The Prudential Insurance Company of America v. Stonybrook Investments, LTD
Claim Number: FA0110000100182
Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”) represented by Maribel Figueredo. Respondent is Stonybrook Investments, LTD., Belize City, BELIZE (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prudntial.com>, registered with Bulkregister.
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 Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 1, 2001; the Forum received a hard copy of the Complaint on October 1, 2001.
On October 3, 2001, Bulkregister confirmed by e-mail to the Forum that the domain name <prudntial.com> is registered with Bulkregister and that Respondent is the current registrant of the name. Bulkregister has verified that Respondent is bound by the Bulkregister 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 October 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 24, 2001 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 firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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 the Respondent to the Complainant.
The <prudntial.com> domain name is confusingly similar to Complainant's famous mark.
Respondent does not have rights or legitimate interests in respect to the <prudntial.com> domain name.
Respondent registered and used the <prudntial.com> domain name in bad faith.
Respondent failed to submit a Response.
For 125 years the Complainant has used the mark PRUDENTIAL mark in connection with a variety of insurance, securities, investment, financial and real estate services throughout the United States and the world. The mark is registered in over 50 countries and Complainant owns over 100 U.S. Trademark registrations for the PRUDENTIAL mark and combinations of words incorporating PRUDENTIAL.
Complainant and its affiliated companies own numerous domain names using the PRUDENTIAL mark including <prudential.com>, <prudentialsecurities.com>, <prudential-bache.com>, <prudential.co.kr>, and <prudential.co.jp>. Each year Complainant spends millions of dollars marketing services provided under the PRUDENTIAL marks through its websites and other means of advertising. Complainant has achieved a large amount of good will in the PRUDENTIAL mark and the public has come to associate it exclusively with Complainant.
Respondent registered the <prudntial.com> domain name on November 20, 2000. Respondent is a limited liability company with an address in Belize. Respondent has been involved in other disputes involving its registration of other famous trademarks as domain names. The domain name is currently being used to redirect Internet users to website offering a credit card. Prior to its current use, Respondent used the domain name to redirect Internet users to a gambling site.
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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
Complainant, through registration and continuous use has established that it has rights in the PRUDENTIAL mark. Furthermore, Respondent's domain name is confusingly similar to Complainant's mark because <prudntial.com> is merely a misspelling of Complainant's famous mark. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interests in the <prudntial.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See 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”).
Respondent is using the disputed domain name to redirect Internet users to another website offering a credit card, and in the past has redirected users to a gambling site. It has been found that this kind of use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Société des Bains de Mer v. International Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <prudntial.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Because of the famous and distinctive nature of Complainant's PRUDENTIAL mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <prudntial.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Furthermore, Respondent has registered domain names using other famous marks in the past. It has been found that when Respondent engages in a pattern of conduct it is evidence of bad faith. See Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites).
The Internet user seeking Complainant's site who accidentally misspells "prudential" will be led to Respondent's website and as a result will likely believe there is an affiliation between the advertising/gambling displayed there and Complainant. The use of a confusingly similar version of Complainant's famous mark by Respondent in connection with a gambling and advertising website is evidence of bad faith. See Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that the Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <prudntial.com> be transferred from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
November 15, 2001
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