain name,

which can be sold to the Complainant;

(c) the domain name in dispute had already been registered to

another party since 1995, at the time of the Complainant’s formative

merger in 1998, and the Complainant knew that even if it intended

to establish "pwc" as a trademark, the corresponding domain

name had been registered to, and was used by, the United States Naval

Public Works Center since 1995, up to the date of the expiration of

a service contract between the US Navy and the prior administrative

contact for the domain name, who provided various Internet services

to the Navy in connection with the <pwc.com> domain name. References

to the domain name <pwc.com> relative to the Naval Public Works

Center still abound on the Internet;

(d) the Respondent has quite a number of domain names. To reduce

the likelihood of potential disputes, the Respondent primarily seeks

to register domain names of inherent value which expire from registration.

Registering such domain names is intended to avoid trademark conflicts

since the most logical operative assumptions are (a) that the prior

registrant has abandoned any claim to the name by allowing it to expire,

and (b) that any third party claim to such a domain name would have

been asserted and resolved by the diligent claimant during the previous

registration term. The Respondent’s legitimate rights and interests

include a reasonable reliance interest in the previous years of inaction

by the Complainant, and the subsequent abandonment of the domain name

by the US Navy;

(e) the primary interest in the domain name should be readily

and objectively apparent and has nothing to do with any potential

trademark value of the domain name. Available short domain names are

rare and have independent commercial value for the mere fact that

they are short and rare. There may be a few three letter combinations

which are immediately and globally recognizable as a famous trademark,

but the present dispute relates to a mere acronym of the corporate

name of a business which is neither exclusive nor distinctive. There

are other parties unrelated to the Complainant who have obtained US

trademark registrations incorporating the letters "PWC".

"PWC" is also a generic acronym for "personal watercraft".

The Respondent has many three-letter domain names, the rarity of which

make them inherently valuable; and

(f) prior to the initiation of this dispute, the Respondent had

received a bona fide offer to purchase the domain name, which the

Respondent would be entitled to consider were it not for the fact

that the domain name is now locked on account of this dispute. This

offer constitutes yet another bona fide and legitimate interest in

the domain name. An option on a live offer is certainly a legitimate

financial and legal interest in a domain name.

6.4 In reference to the third condition, which the Complainant must

prove under paragraph 4(a)(iii) of the Policy, the Respondent alleges

that the Complainant has made factually untrue allegations and deliberately

manufactured misleading evidence. The Respondent further states:

(a) the Respondent desires to clearly set the record straight

concerning the Complainant’s false allegations relating to third-level

domain names: the Respondent employs what is known as "wildcard

dns" for its various domain names. Wildcard DNS is a mechanism

by which the domain name configuration settings simply ignore any

portion of a URL beyond the domain name itself. For example, <wipo.usglobal.com>

will resolve to the same web page as <usglobal.com>. The Complainant

has printed out web pages corresponding to combinations of the Complainant’s

alleged marks along with the suffix "usglobal.com" and has

falsely accused the Respondent of having deliberately configured the

third-level domain names selected by the Complainant to manufacture

this "evidence". The Complainant makes the same false allegation

in connection with other domain names which the Complainant alleges

to comprise a pattern of bad faith registration;

(b) another false implication made by the Complainant is that

the Respondent has intentionally sought to have its website turn up

in the Google search engine in response to particular queries. In

fact, these search engine results are also the product of the Complainant’s

own actions. Unable to obtain registration of <pwc.com> at the

time of its formation, the Complainant registered "pwc"

among various country-code top-level domains. The result of registering

such country-code domain names when one does not possess the generic

".com" version of the domain name is that the Google search

engine will interpret the substring <pwc.com> as having relevance

to the content of the country-code address pages. The Respondent is

not responsible for the fact that the Complainant has registered an

inconsistent set of domain names in various countries, which causes

the substring <pwc.com> to come up in such queries. Pratt &

Whitney of Canada has also approached the Respondent to purchase the

domain name, which demonstrates that multiple parties may freely use

the initials "pwc", and the Respondent sees no reason why

the Respondent should be excluded from being among such parties. If

the Complainant objects to particular links on the Respondent’s site,

then the Complainant may specify them, and the Respondent is willing

to accommodate any such concerns; and

(c) the Respondent emphasises that its intention in registering

the domain name was to obtain registration of a rare and valuable

three-letter domain name, and the Respondent has engaged in no intentional

behavior to divert the Complainant’s customers, to tarnish the Complainant,

to sell the domain name to the Complainant, or to pass itself off

as the Complainant.

7. Discussion and Panel Findings

7.1 This section is structured by reference to the elements required

by paragraph 4(a) of the Policy. In order to be successful, the Complainant

has the burden of proving, on the balance of probabilities, that all three

elements are present.

7.2 Domain Name identical or confusingly similar to Complainant’s

trade mark

The domain name in dispute is <pwc.com>. The Complainant claims

that it has obtained trade mark registrations in various countries of

the "PWC" mark, and that it has acquired common law rights in

the "PWC" mark by virtue of PricewaterhouseCoopers’ use of the

mark to identify its services, its investment in publicizing and advertising

its services under this mark, the public’s use and association of the

mark to refer to PricewaterhouseCoopers’ services, and through the Complainant’s

efforts to protect its rights in the mark.

The first issue that the Panel must address arises from the fact that

the Complainant itself is not at all well known, and certainly not by

reference to any PWC mark. Given that the Complainant appears to be a

trust which has been established to hold the trade marks of its beneficiary,

the PricewaterhouseCoopers organization, the Panel expresses some doubt

as to whether the trustee can raise arguments which essentially rely on

it standing in the shoes of its beneficiary. In particular, it is difficult

to see how a trustee could accrue common law trade mark rights through

the activities of its beneficiary, especially where there appears to be

serious issues as to whether this particular mark is sufficiently distinctive.

This being the case, the Panel does not propose to consider the validity

or otherwise of the common law trade mark rights the Complainant contends

that it has.

Nevertheless, the Complainant does, prima facie, have registered

trade mark rights in the PWC mark, regardless of the basis on which such

registrations were obtained. However, having considered the material before

the Panel, and in the light of the Respondent’s contentions in the Response,

the Panel has serious doubts as to the value of some of these registrations

in terms of proving that the Complainant has valid and valuable registered

trade marks of "PWC".

In particular, in respect of the Complainant’s four pending US trade

mark applications, the Panel notes that although these were filed on July 1, 1998,

as recently as November 24, 2001, the US Patent and Trademark

Office granted the Complainant’s request for a first extension of time

to file a statement of use. This would indicate to the Panel that the

Complainant cannot yet prove in the US that its PWC mark has the necessary

fame to proceed to registration and that, as suggested in the Response,

these pending applications are meaningless as evidence of the existence

of the Complainant’s trade mark rights.

In respect of the Complainant’s non-US trade mark registrations, the

Respondent argues that these are bare registrations which do not provide

a presumption of validity, nor do they reflect an underlying actual right.

Whilst this may be true for some of the countries in which the Complainant

appears to have obtained trade mark registrations of the mark PWC, the

Panel does not accept that a trade mark registration of the mark PWC would

be available "for the price of asking" in a jurisdiction such

as New Zealand.

The Panel does not accept the Respondents’ contention that the Complainant

does not have any trade mark rights connected to the domain names

in dispute. In the Panel’s view, the value of many of the Complainant’s

trade mark registrations of the mark PWC (and the question of whether

the Complainant has any corresponding common law trade mark rights) is

very much open to debate. However, the Panel is satisfied that the Complainant

has provided sufficient evidence of trade mark rights in the PWC mark,

such as evidence of the New Zealand registration, to convince the

Panel that it does have trade mark rights in the mark PWC.

As stated above, the domain name in dispute is <pwc.com>. The Complainant

has trade mark rights in the letters "PWC". The domain name

in dispute is therefore identical to the trade marks owned by the Complainant,

the only difference being the gTLD suffix ".com" (which

is incapable of differentiating the domain name in dispute from the Complainant’s

trade marks). The Panel therefore finds that the domain name in dispute

is identical to the Complainant’s PWC marks.

Accordingly, the Panel finds that Complainant has proven paragraph 4(a)(i)

of the Policy.

7.3 The Respondent has no rights or legitimate interests in respect

of the Domain Name

As noted, above, the Complainant asserts that the Respondent has no rights

or legitimate interests in the disputed domain name for the reasons set

out in paragraph 5.3 above. The Complainant conveniently omits the words

"respect of" which are part of paragraph 4(a)(ii) of the Policy.

To deal in turn with the Respondent’s counter-arguments which are discussed

in paragraph 6.3 (a) to (f) above:

i) the Panel does not accept the Respondent’s counter-argument

that there is simply no use-based registration of "PWC"

as a trademark to the Complainant, for reasons discussed in the previous

paragraph;

ii) the Panel does not accept the Respondent’s argument that the

Complainant has admitted the Respondent’s rights in the domain name

by asking in an email whether the Respondent would be interested in

selling the domain name. Although it can be argued that this is an

admission by the Complainant of the Respondent’s legitimate interest

in the domain name which can be sold to the Complainant, it is equally

arguable that the Complainant merely viewed this approach as representing

the best chance to resolve this dispute quickly and satisfactorily

for both sides, and that the offer was made on a "Without prejudice"

basis;

iii) the fact that this domain name was previously registered

to the United States Naval Public Works Center in no way proves that

the Respondent has legitimate rights or interests in the domain name

in dispute;

iv) similarly, the fact that this domain name was abandoned by

a prior registrant and that any third party claim to the domain name

would probably have been asserted during the previous registration

term does not prove that the Respondent has legitimate rights or interests

in the domain name in dispute;

v) the Panel does not accept that the Policy was drafted and implemented

with a view to according to certain two and three-letter domain names

an inherent commercial value due to their rarity. If this were the

case, the effect would be that Complainants in administrative proceedings

relating to two and three-letter domain names would never be able

to prevail because the inherent commercial value of the domain name

would be a legitimate right or interest per se in the domain

name, and the Complainant would never be able to prove paragraph 4

(a)(ii) of the Policy; and

vi) the Panel does not accept that an offer to purchase a domain

name in dispute which was received by a Respondent prior to receiving

notice of the dispute or the commencement of the administrative proceeding

represents a legitimate right or interest in the domain name. Rather,

in the Panel’s view, a Respondent should be able to show that it has

a legitimate right or interest in the domain name itself at the time

of registering the domain name, for example by citing any of the circumstances

set out in paragraph 4 (c) of the Policy. In the Panel’s view, a mere

offer to purchase the domain name in dispute is not, for the purposes

of the Policy, a legitimate right or interest in the domain name.

Notwithstanding the above, the Respondent appears to assert in pages

9-10 of the Response, and by citing the decision given in NAF Case No.

98813 (which also related to a three-letter domain name), that prior to

receiving any notice of the dispute, it used the domain name in dispute

in connection with a bona fide offering of goods or services.

The services offered by the Respondent are discussed at paragraph 4.3

above. Although the manner in which the Respondent provides these services

may be open to criticism, as stated in the above NAF decision, there is

nothing in the Policy or in current ICANN registrar registration agreements

which prohibits this type of domain name use by a domain name holder.

The Panel finds that the Respondent does have sufficient rights or legitimate

interests in respect of the disputed domain name by virtue of paragraph 4 (c)(i)

of the Policy. In this regard, the facts of the present administrative proceeding

can be distinguished from those of WIPO Cases

Nos. D2000-1666 and D2000-1668, both

of which were uncontested by the Respondent, which also involved the present

Complainant. In both of these decisions, it was found that the Respondent had

not used the domain name in dispute for a bona fide offering of goods or services.

The fact that, in the Panel’s view, the Respondent has used the disputed domain

name in connection with a bona fide offering of goods and services prior to

receiving any notice of the dispute also distinguished this proceeding from

WIPO Case No. D2001-1319, which involved

the present Respondent. In that case, the Panel was unable to find that the

Respondent could come within any of the criteria covered by paragraph 4(c) of

the Policy, primarily as a result of the lack of any evidence submitted by the

Respondent of a legitimate, non-commercial or fair use of the domain name. Accordingly,

the Complainant has failed to prove paragraph 4(a)(ii) of the Policy.

7.4 Domain Name has been registered and is being used in bad faith

As noted, above, the Complainant asserts that the domain name in dispute

has been registered and is being used by the Respondent in bad faith for

the reasons set out in paragraph 5.4 above.

In the Panel’s view, these arguments do not show that on the balance

of probabilities the domain name in dispute was registered and is being

used in bad faith by the Respondent. The arguments discussed in paragraphs

5.4 (a) and (b) regarding third-level domain names have been shown to

be factually incorrect; the Panel does not accept the argument discussed

in paragraph 5.4 (c), which appears to imply that paragraph 4(b)(iv) of

the Policy cannot apply because the domain name in dispute was previously

registered to a third party; the Panel does not accept that the Respondent

had actual or constructive notice of the Complainant’s prior use of the

PWC mark and that this constitutes bad faith given that no convincing

evidence of this has been put before the Panel; and the Panel does not

accept, as the Complainant appears to imply, that paragraph 4(b)(ii) applies

in this case.

An argument that the domain name in dispute was not registered or is

being used in bad faith by the Respondent is that discussed in paragraph

6.3(d) above: namely, that a Respondent who has registered a domain name

registration which has previously lapsed should be in a more confident

position than the registrant of a previously unregistered domain name.

The Panel agrees that in certain limited circumstances the following quote

taken from the three-member Panel decision in NAF Case No. 98441 may be

correct:

"The Panel holds that a domain registrant who knows a domain

name has been abandoned should be more confident, not less so, that

there is no competing trademark claim relating to the domain name;

a person in the position of Respondent should be more confident than

a registrant who selects a previously unregistered name."

However, since there can be many reasons for a domain name to lapse or

be abandoned, and many cybersquatters automatically harvest expired domains,

the Panel would be slow to accord that fact per se as compelling.

7.5 The letters PWC, as the evidence shows clearly, could be attributable

to the Public Work Center, Personal Water Craft, Pratt & Whitney Canada,

and no doubt to many other identifiable people or matters. This inherent

lack of distinctiveness is what undermines the Complainant’s attempts

to have the Panel regard mere registration of PWC.com by the Respondent

as self evident bad faith. The Complainant’s problem is compounded because

it is not the trading entity to whom any common law trade mark rights

can accrue, so that even if in many contexts PwC might be distinctive

of PriceWaterhouseCoopers, the Panel has no hesitation in finding that

absent a small number of use-based trade mark registrations, the letters

PwC are not universally distinctive of the Complainant.

7.6 Again, in this regard, the facts of the present administrative proceeding

can be distinguished from those of WIPO Cases Nos. D2000-1666

and D2000-1668, referred to in paragraph

7.3 above. In the first of these decisions, the Panel found that the most conclusive

evidence of bad faith registration and use on the part of the Respondent was

the Respondent’s failure to participate in the proceeding. In this administrative

proceeding, the Respondent has participated fully. In the second of these decisions,

the Panel found bad faith registration and use on the part of the Respondent

because the domain name had been registered despite "the Complainant’s

extensive and exclusive use of the PWC mark around the world", and because

of the Respondent’s "passive holding of the domain name". The present

Panel respectfully disagrees with the Panel in WIPO

Case No. D2000-1668: this Panel does not view the Complainant’s use of the

PWC mark as particularly extensive, for reasons discussed in paragraph 7.2 above,

nor as exclusive, for reasons discussed in paragraph 7.5 above. Furthermore,

as already discussed, the present Respondent has not passively held the disputed

domain name, but rather, in the Panel’s opinion, was using it in connection

with a plausibly bona fide offering of goods or services before it had received

any notice of the dispute. This conclusion is reached despite the Panel’s misgivings

about the Respondent’s conduct, including its explicit exclusion of the Internet

Archive’s crawler to avoid exposing its historical usage of the Disputed Domain.

7.7 The Panel does not accept the assertions made in the Complaint,

in respect of the requirement of paragraph 4(a)(iii) of the Policy, and

considers that the Complainant has failed to prove paragraph 4(a)(iii)

of the Policy.

8. Decision

The Panel, having found that the Complainant has not proven all of the

requirements of paragraph 4(a) of the Policy, dismisses the Complaint.

Philip N. Argy

Presiding Panelist

David E Sorkin

Panelist

Sir Ian Barker

Panelist

Dated: May 22, 2002

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• PwC Business Trust v. Nicole Kraemer — D2005-0481 · pwcespana.com, pwcglobal.net · Transfer · 21 Jul 2005
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• PwC Business Trust v. C Est SA — D2001-0359 · price-waterhouse-coopers.net · Transfer · 18 May 2001
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• PwC Business Trust — D2000-1667 · Terminated
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