The Prudential Insurance Company of
America v. TPB Financial a/k/a B. Evans
Claim Number: FA0203000105218
PARTIES
Complainant
is The Prudential Insurance Company of
America, Newark, NJ (“Complainant”) represented by Sue J. Nam. Respondent is TPB Financial a/k/a B. Evans,
Henrietta, NH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <prumericaprivatebank.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.
James P. Buchele, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on February 28, 2002; the Forum received a hard copy of the Complaint on March
1, 2002.
On
March 5, 2002, Network Solutions confirmed by e-mail to the Forum that the
domain name <prumericaprivatebank.com>
is registered with Network Solutions and that Respondent is the current
registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions
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
March 11, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 1,
2002 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@prumericaprivatebank.com 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
April 5, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed James P. Buchele 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
disputed domain name <prumericaprivatebank.com>
is confusingly similar to Complainant’s PRUMERICA marks.
Respondent
has no rights or legitimate interests in respect of the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith, and has demonstrated
a pattern of bad faith domain name registration.
B.
Respondent
Respondent
did not submit a Response in this proceeding.
FINDINGS
Complainant has provided insurance,
securities, investment, financial, and real estate services throughout the
United States and the world for over 125 years. Complainant holds registered marks in PRUMERICA and in the
stylized PRUMERICA and rock logo in at least 46 countries, and has expended
significant sums of money to promote its services under the PRUMERICA marks
through its websites and other forms of advertising and marketing.
Respondent registered the disputed domain
name <prumericaprivatebank.com>
on January 18, 2002, just one day after Complainant announced that it had
acquired the Geneva Branch of Standard Chartered Grindlays Bank Limited, an
action that would expand its private banking activities.
Complainant issued Respondent a
cease-and-desist letter, to which Respondent replied by offering to sell the
disputed domain name to Complainant for $900 and specifically noting that it
would cost Complainant more to legally enforce its rights than to simply
succumb to its attempted extortion.
Respondent has previously registered at
least one domain name that infringed upon Complainant’s PRUMERICA marks, for
which Complainant successfully obtained relief through an administrative
proceeding such as this one.
Complainant has provided prior Panel decisions that have recognized this
Respondent as having engaged in a bad faith pattern of cybersquatting. See e.g. Prudential Ins. Co. of Am. v.
SFXB a/k/a B. Evans, FA 99671 (Nat. Arb. Forum Oct. 12, 2001).
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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 has established rights in the
PRUMERICA mark through registration with various countries’ trademark
registrars. It is unimportant that
Respondent lives in the United States, in which Complainant has not provided
evidence of trademark registration for the mark at issue. Policy ¶ 4(a)(i) only requires that
Complainant demonstrate rights in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which a Respondent operates.
It is sufficient that a Complainant can demonstrate a mark in some
jurisdiction); accord see Smart
Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that Policy
¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but
only that Complainant has a bona fide basis for making the Complaint in the
first place).
The disputed domain name is confusingly
similar to Complainant’s PRUMERICA marks, as it merely adds a term that
describes Complainant’s business and a generic top-level domain name “.com” to
the mark. See Space Imaging LLC
v. Brownwell, AF-0298 (eResolution Sept.
22, 2000) (finding confusing similarity where the Respondent’s domain name
combines the Complainant’s mark with a generic term that has an obvious
relationship to the Complainant’s business); see also Brown
& Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net>
domain name is confusingly similar to Complainant’s HOYLE mark, and that the
addition of “casino,” a generic word describing the type of business in which
Complainant is engaged, does not take the disputed domain name out of the realm
of confusing similarity).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has satisfactorily
established its rights to and interests in the PRUMERICA marks. Because Respondent has not submitted a
Response in this matter, the Panel may presume that it holds no such rights or
interests in respect to the disputed 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).
Further, through its offer to sell the
disputed domain name to Complainant, Respondent has indicated that it likely
has no interests with respect to the name.
See J. Paul Getty Trust v.
Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding
rights or legitimate interests do not exist when one has made no use of the
websites that are located at the domain names at issue, other than to sell the
domain names for profit).
Complainant asserts that Respondent has
made no use of the disputed domain name whatsoever, and that it consequently
cannot be deemed to have made any bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where Respondent failed to submit a Response to the Complaint and had made no
use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (“merely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy”). In
the absence of a contrary claim by Respondent, the Panel will accept
Complainant’s assertion as true. 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”).
There is no evidence to suggest
Respondent is commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii); Respondent is only known to this Panel as TPB Financial a/k/a B.
Evans. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. &
D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights
or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed).
The Panel finds that Respondent has no
rights or legitimate interests in respect of the disputed domain name and,
thus, that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Complainant has demonstrated that
Respondent is engaged in or has engaged in a pattern of behavior intended to
prevent Complainant from registering domain names that correspond to its
well-known marks. This typifies bad
faith within the meaning of Policy ¶ 4(b)(ii).
See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark).
Respondent has
further demonstrated bad faith pursuant to Policy ¶ 4(b)(i) by attempting to
extort $900 from Complainant, an amount in excess of its out-of-pocket
costs. See Grundfos
A/S v. Lokale,
D2000-1347 (WIPO Nov. 27, 2000) (finding the Respondent’s failure to use the
domain name in any context other than to offer it for sale to Complainant
amounted to a use of the domain name in bad faith); see also Little Six, Inc v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the
domain name at issue to Complainant was evidence of bad faith).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <prumericaprivatebank.com> domain
name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated:
April 8, 2002
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