The Prudential Assurance Company Limited v. Steve Davis
Claim Number: FA0204000112447
Complainant is The Prudential Assurance Co. Ltd., London, UNITED KINGDOM (“Complainant”). Respondent is Steve Davis, Lakeport, CA, USA (“Respondent”).
The domain name at issue is <prudential.biz>, registered with Easyspace Ltd.
The undersigned, Jacques A. Léger Q.C acting as Panelist, 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.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on April 26, 2002; the Forum received a hard copy of the Complaint on April 30, 2002.
On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
A timely Response was received and determined to be complete on May 28, 2002.
Complainant’s Additional Submission was timely received and determined to be complete on May 31, 2002. Respondent submitted a timely reply on June 6, 2002.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum appointed Jacques A. Léger Q.C as single Panelist.
Transfer of the domain name from Respondent to Complainant.
Identity of the Disputed Domain Name <Prudential.biz> and Complainant’s Mark Therein
Complainant contends the disputed domain name is identical to the mark PRUDENTIAL.
It contends it has rights in the mark PRUDENTIAL by relying on its proprietorship of trademark registrations and its use in commerce of the trademark PRUDENTIAL in the United Kingdom and in other countries of Europe, Asia and Africa, even though Complainant admits that in the United States of America, the PRUDENTIAL mark is owned by The Prudential Insurance Company of America, which is not affiliated to the Complainant.
Complainant states it is one of the leading life assurance companies in the UK. It has used the mark PRUDENTIAL continuously since 1848. It is a wholly owned subsidiary of Prudential plc, a company listed on the London and New York stock exchanges.
Complainant alleges its principal activity and the one of its affiliates is to provide financial services in the UK and many countries of the world. The business has over 7 million customers in Europe and 2.2 million customers in Asia.
Complainant contends that in addition to its registered rights, both itself and its affiliates have very substantial goodwill in the mark PRUDENTIAL. This is also seen by Complainant’s and its affiliates presence on the Internet through various web sites.
Complainant contends Respondent has no rights or legitimate interests in the disputed domain name because:
Respondent is not associated, connected or authorized by Complainant to use the mark PRUDENTIAL. It says Respondent, with his wife Elizabeth Davis, carries on business under the name “Economy Web Design” which offers web page design and search engine maximization advice and services.
Complainant alleges that Respondent is not the owner nor the beneficiary of any trademark or service mark which is identical to the domain name.
Complainant states that Respondent is not commonly known by the name PRUDENTIAL.
Complainant contends Respondent’s web site does not indicate, nor is it aware of, any demonstrable preparations by Respondent to use the disputed domain name in connection with a bona fide offering of goods or services.
Complainant adds that the disputed domain name is not presently leading to any web site.
Complainant contends the disputed domain name has been registered in bad faith.
Complainant contends Internet users will falsely associate the disputed domain name with the business of Complainant.
Complainant contends Respondent should be presumed to have had knowledge of Complainant’s rights in the PRUDENTIAL mark since it has been notified by the Registry Operator that Complainant had submitted an IP Claim in respect of the trademark PRUDENTIAL.
Complainant contends Respondent must have been aware of Complainant’s rights and goodwill in the mark PRUDENTIAL at the time of his application to register the disputed domain name because of the great international renown of Complainant.
Complainant alleges that further or in the alternative, Respondent will have been aware of the use of the name PRUDENTIAL in California by Prudential California Realty in connection with its real estate business.
Complainant states that Prudential California Realty is not affiliated to Complainant.
Complainant contends Respondent must be aware of Prudential California Realty because Respondent is a business partner of Elizabeth Davis who is a real estate agent in Lake county California affiliated with the Coldwell Banker Real Estate Corporation. Therefore, Elizabeth Davis, as a Coldwell Banker affiliate, is a competitor in Lakeport of Prudential California Realty.
Complainant states that Respondent is a resident of Lakeport, California.
Complainant also states that the HTML code for the web site at <clearlakerealestate.ws> includes the words “Lakeport Prudential realty”.
Complainant therefore submits that Respondent and Elizabeth Davis are fully aware that Prudential California Realty has an office in Lakeport, that Prudential California Realty is in competition with Coldwell Banker and that the HTML code for the web site at <clearlakerealestate.ws> includes the words “ Lakeport Prudential Realty”.
Complainant contends Respondent has registered the disputed domain name to prevent Complainant or alternatively Prudential California Realty from reflecting the mark PRUDENTIAL in a corresponding domain name and primarily for the purpose of disrupting the business of a competitor, or in the alternative, a competitor of his partner Elizabeth Davis.
Respondent states that Complainant acknowledges that it does not own any PRUDENTIAL trademark status in the United States and that it is not affiliated with the Prudential Insurance Company of America, who owns the PRUDENTIAL mark in the Unites States of America.
Respondent states that Complainant acknowledges that Prudential California Realty owns the rights and legitimate use of the name PRUDENTIAL.
Respondent contends he is affiliated to Prudential California Realty.
Respondent contends Complainant is guilty of Reverse Domain Name Hijacking because Complainant has shown no interest in securing the specific domain name <prudentialassurance.biz> and so it appears that Complainanat is attempting to steal the name from a rightful name holder so it can then market itself only under the only name that could be confused with its American competitor, Prudential Insurance Company of America.
Respondent submits that it is inappropriate for Complainant to claim trademark status for a U.S. domain name based upon its trademark status in other countries, especially when a competitor already holds the same trademark in the U.S.
Respondent contends he owns the company Economy Web Design.
Respondent contends that in the case of a Prudential California Realty Agent such as his wife, or that of a Prudential California Realty Agency, such as his current employer, there could be no better name than <prudential.com>, followed closely by <prudential.biz>. Real Estate is one of the highest name recognition environments in the business community, making the domain name <prudential.biz> an enormous business-generating asset.
Respondent claims his wife, Elizabeth Davis, was hired by the owner of the Prudential California Realty.
Respondent contends he prepared a web site for Elizabeth Davis, in which she offered her business and services under the name Prudential California Realty, and featured the PRUDENTIAL logo and trademark.
Respondent alleges that the best interim web site domain name available at the time was <clearlakerealestate.ws> which Respondent obtained until such time as the new ".biz" TLDs were made available.
Respondent alleges Prudential California Realty hired him in late September to create a separate web site for Prudential California Realty.
Respondent contends he applied for the domain name <prudential.biz> in late August. The name was suitable for and could be legitimately used for either web site.
Respondent states that prior to the domain name <prudential.biz> being officially granted to Respondent, Respondent was notified of Complainant’s intent to challenge the domain name. Therefore, Respondent has voluntarily temporarily withheld the site out of respect for “due process”, and the STOP Policy (8) which prohibits Registrar transfers during the Complaint challenge.
Respondent alleges that while the Prudential California Realty website was in the process of being created, the owner became ill and found it necessary to temporarily close the Prudential California Realty office while he treated for his illness.
Respondent contends the Prudential California Realty website, in the midst of being created by Respondent, has been temporarily delayed.
Respondent contends as it can be seen from the “in progress” web site, he has shown demonstrable preparations to use the domain name in connection with a bona fide offering of services.
Respondent claims that the illness of the owner of Prudential California Realty should not be a factor in the decision of the Panel. Because the website is on hold doesn’t mean it should be presumed to not be in use.
Respondent contends the attempted use by a Complainant, of a third party, to satisfy Complainant’s requirement of proof, has been deemed inappropriate and denied by previous Panels.
Respondent alleges he was working for and on behalf of Prudential California Realty. This fact should deny any claim of bad faith.
Respondent submits that if a Prudential California Real Estate page were displayed under the name <prudential.biz> and offering real estate services, users would more likely properly associate it with Prudential California Realty and would not falsely associate the site with Prudential Assurance Company Limited of the United Kingdom.
Respondent contends if Complainant were to prevail in this challenge and market themselves under the US TLD <prudential.biz> there is no doubt that users would likely falsely associate the web site as the business of the US trademark holder Prudential Insurance Company of America.
Respondent contends the Respondent appears to be guilty of Reverse Domain Name Hijacking by attempting to steal the domain name to use it in bad faith.
Respondent contends his action in not withdrawing from the registration process after being served with the Conflict Notice, was merely the lawful exercise of “due process” of the complaint procedures, to which he is entitled by law and STOP Policy and Rules.
Respondent contends he was not aware of the great renown of Complainant.
Respondent alleges Complainant should not assume, since it acknowledges it holds no trademark for the name PRUDENTIAL in the United States, that it automatically would have exclusive rights to the domain name in the US.
Respondent contends Complainant acknowledges that Prudential California Realty has at least an equal and interchangeable claim to the use of the trademark as Complainant as well as rights and interests in the disputed domain name.
C. Additional Submissions
Complainant contends Respondent’s reasoning in response to the allegation that he registered the domain name in bad faith having no right or legitimate interest in the domain name is, on a fair reading of the Response, unclear and confusing.
Complainant restates that the mark PRUDENTIAL is of great value to it.
Complainant contends in most of the major search engines Complainant’s group web site appears in the top ten rankings when the search term PRUDENTIAL is entered. In such circumstances it is inconceivable that Respondent would not have known that the mark PRUDENTIAL was of substantial value to Complainant.
Complainant contends it uses PRUDENTIAL as a trademark and as the distinctive element in domain names in many countries of the world. The same cannot be said by Respondent.
Complainant contends ".biz" is not a US domain name. It is open to any business or individual across the globe.
Complainant contends there is no proof that Respondent is properly to be regarded as affiliated with Prudential California Realty so as to give him any rights in the name PRUDENTIAL.
Complainant alleges it is not guilty of reverse Domain Name Hijacking. It states that if the Panel orders the transfer of the domain name to Complainant it will make good faith use of it.
Complainant alleges there is no explanation as to why an application made allegedly at the request of an employee of a franchisee of the owner of the mark PRUDENTIAL in the US gives Respondent any legitimate interest in respect of the domain name.
Complainant contends there is no evidence that Respondent was authorized to use the domain name.
Complainant alleges that the owner of Prudential California Realty appears to have had no need for a new domain name neither does he appear to have requested that one be obtained for him.
Complainant contends it does not know whether the owner of Prudential California Realty does intend to re-open his business when he is able to do so.
Complainant contends Respondent, having no right himself to use the name PRUDENTIAL and knowing of Complainant’s registered rights in the mark PRUDENTIAL affirmatively took steps to obtain the registration of the domain name.
Complainant alleges Respondent had the opportunity of registering any number of other permutations so as to avoid an exact match.
Complainant contends there is no reason why a Complainant may not rely on the rights of a third party in making out an allegation of bad faith registration, as Complainant does in these proceedings.
Complainant states that at the date Respondent elected to proceed with the registration of the domain name following the notice of the IP Claim filed by Complainant, his wife was not in the employ of Prudential California Realty. Neither was Respondent at that time, nor is he now, employed by the owner of Prudential California Realty to create a web site for the owner.
Respondent’s Additional Submissions
Respondent alleges that the date of notification that an IP Claim had been filed by Complainant was 6 months before the closure of Prudential California Realty’s office and when his wife had her own Prudential California Realty web site. Using Complainant’s own argument, it stands to reason, therefore, that if notification was, in fact, received 6 months earlier, before the closure, bad faith could not have occurred.
Respondent contends the argument that an other business legally operating under the same mark in another country should be deprived of their rights is absurd.
Respondent contends the stand-alone word PRUDENTIAL, with the remainder of the company name, merely means the act of being prudent. As such, any business, could legally operate under a name containing the word PRUDENTIAL without infringing on the rights of Prudential Assurance Limited of the UK.
Respondent acknowledges that Complainant has a right to apply for and use the ".biz" TLD as does any other entity legally entitled to operate under the chosen name.
Respondent still submits that the Panel should conclude that the internet public it is commissioned to protect will be more likely to confuse Complainant’s Prudential Assurance Company UK with Prudential Insurance Company of America, than it will be to confuse a Prudential California Realty Office with Prudential Insurance Company.
Respondent contends that the name was applied for initially for his wife’s Prudential California Realty web site and that he has the right to obtain a domain name on behalf of his client since it is a standard function for a web site designer.
Respondent alleges that in his letter, the owner of Prudential California Realty states that his intention is to improve his health to a point that he can open the business. His rights are not abridged by the temporary suspension of the web site due to his illness.
Respondent contends it applied for <prudentialrealty.biz> to avoid this action, however the application was unsuccessful.
Respondent contends Complainant could have and still can apply for <prudentialassurance.biz>, which is still available.
Respondent contends he has presented evidence of demonstrable preparations to use the domain name in connection with a bona fide offering of services.
Having reviewed the evidence submitted by the parties and their written representations, the Panel makes the following findings:
h Complainant does have (some) rights in the mark PRUDENTIAL that it registered in different countries (exhibits 4, 5, 6, 7, 8, 9, 10 and 11). Complainant has satisfied the Panel that in addition to its registered rights, Complainant and its affiliates have substantial goodwill in the mark PRUDENTIAL. The evidence submitted by Complainant shows Complainant sustained presence on the Internet through various web sites (exhibit 14).
h The Panel finds that although Complainant has rights in the mark PRUDENTIAL, it does not have exclusive and universal rights having admitted that it does not own any PRUDENTIAL trademark status in the United States given another entity, Prudential Insurance Company of America, owns the PRUDENTIAL mark in the United States of America. As well, Complainant has admitted that Prudential California Realty owns rights and legitimate use of the name PRUDENTIAL.
h The Panel finds that Respondent's initial web site preparation does indicate reasonable demonstrable preparations by Respondent to use the disputed domain name in connection with a bona fide offering of services, as Respondent prepared a web site for his wife in which she offered her business and services under
the name Prudential California Realty, featuring its corporate logo together with the PRUDENTIAL trademark.
h The Panel finds that Complainant has not satisfied its burden to show that Respondent acted in bad faith in registering the domain name <prudential.biz>.
Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel may exercise its discretion to rely on relevant UDRP precedent where applicable and has done so.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
On this first issue, the Panel finds that Complainant does have rights in the mark PRUDENTIAL which is identical to the disputed domain name; In any event, Respondent
has not disputed this issue. Based on the evidence submitted, it can be said that Complainant has some goodwill in the mark PRUDENTIAL, however it has failed to show that its exclusivity for the mark should naturally extend beyond the countries in which it
has registered the mark. More importantly, Complainant admits that in the United States of America the PRUDENTIAL mark is owned by the Prudential Insurance Company of America, which is not affiliated to it and admits that Prudential California Realty owns the rights and legitimate use of the name PRUDENTIAL.
The Panel can rely on any of the following circumstances, but without limitation, to find that Respondent has rights or legitimate interests in the domain name :
(i) Respondent is the owner or beneficiary of a trade or service mark that is identical to the domain name; or;
(ii) Before any notice to Respondent of the dispute, Respondent's 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
(iii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights.
(STOP Policy ¶¶ 4(c)(i) - (iii).)
In the case at hand, it is undisputed that Respondent was hired by the owner of Prudential California Realty to create a web site and has engaged in preparations to use the web site. Respondent has submitted evidence to that effect at exhibit H.
The Panel has given little weight to the temporary setback of the owner of Prudential California Realty. It is not because the web site is on hold due to illness that it is not intended to be in use. The owner has manifested, in the letter dated May 21, 2002 (exhibit E) his intentions to return to business once his health allows him to. There is certainly some evidence of preparations to use now and most importantly there is evidence of an intention to use prior to the challenge by Complainant.
Although Panels have held that registration of an infringing domain name in order to opportunistically trade on the goodwill of the Complainant's mark does not constitute a bona fide offering of goods and services, nothing shows in the case at hand of such wrongful intention by Respondent. Both parties offer services that are different and users are not likely to conclude to an affiliation between Complainant and Respondent's website.
The Panel refers to the decision in Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002), where it was decided that registering a domain name without evidentiary support of use or preparations for use was insufficient to establish that Respondent had rights or interests in respect to the domain name at issue. There must be demonstrable preparations to use the domain name in connection with a bona fide offering of services.
A contrario, in the present case given the above findings as to the demonstrable preparations, the Panel is of the view that the Complainant has not discharged its burden of proving that Respondent has no right or legitimate interest in the disputed domain name and Respondent has satisfied the Panel that it has rights or legitimate interests in the disputed domain name.
Having found in favor of Respondent on the previous count, this element does not necessarily need to be examined. However, given the nature of this Complaint, the Panel chose to deal with it.
To prove bad faith under the STOP Policy, a Complainant only needs to prove either registration or use of the domain name in bad faith, not both as the UDRP requires. STOP Policy 4(b) is otherwise very similar to UDRP 4(b). Complainant may demonstrate Respondent's bad faith by showing that Respondent registered the domain name for the purpose of preventing Complainant from registering domain names that reflect its mark. While under the STOP Policy there is no pattern of conduct requirements, the simple allegation is not enough to conclude automatically to bad faith, particularly that in this case:
i) Complainant did not show that there was competition between itself and the Respondent;
ii) While Complainant has (some) trademark rights for PRUDENTIAL in association with the wares and services it offers and produces, it does not enjoy exclusive rights nor can the mark be said to be inherently distinctive. Furthermore, it has failed to adduce evidence which would justify extending trade-mark protection beyond the services and territories it already covers. In other words Complainant does not enjoy the universality of rights to benefit of a deemed intention of Respondent to adopt in bad faith.
Last but not least, the Panel accepts the submission by Respondent that nothing would prevent Complainant from having <prudentialassurance.biz> (or a variant thereof) as a domain name.
As mentioned by this Panel in Kalamazoo Sec. Print v. Thralow, FA 112430 (Nat. Arb. Forum June 27, 2002): "While Panel acknowledges that the word "competitor" has been broadly interpreted both under STOP Policy and UDRP to encompass claims by entities that might not traditionally be viewed as competing, in the case at hand, there is no evidence that Respondent registered the domain name primarily to prevent Complainant of so doing or for the purpose of disrupting the business of a competitor."
In the circumstances of this case, Complainant has failed to satisfy its burden to prove that Respondent acted in bad faith in registering <prudential.biz>.
For all of the above, Complainant has failed to meet its burden that the domain name had been registered or was being used in bad faith by Respondent.
The Respondent has asked for a declaration by the Panel that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
A claim of Reverse Domain Name Hijacking by Complainant must meet a heavy burden of proof by Respondent: there must be evidence that the Complaint was brought in bad faith. See Teranet Land Info. Servs. Inc. v. Verio, Inc., D2000-1123 (WIPO Jan. 25, 2001) and Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2002) noting that a finding of reverse domain name hijacking requires bad faith on Complainant's part; bad faith was not proven in these decisions because Complainant did not know and should not have known that one of the three elements in the Policy 4(a) was absent. The Panel adopts the finding in Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters. Unlimited, FA 102972 (Nat. Arb. Forum Feb. 23, 2002) where "the Panel considered the Complaint to have been misconceived rather than brought in bad faith".
Additionally, the argument brought forward by Respondent concerning the Prudential Insurance Company of America cannot be relied upon as no one can use the name of another to plead its own case.
For the foregoing reasons, the Panel concludes that :
- The domain name registered by the Respondent is identical to the trademark to which the Complainant has rights;
- The Respondent has rights or legitimate interest in respect of the domain name; but
- The domain name has not been registered by the Respondent in bad faith.
The Complainant having failed to meet its burden on two of the three elements, which need to be proven cumulatively under the STOP Policy, accordingly, the Panel dismisses the Complaint. No further challenges against this domain name shall be permitted under the STOP Policy.
Jacques A. Léger Q.C,
Dated: July 8, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page