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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PwC Business Trust v. Pal Sverre Lokoen
Case No. D2000-0921
1. The Parties
Complainant in this proceeding is PwC Business Trust, a trust formed pursuant to the Delaware Business Trust Act located at 1301 Avenue of the Americas, New York, New York 10019, U.S.A. Respondent is Mr. Pal Sverre Lokoen, an individual whose postal address is stated as Valkendorfgaten 9, Bergen, 5012, Norway.
2. The Domain Name and Registrar
The domain name in dispute is <pricewaterhouse-coopers.com>. ("Domain Name"). The Domain Name is registered with Melbourne IT, located at Level 2, 120 King Street, Melbourne, Victoria 3000, Australia.
3. Procedural History
A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 2, 2000, and the signed original together with four copies forwarded by express courier under cover of a letter of the same date. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated August 7, 2000.
On August 10, 2000 a Request for Registrar Verification was transmitted to the registrar, Melbourne IT requesting it to: (1) confirm that the domain name at issue is registered with Melbourne IT; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that a copy of the Complaint was sent to the registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b); (5) confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") applies to the domain name(s); and (6) indicate the current status of the domain name(s).
On August 11, 2000, Melbourne IT confirmed by reply e-mail that the domain name <pricewaterhouse-coopers.com> is registered with Melbourne IT and that the Respondent, Pal Sverre Lokoen, was the current registrant of the name. The registrar also forwarded the requested Whois details, confirmed that the UDRP applies to this domain name and provided responses to all of the other above-listed questions served on it by the WIPO Centre.
A Formal Requirements Compliance Checklist was completed by the assigned WIPO Centre Case Administrator on August 15, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Centre that the Complaint is in formal compliance with the variously mandated requirements for this dispute. It should be noted that the Complainant failed in the Complaint to indicate whether it had forwarded the Complaint to the concerned Registrar, as required pursuant to paragraph 4(b) of the Supplemental Rules. However, the concerned Registrar confirmed that it received a copy of the Complaint, so this Panel concludes that this failure is not a formal deficiency which would preclude the foregoing finding of compliance. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on August 16, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the respondent, setting a deadline of September 4, 2000 by which the respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the respondent by e-mail, as well as by facsimile.
It should be noted that the respondent initially filed its Reply materials, dated August 14, 2000, to the WIPO Centre on August 15, 2000. The WIPO Centre notified the respondent by e-mail on August 16, 2000 that the respondent’s filing was premature. The respondent resubmitted its reply materials, dated August 21, 2000, which were served on the Complainant and its counsel by e-mail and mail, and then filed the same by mail and e-mail with the WIPO Centre on August 21, 2000.
The Complaint elected resolution of this matter by a single panelist. A Statement of Acceptance and Request for Declaration of Impartiality and Independence was forwarded to the WIPO Centre on September 6, 2000, and the file for this matter was transmitted to the Panel for processing on September 11, 2000.
4. Factual Background
Complainant, a Delaware Business Trust, was formed in June, 1998 to hold certain intellectual property for the benefit of the member firms of the worldwide PricewaterhouseCoopers organization. Since July, 1998 all activities of Complainant and the member firms of the worldwide PricewaterhouseCoopers organization have been carried out under the name PRICEWATERHOUSE COOPERS. Complainant also possesses applications and registrations for the trademark "PRICEWATERHOUSECOOPERS" in multiple jurisdictions, including the United States of America, United Kingdom, European Union and Norway. Additionally, member firms of the worldwide PricewaterhouseCoopers organization, since as early as September, 1997, have at various times and in various jurisdictions registered domain names containing the PricewaterhouseCoopers name, including:
On or about June 22, 2000 respondent e-mailed a representative of a member firm of PricewaterhouseCoopers ("Mr. Wagner") indicating that the respondent had obtained registration of the domain name <pricewaterhouse-coopers.com>, and offering the same for sale. This sale offer was repeated in a subsequent e-mail to Mr. Wagner dated June 26, 2000.
5. Parties’ Contentions
Complainant contends that respondent has registered, as a domain name, a mark which is substantially similar to the trademark registered and used by the Complainant, that the respondent has no rights or legitimate interests in respect to the domain name at issue, and that respondent has registered and is using the domain name at issue in bad faith.
The respondent's essential contention is that he registered the domain name in issue to protect it from bad faith use by third parties. He maintains that he had no intention of asking for any amount for the domain name, although he states that he "was hoping that the complainant [would] add a small 'finders fee' […]" The respondent maintains that he had no intention of using the domain name in a manner injurious to the complainant.
6. Discussion and Findings
Paragraph 4(a) of the UDRP stipulates that the UDRP shall apply to disputes where a complainant alleges that:
(i) the respondent's domain name is identical to or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the respondent's domain name has been registered and is being used in bad faith.
All three elements must be present and proved by the complainant. As to paragraph 4(a) (iii), the UDRP further stipulates that evidence of the registraion and use of a domain name in bad faith include the following circumstances:
(i) the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otehrwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
There can be no dispute regarding whether the respondent's domain name is identical or confusingly similar to trade marks of the complainant for the purpose of Paragraph 4(a)(i). The insertion of the hypen and the use of the ".com" are clearly non-distinctive elements.
As to Paragraph 4(a)(ii), the Panel is equally convinced that the respondent has no rights or legitimate interest in respect of the domain name in question. There is no evidence on the record to indicate any current legitimate use of the domain name. The only evidence contained in the record is the respondent's indication of a possible intended use; viz.; "for banner and pop-up advertising on a front-page to [the complainant's] main-domain". This suggestion fails to demonstrate any evidence of rights or legitimate interest in respect of the domain name.
In respect of evidence of registration and use in bad faith under Paragraph 4 (a) (iii), as noted above Paragraph 4(b) of the UDRP stipulates four disjunctive elements. As to the first of these four elements, where the respondent acquires the domain name primarily for the purpose of selling, renting or otherwise transferring it to the complainant for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related thereto, such conduct is evidence of registration and use in bad faith. In the present case, this Panel considers that the respondent's conduct falls squarely into this element for the following reasons:
1 The respondent indicates that he registered the domain name "immediately" for the purpose of preventing "[…] it from falling into the hands of people who might want to use it in bad faith." The Panel concludes that this is clear evidence of the respondent's intention to register the domain name for the purpose of transferring it to the owner.
2. The respondent's initial offer to sell the domain name dated June 21, 2000 to the complainant stated that he was seeking "[…] an offer if [the complainant] want[s] to secure this domain from being used", and that the offer of sale was open until June 27, 2000. While there is no categorical evidence on the record to indicate that the respondent intended to transfer the domain name "for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related thereto", the inference that this Panel draws from the record is that the respondent's primary intention was to profit from the transfer of the domain name to the complainant. Indeed, the respondent's Reply to the Complaint admits that he "was hoping that the Complainant added a small 'finders fee'" to the expenses incurred by the respondent in registering the domain name. While the respondent may indeed have "taken it for granted" that the Complainant knew the cost of registering a domain name, as the respondent alleges, it is of significance that at no time did the respondent offer or communicate a willingness to transfer the domain name to the complainant for the costs incurred by the respondent in registering the domain name.
For the foregoing reasons, this Panel finds that the respondent registered and used the domain name in issue in bad faith under the test stipulated in Paragraph 4(b)(i) of the Rules, and in consequence thereof finds that the respondent's conduct constitutes a violation of Paragraph 4(a)(iii) of the UDRP.
Based on the statements and documents presented before this Panel and in accordance with the UDRP and applicable law, this Panel concludes that the complainant has demonstrated the presence of all three elements of Paragraph 4(a) of the UDRP. Consequently, pursuant to Paragraph 4i of the UDRP, this Panel hereby requires that the registration of the domain name <pricewaterhouse-coopers.com> be transferred from the respondent to the complainant.
Gary N. Bouchard
Dated: November 3, 2000