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
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 disputeís 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 Complainantís 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. Partiesí Contentions
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.
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 Panelís 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 Complainantís 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 Respondentís 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.
7.1 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.
Dated: December 14, 2001