WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PwC Business Trust v. Mukesh Patel and Comxsys Consulting, Inc.
Case No. D2000-1666
1. The Parties
Complainant is PwC Business Trust, a Delaware business trust located in New York, New York, United States of America.
Respondents are Mukesh Patel and Comxsys Consulting, Inc. ("Respondent") located in Walnut Creek, California 94598, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain name at issue is <pwc-consulting.com> ("Domain Name").
The registrar is Register.com, New York, New York, United States of America.
3. Procedural History
This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Policy") and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 ("the Rules").
Complainant submitted its complaint in this proceeding on November 30, 2000. Respondent has failed to submit any response.
On January 22, 2001, the WIPO Arbitration and Mediation Center appointed Mark V.B. Partridge as Panelist.
It appears from the communications records in the case file that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, I shall issue a Decision based on the Complaint, the Policy, the Rules, the WIPO Supplemental Rules, and without the benefit of any response from Respondent.
4. Factual Background
Complainant is the owner of the intellectual property rights associated with the PricewaterhouseCoopers organization, which arose from the merger of Price Waterhouse and Coopers & Lybrand on July 1, 1998 ("PwC"). The PwC organization is the world's largest professional services organization.
Complainant is the owner of federal registrations for the mark PW based on first use in commerce on December 1985. Complainant is also the owner of pending applications for federal registration filed on the date of the merger. In addition, Complainant is the owner of numerous foreign registrations for the PWC mark, some of which predate Respondent's registration of the Domain Name. Finally, the PWC mark has been the subject of extensive advertising and use by Complainant.
Respondent registered the Domain Name on February 1, 2000. The Domain Name leads to a web site stating "Coming Soon! We registered our domain name at Register.com the first step on the web."
Respondent has not registered its own name, Comxsys, as a domain name.
5. Parties’ Contentions
Complainant contends that the Domain Name is confusingly similar to its mark, that Respondent has no rights or legitimate interests in the Domain Name, and that Respondent has registered and used the Domain Name in bad faith.
Respondent has failed to deny those allegations.
To obtain relief under the ICANN Uniform Domain Name Dispute Resolution Policy, Paragraph 4(a) of the Policy requires the complainant to prove each of the following:
(1) 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
(2) that the respondent has no rights or legitimate interest in the domain name; and
(3) that the domain name has been registered and used in bad faith.
A. Confusing Similarity
PwC, the distinguishing feature of the Domain Name, is identical to a mark in which Complainant has shown prior common law rights. The addition of the generic term, "consulting" is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant's business. Therefore, I find that the Domain Name is confusingly similar to Complainant's mark as required under Paragraph 4(a)(i) of the Policy.
B. Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy 4(c).
I find that the Respondent has not used the Domain Name for a bona fide offering of goods or services and there is no evidence that it intends to do so. Because Respondent is known by the name Comxsys, it does not appear that it has been known by the Domain Name. Finally, it does not appear that Respondent has made noncommercial or fair use of the Domain Name. Therefore, Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
C. Bad Faith Registration and Use
Under the Policy, bad faith registration and use can be found when the registrant seeks to profit from the sale of a domain name in which it has no legitimate interest or when the registrant has intentionally attempted to attract, for commercial gain, Internet users to a web site by creating a likelihood of confusion with the complainant's mark. Policy 4(b)(i) and (iv).
The PWC mark is famous in the consulting industry and there seems to be no plausible explanation for Respondent's registration and use of the Domain Name, other than a deliberate attempt to trade on Complainant's mark or to profit from the sale of the domain name to Complainant.
It is troubling that Respondent has failed to participate in the dispute resolution process. Under ICANN rules, that failure permits the Panel to draw adverse inferences against the Respondent. Rules 14(b). As explained in an earlier case, Mars, Incorporated v. Vanilla, Ltd., WIPO Case No. D2000-0586 (September 1, 2000), the Policy appears to impose a duty on the registrant to participate in the dispute resolution process and the failure to do so supports a finding of bad faith.
When registering a domain name, a registrant agrees to abide by the registrar’s dispute resolution policy. Paragraph 4 of the Policy states that the registrant is "required to submit to a mandatory administrative proceeding" for certain types of disputes. The burden of responding is low. Counsel is not required. The Policy clearly states the types of evidence that can be presented to show a legitimate interest in the domain name to defeat the claim. Anyone capable of completing the submission process required to register a domain name should be capable of submitting a response.
The dispute resolution service providers give repeated and ample notice of the dispute, and the Rules appropriately inform a registrant that the Panel may draw such inferences as it deems appropriate from the registrant’s failure to respond. In short, there is substantial motivation for a good faith registrant to file a response and no readily apparent excuse not to respond. Indeed, the Policy implies that a good faith registrant has a duty to respond, since it is "required" to submit to the policy. Under these circumstances, the failure to participate in the proceeding is suggestive of bad faith and a lack of legitimate interest in the mark.
Here, because Respondent has failed to provide any explanation for its conduct and because there appears to be no plausible good faith justification for registration and use of the Domain Name, I find that the Domain Name was registered and used in bad faith.
I conclude that the Domain Name <pwc-consulting.com> is identical or confusingly similar to a trademark in which Complainant has rights, that Respondent lacks any right or legitimate interest in the Domain Name, and that the Domain Name was registered and used in bad faith. Therefore, I find in favor of Complainant and grant its request for transfer of the Domain Name.
Mark V. B. Partridge
Dated: February 8, 2001