PricewaterhouseCoopers loses claim to 'pwc.com'
PricewaterhouseCoopers (PwC) has lost a complaint under the Internet Corporation for Assigned Names and Numbers' Uniform Domain Name Dispute Resolution Policy (UDRP) against a Hong Kong company which holds the domain name 'pwc.com'. The case provides some interesting commentary on bad-faith findings with domain names that match multiple parties with trademark interests.
PwC registered the initials PWC as a trademark in a number of countries, including China, Hong Kong, New Zealand and several EU member states, with others pending. The respondent, Ultimate Search, maintains a portfolio of domain names consisting of common words, generic terms and phrases. According to PwC, Ultimate Search uses these names to intentionally misdirect internet users to its own advertisers.
In its decision, the three-member World Intellectual Property Organization panel said:
"The letters PWC, as the evidence shows clearly, could be attributable to the Public Work Centre, 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 complainant's attempts to have the panel regard mere registration of 'pwc.com' by the respondent as self evident bad faith."
The panel found that PwC had sufficient interest in the trademark to support a UDRP complaint, rejecting Ultimate Search's argument that "bare registration" of the trademark in countries that do not require evidence of use is not sufficient to meet the initial test of trademark rights under the UDRP. The panel also found that PwC's failure to register the domain name when it had previously lapsed did not preclude PwC from taking action to recover the name at a later date.
Ultimately, however, the panel accepted Ultimate Search's arguments that two and three-letter domain names are rare and valuable, that initials generally lack distinctiveness, and that in the absence of strong prior trademark rights, the use and registration of such names for a bona fide offering of products and services prior to receiving notice of the complaint is sufficient to establish a legitimate interest in the name. In the absence of any other evidence of bad faith, the complaint failed.
Michael Erdle, Deeth Williams Wall, Toronto
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