WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PWC Business Trust v. CíEst 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 CíEst 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 (Ďthe Registrarí). 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 Registrarís 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 Ďlicencedí 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 Registrarís 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 organizationís member firms make up the worldís 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 Complainantís 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 Jonesí 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 Complainantís 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. Partiesí Contentions
(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 Complainantís 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 Complainantís 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 Complainantís and its licenseesí 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 Complainantís 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 Respondentís 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 Ďunder constructioní. 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 visitorís 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 Complainantís organization. In addition, visitors to the Complainantís 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 Complainantís 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 Complainantís 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 organizationís member firms.
The Respondentís 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 Ďcolonizingí 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 (ĎTechserveí) 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 Ďtotally provableí.
The Respondentís 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 Respondentís 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 Ďjust a concerned and somewhat screwed citizení.
(h) The Complainantís assertion that mere registration of the domain name constitutes bad faith is "Ö 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 Complainantís 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 Complainantís 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 Respondentís 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 Ďfairí 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 complainantís 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 Complainantís submissions. There has clearly been blatant use by the Respondent of the Complainantís mark for the purpose of continuing the Respondentís 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 Respondentís claims against PwC. They are irrelevant to the decision.
The criterion is therefore proved to the satisfaction of the Panel.
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 Respondentís 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.
Ian Barker QC
Dated: May 10, 2001