PricewaterhouseCoopers loses domain fight

PricewaterhouseCoopers loses an attempt to win from a Hong Kong company, after using a little-known subsidiary to bring its case

PricewaterhouseCoopers has failed in an attempt to win the Internet domain from Ultimate Search, a Hong Kong based firm.

In a ruling issued last week, WIPO -- the World Intellectual Property Organisation -- ruled that the city accountancy firm had failed to prove that Ultimate Search should be made to give up the domain.

WIPO found that some parts of the case were proven, but implied that PricewaterhouseCooper had erred by using a subsidiary called PwC Business Trust to bring the action

PricewaterhouseCoopers had claimed that the domain name is "directly identical and confusingly similar to its PWC mark." PricewaterhouseCoopers said it has registered "PWC" as a trademark in many countries such as Hong Kong, China and the countries of the European Union. It added that a trademark application was pending in the US.

The firm alleged that Ultimate Search was acting in bad faith by misleadingly directing customers who actually wanted to find information about PricewaterhouseCoopers.

In response, Ultimate Search claimed that PricewaterhouseCoopers was failing in its attempt to win a US trademark for "PWC". The Hong Kong firm said that other firms also used the letters "PWC" in US trademark registrations, and insisted that it had a legitimate right to use currently contains a list of links to various e-commerce sites, including several relating to water sports.

The three-person WIPO panel ruled that PricewaterhouseCoopers had proved that was identical to its trademark -- one of three conditions the company would have to meet. However, WIPO said that PricewaterhouseCoopers had not proved that Ultimate Search had registered and used in bad faith. The panel agreed that "PWC" could be attributable to many other organisations -- a fact which "undermined the Complainant's attempts to have the Panel regard mere registration of by the Respondent as self-evident bad faith."

PwC Business Trust, the complainant, is a trust set up by PricewaterhouseCoopers to hold and manage its trademarks, but it appears from WIPO's ruling that it may have been something of a schoolboy error for PricewaterhouseCoopers not to have brought the case itself.

"The Complainant's problem is compounded because it is not the trading entity to whom any common law trademark rights can accrue, so that even if in many contexts PWC might be distinctive of PricewaterhouseCoopers, the Panel has no hesitation in finding that absent a small number of use-based trademark registrations, the letters PWC are not universally distinctive of the Complainant," said WIPO in its ruling.

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