The Prudential Insurance Company of America v.Mr. Ng Hoong Yew
Claim Number: FA0110000101535
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.
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.
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 email@example.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.
The Complainant requests that the domain name be transferred from the Respondent to the 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.
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.
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.
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).
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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