The Prudential Insurance Company of America v. PRU International
Claim Number: FA0111000101800
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 PRU International, Arlington, TX (“Respondent”) represented by Mark Romney, of Vial, Hamilton, Koch & Knox.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pru.com>, registered with Network Solutions.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflicts in serving as Panelists in this proceeding.
Hon. Bruce E. Meyerson (Ret.), Hon. Herman D. Michels (Ret.) and Diane Cabell as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 5, 2001; the Forum received a hard copy of the Complaint on November 6, 2001.
On November 7, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <pru.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 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 29, 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 December 10, 2001.
The Complainant submitted an Additional Response on December 11, 2001; the Respondent submitted an Additional Response on December 17, 2001. These responses were considered by the Panel.
On January 2, 2002, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed the Hon. Bruce E. Meyerson (Ret.), Hon. Herman D. Michels (Ret.) and Diane Cabell as Panelists.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
Complainant The Prudential Insurance Company of America is a well-known entity providing a wide variety of insurance, securities, financial and real estate services throughout the United States and the world. Its trademark, Prudential, is registered in many countries, separately, and in combination with other words. In addition, it has registered a “family” of formative marks using the word, “Pru.” No registration, however, has been approved for the word “Pru” although trademarks have been approved for the use of the word “Pru” in combination with other words. Complainant believes that consumers have come to associate the word “Pru” with Complainant and its affiliated entities. Complainant contends that the domain name is identical to Complainant’s “Pru” mark. Complainant also contends that Respondent has no rights or legitimate interest in the domain name because, according to Complainant, Respondent is no longer operating as a business, and is not using the domain name for any commercial or noncommercial purpose. Finally, Complainant contends that Respondent’s use of the domain name is in bad faith because it has offered to sell the domain name for “millions.”
Respondent asserts that it is a Texas corporation, formed in 1996. Its business is “computer network technology integration, development and training.” According to Respondent, it does not provide any financial or insurance related services. Respondent claims to have 15 employees and other staff and reports gross receipts for the year 2001 in excess of $400,000. Respondent states that the initials “Pru” stand for “Productivity Resources Unlimited.” According to Respondent, since July 1997, with the exception of a three-month period in 2001, its web site has been in continuous operation. Respondent asserts that Complainant has not demonstrated that, in fact, it holds a trademark in the name “Pru.” Respondent also states that because the parties provide completely different services, Complainant has not established that the existence of Respondent’s web site will damage or interfere with Complainant’s business. Respondent also disputes Complainant’s contention that it lacks a legitimate interest in the domain name and disagrees with Complainant’s assertion that it registered the name in bad faith.
We disagree with Complainant’s contention that Respondent has no rights or legitimate interest in the domain name. The record demonstrates that Respondent established a bona fide computer services corporation under the trade name "Pru International" in Texas in November 1996. The trade name is an acronym for "Productivity Resources Unlimited." The record also reflects that Respondent has operated an active and bona fide business since that time. Accordingly, Complainant has not demonstrated that Respondent lacks rights or a legitimate interest with respect to the use of the domain name <pru.com>.”
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.
Because we find that the Complainant has failed to establish that Respondent lacks rights or a legitimate interest in the domain name, it is unnecessary for the panel to consider the remaining elements.
Rights or Legitimate Interests
Section 4(c) of the Policy gives three examples of rights and interests and Respondent has met all three.
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant's Exhibit 11 and Respondent's Exhibits A, B and C show that Respondent established a bona fide computer services corporation under the trade name "Pru International" in Texas in November 1996. The trade name is an acronym for "Productivity Resources Unlimited." The employer ID registration and annual tax returns (most of which show gross receipts in the hundreds of thousands of dollars) also indicate an active and bona fide business since that time. In addition to the copies of its active web page that Respondent submitted, one can consult the Wayback Machine archives at http://www.archive.org which show active web pages on Dec. 5, 1998, Feb. 8, 1999, June 17 and Dec. 15, 2000, and May 16, 2001.
Complainant claims that the domain is no longer being used and therefore Respondent has lost all rights to a defense under Section 4(c). Even assuming the correctness of this argument (which we question) Respondent has supplied evidence of its continuing activity, including a recent certificate of good standing from the Texas Comptroller of Public Accounts.
Moreover, Respondent’s business is “computer network technology integration, development and training.” Complainant, a well-known entity in the United States and elsewhere, is engaged in a wide variety of insurance, securities, financial and real estate services. Respondent does not provide any financial or insurance related services. Under these circumstances, and based upon the record, Complainant has not established that the existence of Respondent’s web site has (or will) damaged or interfered with Complainant’s business.
Complainant’s request to transfer the domain name <pru.com> from the Respondent is denied.
Hon. Bruce E. Meyerson (Ret.), Hon. Herman D. Michels (Ret.) and Diane Cabell, Panelists
Dated: January 18, 2002
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