PricewaterhouseCoopers LLP and PwC Business Trust v. Coopers & Lybrand Law Firm c/o Lybrand Coopers
Claim Number: FA0911001294729
Complainant is PricewaterhouseCoopers LLP and PwC
Business Trust (“Complainant”),
represented by Philip A. Gilman, of Law Office of Philip Gilman,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cooperslybrandlaw.com>, registered with Enom, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
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.
Respondent, Coopers &
Lybrand Law Firm c/o Lybrand Coopers, registered the <cooperslybrandlaw.com>
domain name on
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.
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.
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
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.
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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