The Prudential Insurance Company of
America v.Mr. Ng Hoong Yew
Claim Number: FA0110000101535
PARTIES
The Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”) represented by Sue J. Nam, of The Prudential Insurance Company of America. The Respondent is Ng Hoong Yew, Kuala Lumpur, Malaysia (Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <eprudential.com>,
registered with Network Solutions.
PANEL
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.
Honorable Paul A. Dorf (Ret.)
as Panelist.
PROCEDURAL HISTORY
Complainant submitted a
Complaint to the National Arbitration Forum (“the Forum”) electronically on
October 31, 2001; the Forum received a hard copy of the Complaint on November
1, 2001.
On November 1, 2001, Network
Solutions confirmed by e-mail to the Forum that the domain name <eprudential.com>
is registered with Network Solutions and that the Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions 5.0
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 November 5, 2001, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 26, 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 postmaster@eprudential.com by e-mail.
A timely Response was received
and determined to be complete on November 26, 2001.
Additional submissions received
on November 28, 2001.
On December 11, 2001 pursuant
to Complainant’s request to have the dispute decided by a single-member Panel,
the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
RELIEF SOUGHT
The Complainant requests that
the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that
the domain name at issue is identical to its EPrudential mark and
confusingly similar to its Prudential marks; that the Respondent has no
legitimate interests in the domain name.
The Complainant also contends that the Respondent registered the domain
name in bad faith and its passive holding of the domain name prevents the
Complainant from making commercial use of that mark as a web site address.
B. Respondent
The Respondent contends that
the domain name at issue is totally different and distinctive from
Complainant’s EPrudential mark; that he has rights to the domain name
because of his employer/employee relationship with Prudential Assurance
Sendirian Berhad (Incorporated in Malaysia), and that he did not register the
domain name at issue in bad faith as he plans to use it at an appropriate time
to build a website.
C. Additional Submissions
On November 28, 2001, the
Complainant submitted an Additional Response to the Forum, which was timely
filed. This submission was reviewed and
considered by this Panel.
On November 29, 2001, the
Respondent submitted an Additional Response, which was timely filed. This submission was reviewed and considered
by this Panel.
FINDINGS
The Complainant operates
insurance, securities, investment, financial and real estate services
throughout the world, and owns in excess of 100 trademark registrations in the
U.S. Prudential and Prudential combination marks, including the EPrudential
mark. The Complainant spends a
substantial sum of money advertising and promoting its services on its web
sites and through its other forms of advertising and marketing.
As a result of Complainant’s
extensive use and ownership of the family of Prudential marks, consumers
around the world associate the Complainant’s marks with Prudential and its
affiliated companies.
DISCUSSION
Paragraph 15(a) of the Rules
for Uniform Domain Name Dispute Resolution Policy (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.”
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
The domain name at issue is
identical to Complainant's EPRUDENTIAL mark, and incorporates the most
important element of its other famous marks .
The mere addition of a top-level domain indicator such as
".com" or ".net" does not create a distinctive mark. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Little
Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
(finding that the <mysticlake.net> is plainly identical to Complainant’s
MYSTIC LAKE trademark and service mark).
Rights or Legitimate Interests
The Respondent has not produced
any evidence to establish that he is commonly known by <eprudential.com>. 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).
In addition, the Respondent has
passively held the domain name at issue for over one year and has failed to
establish a website. See
Ziegenfelder Co. v. VMH
Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000)
(finding that failure to provide a product or service or develop the site
demonstrates that Respondents have not established any rights or legitimate
interests in said domain name); see also Bloomberg L.P. v. Sandhu, FA
96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate
interest can be found when Respondent fails to use disputed domain names in any
way).
Finally, while the Respondent
has an employer/employee relationship with the Prudential Assurance Sendirian
Berhad (Incorporated in Malaysia), and executed an employee contact with said
company in 1987 , it is not proof that Respondent has rights or legitimate
interests in the disputed domain name.
The contract makes no mention of domain names or website development,
and states that the employee has
"no authority to bind the company in any way, to incur liability or debt,
to make or alter or discharge any contracts . . . to institute or defend or
take part in any legal proceedings in connection with any matter relating to
the business of the company."
Registration and Use in Bad
Faith
As the domain name at issue is
identical to Complainant's mark, a reasonable Internet user may be lead to
believe that there is a connection between Respondent and Complainant. See Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
In addition, the famous and
distinctive nature of Complainant's marks, coupled with the fact that the
Respondent was an Agent for the Complainant and admitted to its knowledge of
the mark, the Respondent was aware of
the existence of Complainant's mark at the time the domain name at issue was
registered. 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
Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001)
(finding that, in light of the notoriety of Complainants' famous marks,
Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks
at the time she registered the disputed domain name and such knowledge
constitutes bad faith).
Finally, the Respondent's
registration and passive holding of the domain name at issue supports a finding of bad faith. See
Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO
Nov. 23, 2000) (finding bad faith where the Respondent made no use of the
domain name in question and there are no other indications that the Respondent
could have registered and used the domain name in question for any
non-infringing purpose).
DECISION
As all three elements required
by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this
panelist that the requested relief be granted. Accordingly, for all of
the foregoing reasons, it is ordered that the domain name <eprudential.com>
be transferred from the Respondent to the Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 27, 2001
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