WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PwC Business Trust and PricewaterhouseCoopers LLP v. Perfect Privacy, LLC / Sarah Wakida

Case No. D2020-0232

1. The Parties

The Complainant is PwC Business Trust, United States of America (“United States”) and PricewaterhouseCoopers LLP, United States, represented by Orrick, Herrington & Sutcliffe, LLP, United States.

The Respondent is Perfect Privacy, LLC, United States / Sarah Wakida, United States.

2. The Domain Name and Registrar

The disputed domain name <pwc-tax.com> is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2020. On January 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 30, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 31, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 3, 2020.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2020.

The Center appointed Thomas P. Pinansky as the sole panelist in this matter on March 2, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, PwC Business Trust, is a Delaware Business trust which owns all right, title and interest in and to the PWC names and marks, and licenses those names and marks to the PricewaterhouseCoopers network of firms (the “PWC Network Firms”) including PricewaterhouseCoopers LLP.

The PWC Network Firms were established in 1998 and are the world’s largest professional services organizations providing a range of financial and regulatory assurance services, tax, advisory and other consultant services to leading companies. The PWC Network Firms operate in approximately 160 countries, and its gross revenue exceeded USD 42 billion for the fiscal year ended June 30, 2019.

The Complainant, PwC Business Trust, registered the following trademark and/or service marks relating to the PWC mark and PWC stylized mark in the United States:

- PWC (stylized) Service Mark Reg. No. 2,579,070, registered June 11, 2002;
- PWC Trademark Reg. No. 2,579,071, registered June 11, 2002; PWC Service Mark Reg. No. 2,579,072, registered June 11, 2002; PWC Service Mark Reg. No. 2,579,073, registered June 11, 2002; PWC (stylized) Service Mark Reg. No. 2,582,591, registered June 18, 2002;
- PWC Trademark Reg. No. 2,591,910, registered July 9, 2002;
- PWC (stylized) Service Mark Reg. No. 2,591,914, registered July 9, 2002;
- PWC Service Mark Reg. No. 2,594,587, registered July 16, 2002;
- PWC Service Mark Reg. No. 2,594,589, registered July 16, 2002;
- PWC Service Mark Reg. No. 2,601,415, registered July 30, 2002;
- PWC (stylized) Service Mark Reg. No. 3,963,629, registered May 17, 2011, and PWC Service Mark Reg. No. 3,963,631, registered May 17, 2011;
- PWC (stylized) Trademark Service Mark Reg. No. 3,968,019, registered May 24, 2011; and PWC (stylized with design) Service Mark Reg. No. 3,968,020, registered May 24, 2011;
- PWC (stylized with design) Service Mark Reg. No. 4,057,322, registered November 15, 2011;
- PWC (stylized with design) Service Mark Reg. No. 4,057,498, registered November 15, 2011;
- PWC (stylized with design) Service Mark Reg. No. 3,946,351, registered April 12, 2011;
- PWC (stylized with design) Service Mark Reg. No. 3,949,367, registered April 19, 2011;
- PWC (stylized with design) Service Mark Reg. No. 4,184,436, registered July 31, 2012;
- PWC (stylized with design) Service Mark Reg. No. 4,222,360, registered October 9, 2012; PWC (stylized with design) Service Mark Reg. No. 4,226,116, registered October 16, 2012; PWC (stylized) Service Mark Reg. No. 4,238,117, registered November 06, 2012; and PWC (stylized with design) Service Mark Reg. No. 4,246,404, registered November 20, 2012.

Aside from the above registrations, the Complainant is the owner of the hundreds trademark registrations for the PWC and PRICEWATERHOUSECOOPERS marks worldwide, and the PWC mark is widely recognized in the advisory, tax and consulting service field. Moreover, the Complainant has registered numerous domain names incorporating PWC, including but not limited to <pwc.com> and <pwctax.com> for websites to promote their services.

The disputed domain name <pwc-tax.com> was registered by the Respondent on November 18, 2019, and the domain name resolves to a blank page without any content. The Respondent used the disputed domain name to create its business email account and sent a phishing email to the Complainant’s customers in which it impersonated an employee of a PwC Member Firm.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights. It further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because:

i) the Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks PWC or PRICEWATERHOUSECOOPERS;

ii) there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services;

iii) there is no evidence which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “PwC” or “PricewaterhouseCoopers.”

The Complainant also contends that the Respondent registered and is using the disputed domain name in bad faith because the Respondent (i) used the disputed domain name to mislead clients of the Complainant into paying fraudulent invoices by sending a phishing email, and (ii) was fully aware of the Complainant’s reputation and well-known trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Respondent neither replied to the Complainant nor responded to the Center’s communication of notification of the Complaint before the due date for Response on February 25, 2020, and no email communications were received from the Respondent during the proceeding. The consensus view of UDRP panels in case of default is that “the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP.” Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

However, paragraph 14 of the Rules provides in the event of default that a panel may draw such inferences therefrom as it considers appropriate. Paragraph 15(a) of the Rules instructs that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Tradewind Media, LLC d/b/a Intopic Media v Jayson Hahn, WIPO Case No. D2010-1413, “Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts.”; see also Time Equipment Corp. v. Stage Presence, WIPO Case No. D2003-0850; Express Scripts, Inc. v. Roy Duke, Apex Domains aka John Barry aka Domains for Sale and Churchill Club aka Shep Dog, WIPO Case No. D2003-0829; Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004.

A. Identical or Confusingly Similar

The disputed domain name <pwc-tax.com> incorporates the Complainant’s PWC trademark in its entirety. In cases where a domain name incorporates the entirety of a trademark, it is the view of UDRP panels that the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”); see also, Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, “When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy.” Moreover, the generic Top-Level Domain (“gTLD”), such as “.com,” is normally disregarded during the first element confusing similarity test. See section 1.11 of the WIPO Overview 3.0. Therefore, the confusing similarity is given where a trademark is recognizable as such within the domain name.

In this case, in the disputed domain name, the descriptive term “tax” and a hyphen, and generic Top-Level Domain (“gTLD”) “.com,” are attached to the Complainant’s PWC trademark. However, given that the term “tax” or a hyphen is a merely descriptive term, it does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name. See Sonera Ojyand Telia AB (Publ.) v. Daungsoo Ghim, WIPO Case No. D2002-0403; see also, JanSport Apparel Corp v. Feng Qi, WIPO Case No. D2017-1486, “The mere addition of the descriptive terms to the Complainant’s EASTPAK registered trademark does not eliminate the confusing similarity between the Complainant’s registered trademark EASTPAK and the disputed domain names.” Moreover, the mere addition of the gTLD “.com” also does not eliminate confusing similarity because gTLD is viewed as a standard registration requirement as the “use of gTLD is required of domain name registrants.” See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127.

Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Section 2.1 of the WIPO Overview 3.0 provides that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

After reviewing the assertions made in the Complaint and the supporting materials thereto, it appears that the Complainant never gave the right to use its trademarks to the Respondent. The Complainant has not authorized or permitted the Respondent to use its PWC or PRICEWATERHOUSECOOPERS trademarks. The Panel thus finds that the Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain name, which wholly incorporate the Complainant’s marks. F.Hoffmann-La Roche AG v. Fred, WIPO Case No. D2006-0246.

Furthermore, the Panel agrees that there is no evidence of the Respondent’s use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. Nor is there evidence, which suggests that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or is commonly known by the disputed domain name or the name “PWC” or “PricewaterhouseCoopers.”

Thus, the Panel finds that the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.

Moreover, by failing to respond to the Complainant’s position before the deadline, the Respondent failed to prove any of the circumstances provided in paragraph 4(c) of the Policy.

In light of the above analysis, along with the inferences available to be made in case of the absence of a timely response by the Respondent, the Panel finds that the Respondent lacks any rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b)(iv) of the Policy provides that bad faith is found when there are circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

It is generally accepted under the Policy that, for a bad faith registration,

(i) the respondent must have been aware of the complainant or its trademark when it registered the disputed domain name; and

(ii) the registration must in some way have been targeted at the complainant or its trademark, for example, by seeking to capitalize on it. See The Perfect Potion v. Domain Administrator, WIPO Case No. D2004-0743 and Mediaset S.p.A. b Didier Madiba, Fenicius LLC, WIPO Case No. D2011-1954.

Given that PWC is a famous trademark worldwide, it is highly likely that the Respondent was aware of the rights the Complainant has in the trademark, and the value of the said trademark, at the point of the registration. The fact that Respondent used the disputed domain to create a business email account and sent a phishing email to the Complainant’s customers indicates not only that the Respondent had a prior knowledge about the Complainant’s business and trademark, but also that it registered the disputed domain name with the aim of fraudulently obtaining monies by creating a likelihood of confusion with the Complainant’s trademark.

For the reasons above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <pwc-tax.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist
Date: March 16, 2020