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 Centerís 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 Respondentís 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 Centerís 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 Respondentís 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 partiesí 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").
PwCís member firms make up the worldís 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 PwCís services.
4.2 The Complainantís 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 publicís 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) PwCís extensive use of the mark to identify its services in interstate and worldwide commerce; (b) PwCís investment in publicizing and advertising its services under the PWC mark and the association between the PWC mark and PwC; (c) the publicís use and association of the mark to refer to the services provided by PwC; and (d) Complainantís efforts to protect its rights in the mark.
Complainantís foreign trademark registrations, its common law trademark rights and its pending U.S. trademark applications all establish Complainantís 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 Complainantís 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 Respondentís 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 Respondentís 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 Respondentís bad faith use of the PWC trademark to misdirect the Complainantís customers and potential customers to the <pwc.com> and <pwc.usglobal.com> web sites demonstrates that Respondentís 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 Complainantís PWC mark in the <pwc.com> domain name, the Respondent has also added the Complainantís PWC mark as a lower level domain name to the Respondentís domain name <usglobal.com> to create the composite domain name <pwc.usglobal.com>, which is highly and confusingly similar to Complainantís 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 Complainantís 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 Complainantís 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 Complainantís <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 PwCís mark or for any purpose other than to trade off of the accumulated goodwill of the Complainantís PWC mark. Use of the <pwc.usglobal.com> domain name conclusively demonstrates the Respondentís 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 Complainantís PWC trademark to misleadingly divert consumers for the Respondentís commercial gain;
(c) the Respondentís 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 PwCís services will be misdirected to the Respondentís 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 PwCís 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 Respondentís use of the <pwc.com> domain name;
(d) the Respondent had actual notice of the Complainantís prior use of the PWC mark. In addition, the Respondent had constructive notice of Complainantís 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 Respondentís 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 Respondentís 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 Respondentís bad faith with regard to the <pwc.com> domain name, which is but one example of this practice.
6. The Respondentís contentions in the Response
6.1 In response to the Complainantís contentions, the Respondent states that this proceeding relates to the Complainantís 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 Complainantís 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 Complainantís 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 Complainantís 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 Complainantís "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 Complainantís 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 Respondentís 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 Complainantís principal argument that the Respondentís 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 Respondentís 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 Complainantís 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 Complainantís 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 Respondentís 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 Complainantís 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 Complainantís 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 Complainantís 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 Respondentís 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 Complainantís 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 Complainantís 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 PricewaterhouseCoopersí use of the mark to identify its services, its investment in publicizing and advertising its services under this mark, the publicís use and association of the mark to refer to PricewaterhouseCoopersí services, and through the Complainantís 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 Respondentís 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 Complainantís 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 Complainantís 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 Complainantís trade mark rights.
In respect of the Complainantís 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 Respondentsí contention that the Complainant does not have any trade mark rights connected to the domain names in dispute. In the Panelís view, the value of many of the Complainantís 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 Complainantís trade marks). The Panel therefore finds that the domain name in dispute is identical to the Complainantís 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 Respondentís counter-arguments which are discussed in paragraph 6.3 (a) to (f) above:
i) the Panel does not accept the Respondentís 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 Respondentís argument that the Complainant has admitted the Respondentís 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 Respondentís 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 Panelís 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 Panelís 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 Panelís 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 Panelís 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 Complainantís 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 Complainantís attempts to have the Panel regard mere registration of PWC.com by the Respondent as self evident bad faith. The Complainantís 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 Respondentís 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 Complainantís extensive and exclusive use of the PWC mark around the world", and because of the Respondentís "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 Complainantís 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 Panelís 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 Panelís misgivings about the Respondentís conduct, including its explicit exclusion of the Internet Archiveís 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.
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
David E Sorkin
Sir Ian Barker
Dated: May 22, 2002