Complainants are PwC Business Trust and PricewaterhouseCoopers LLP, United States of America (“United States”), represented by Orrick, Herrington & Sutcliffe, LLP, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Matt Willens, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 20, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 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 Complainant on May 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 29, 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 Respondent of the Complaint, and the proceedings commenced on June 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 23, 2020. The Center appointed Frederick M. Abbott as the sole panelist in this matter on July 1, 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 Complainants are affiliated entities, a Delaware Business Trust owning trademark rights and a licensee of those rights, hereinafter collectively referred to as “Complainant”. Complainant is the owner of various trademark and service mark (hereinafter “trademark”) registrations for the term PWC on the principal register of the United States Patent and Trademark Office (“USPTO”), including registration number 2,579,070, registration dated June 11, 2002, in international class (“IC”) 35, covering, inter alia, accounting and business auditing services; registration number 2,579,071, registration dated June 11, 2002, in IC 16, covering publications, as further specified; and registration number 2,579,072, registration dated June 11, 2002, in IC 41, covering educational services, as further specified. Complainant is owner of numerous additional registrations for PWC and PWC-formative marks in the United States and other countries. Complainant is a large professional services organization providing a range of financial and regulatory assurance services, as well as tax, advisory, and other consulting services. Complainant, through its network of affiliated firms, maintains 750 offices in nearly 160 countries employing over 270,000 individuals. Complainant operates a commercial website at “www.pwc.com”. According to the Registrar’s verification, Respondent is registrant of the disputed domain name. According to that verification, Respondent registered the disputed domain name on March 19, 2020. Respondent has not associated the disputed domain name with an active website. On the date of registration of the disputed domain name, Respondent transmitted an email using the disputed domain name as the domain, with the username of an actual billing advisor employee of Complainant, to a client of Complainant. This email was designed to give the appearance of originating from Complainant. It was accompanied by an invoice also allegedly from Complainant. Said invoice was a copy of a genuine invoice of Complainant, except that the banking account information was altered by Respondent so that any payment by Complainant’s client would be diverted to a bank account maintained by Respondent. There is no evidence on the record of this proceeding that Complainant’s client made payment on the falsified invoice. The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)). 5. Parties’ Contentions A. Complainant Complainant alleges that it owns rights in the trademark PWC and that the disputed domain name is confusingly similar to that trademark. Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized or licensed Respondent to use its PWC trademark, and Respondent is not otherwise affiliated with Complainant; (2) Respondent has not provided evidence that it is commonly known by the disputed domain name, and; (3) Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and it is not making a legitimate noncommercial or fair use of the disputed domain name. Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent’s registration of Complainant’s well-known trademark without any plausible legitimate use is sufficient to constitute bad faith; (2) Respondent is using the disputed domain name in connection with a scheme to defraud clients of Complainant; and, (3) Respondent has not replied to Complainant’s cease-and-desist demand. Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)). The Center formally notified the Complaint to Respondent at the email, fax, and physical addresses provided in its record of registration. It appears that courier delivery of the Complaint to Respondent was successful. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and (ii) respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. Each of the aforesaid three elements must be proved by a complainant to warrant relief. This proceeding involves a regrettably familiar pattern: a domain name confusingly similar to a trademark is used as a domain identifier in connection with the transmission of email intended to deceive a recipient(s) as to the true identity of the sender, thereby to take unfair financial or other advantage of the recipient(s). In addition to potential injury to the recipient(s), such deceptive behavior is likely to injure the commercial and/or reputational interest of the trademark owner. A. Identical or Confusingly Similar Complainant has provided evidence of rights in the trademark PWC, including by registration at the USPTO and use in commerce. See Factual Background, supra. Respondent has not challenged Complainant’s assertion of rights. The Panel determines that Complainant has established rights in the trademark PWC. The disputed domain name directly incorporates Complainant’s PWC trademark and appends the generic Top-Level Domain (“gTLD”) “.money”. The direct incorporation of Complainant’s distinctive trademark suffices in the circumstances here to establish confusing similarity between Complainant’s trademark and the disputed domain name. In any case, addition of the gTLD “.money”, incorporating a term associated with Complainant’s line of business (e.g., accounting and other financial consulting services), is not an obstacle to a finding of confusing similarity. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark. The Panel determines that Complainant has established rights in the trademark PWC, and that the disputed domain name is confusingly similar to that trademark. B. Rights or Legitimate Interests Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not replied to the Complaint, and has not attempted to rebut Complainant’s prima facie showing of Respondent’s lack of rights or legitimate interests. Respondent’s use of the disputed domain name in an email address incorporating a username identical to that of an employee of Complainant, and using that originating email address in an attempt to deceptively obtain payment from Complainant’s client based on a falsified invoice incorporating Respondent’s banking information, does not establish rights or legitimate interests in the disputed domain name in favor of Respondent. Respondent’s use of the disputed domain name does not otherwise manifest rights or legitimate interests. The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”. These include that, “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”. Respondent has used the disputed domain name intentionally for purposes of commercial gain to establish Internet user confusion regarding Complainant as the source of an email communication intended by Respondent to deceive a client of Complainant. The apparent intent of the deceptive email was to induce the client to make a payment to Respondent based on a falsified invoice – appearing to originate from Complainant – containing Respondent’s banking information. Respondent was manifestly aware of Complainant’s rights in its trademark when it registered the disputed domain name and undertook this action. Such use evidences bad faith. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. 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 Frederick M. Abbott
Sole Panelist
Date: July 15, 2020
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