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
<price-waterhouse-coopers.com>
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 dispute’s 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 Complainant’s
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. Parties’ Contentions
A. Complainant
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.
B. Respondent
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 Panel’s
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.coma.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 Complainant’s 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. EnterprisesWIPO
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 Respondent’s 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.
6.13 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. Decision
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.
Cecil O.D.
Branson, Q.C. Sole Panelist
Dated: December
14, 2001
Stay updated! Get new cases and decisions by daily email.
