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DECISION

 

PricewaterhouseCoopers LLP and PwC Business Trust v. Coopers & Lybrand Law Firm c/o Lybrand Coopers

Claim Number: FA0911001294729

 

PARTIES

Complainant is PricewaterhouseCoopers LLP and PwC Business Trust (“Complainant”), represented by Philip A. Gilman, of Law Office of Philip Gilman, New York, USA.  Respondent is Coopers & Lybrand Law Firm c/o Lybrand Coopers (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cooperslybrandlaw.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Judge Ralph Yachnin, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2009.

 

On November 16, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cooperslybrandlaw.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 14, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@cooperslybrandlaw.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <cooperslybrandlaw.com> domain name is confusingly similar to Complainant’s PRICEWATERHOUSECOOPER mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cooperslybrandlaw.com> domain name.

 

3.      Respondent registered and used the <cooperslybrandlaw.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

On July 1, 1998, Complainant merged Pricewaterhouse and Coopers & Lybrand accounting firm to create the firm known as PricewaterhouseCoopers LLP.  Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PRICEWATERHOUSECOOPER mark (e.g., 2,594,588 issued July 16, 2002).

 

Respondent, Coopers & Lybrand Law Firm c/o Lybrand Coopers, registered the <cooperslybrandlaw.com> domain name on December 24, 2008.  The website resolving from the disputed domain name uses the same color scheme as Complainant’s official website.  Also, the address on the “Contact Us” portion of the website is very close to the address used by Coopers & Lybrand before its merger with Pricewaterhouse.  Complainant’s investigations revealed that there is no law firm located at the address listed, no law firm by that name comes up in law firm database searches, and no lawyers are listed as working at the firm.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(1)   the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has established rights in the PRICEWATERHOUSECOOPER mark under Policy ¶ 4(a)(i) via its multiple registrations of the mark with the USPTO (See, e.g., 2,594,588 issued July 16, 2002).  See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).

 

In Complainant’s PRICEWATERHOUSECOOPER mark, the COOPER portion derives from the Cooper & Lybrand accounting firm that merged with Complainant in 1998.  Respondent’s <cooperslybrandlaw.com> domain name includes the last portion of Complainant’s PRICEWATERHOUSECOOPER mark, the words “Lybrand law,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the dominant portion of the PRICEWATERHOUSECOOPER mark is the PRICEWATERHOUSE portion and not the COOPER portion due to the COOPER element being last in Complainant’s mark and the fact that an Internet user would not relate COOPER to Complainant’s PRICEWATERHOUSECOOPER mark.  See Barnesandnoble.com LLC v. Rosenblum, FA 1089020 (Nat. Arb. Forum Nov. 15, 2007) (finding that the dominant feature of the BARNESANDNOBLE mark is not NOBLE, but instead BARNES, because BARNES is the first element in the mark and the element NOBLE would not readily cause a reader to invoke the BARNESANDNOBLE mark as a whole).  In addition, the Panel finds that the terms “lybrand” and “law” do not have an obvious relationship to Complainant’s business.  See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (finding that the complainant has not satisfied Policy ¶ 4(a)(i) as its mark consists of generic terms that are not entirely associated with the complainant’s offering of services); see also Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) (holding that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant or the insurance and financial industry and was thus not confusingly similar to the complainant’s mark).  Therefore, the Panel finds that Respondent’s <cooperslybrandlaw.com> domain name is not confusingly similar to Complainant’s PRICEWATERHOUSECOOPER mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

 

The Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) because the disputed domain name is not confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

Having established one of the three elements required under the ICANN Policy has not been established, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <cooperslybrandlaw.com> domain name REMAIN with Respondent.

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  January 4, 2010

 

 

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