In a ruling issued last week, the World Intellectual Property Organization (WIPO) ruled that the management consulting firm had failed to prove that Ultimate Search should be required to give up the domain.
PricewaterhouseCoopers claimed that the pwc.com 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 United States.
The firm alleged that Ultimate Search was acting in bad faith by misleading customers who wanted to find information about PricewaterhouseCoopers.
In response, Ultimate Search claimed that PricewaterhouseCoopers was failing in its attempt to win a U.S. trademark for "PWC." The Hong Kong-based firm noted that other companies also used the letters "PWC" in U.S. trademark registrations and insisted it has a legitimate right to use pwc.com.
Pwc.com 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 pwc.com was identical to its trademark--one of three conditions the company had to meet. However, WIPO said PricewaterhouseCoopers did not prove that Ultimate Search had registered and used pwc.com in bad faith. The panel agreed that "PWC" could be attributable to many other organizations, which "undermined the complainant's attempts to have the panel regard mere registration of pwc.com by the respondent as self-evident bad faith."
WIPO implied that PricewaterhouseCoopers erred by using a subsidiary to bring the action. PwC Business Trust, the complainant, is a trust set up by PricewaterhouseCoopers to hold and manage its trademarks.
"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," WIPO said in its ruling.
ZDNet U.K.'s Graeme Wearden reported from London.