The
Prudential Insurance Company of
Claim Number: FA1007001333935
Complainant is The
Prudential Insurance Company of America (“Complainant”), represented by Brandon M. Ress, of Fulbright &
Jaworski L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <prudentiallife.com>, registered with ENOM, INC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2010.
On July 7, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <prudentiallife.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, INC. 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 July 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@prudentiallive.com. Also on July 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Factual and Legal Grounds
This Complaint is based on the following grounds:
(a) For over 130 years, The Prudential Insurance Company of America (“Prudential”) has used its well-known PRUDENTIAL name and mark in connection with a wide variety of insurance, securities, investment, financial, and real estate and relocation services throughout the United States and the world. In particular, Prudential has offered life insurance products and services under the PRUDENTIAL mark for well over 100 years and has been ranked (for example, in 2007 according to A.M. Best) as the second largest life insurer in the United States based on total admitted assets.
(b)
Prudential spends more than $50 million annually for
advertising and promotion of its brand.
Prudential’s name and marks have been prominently displayed on outdoor
signs, letterhead, invoices, direct mail advertising, telephone directory
advertising, billboards, television, and radio advertising and periodicals
throughout the United States.
(c)
The PRUDENTIAL trademark is the subject of trademark
registrations in over 50 countries, including the
(d) Prudential has achieved a tremendous amount of goodwill as a result of its long and continuous use of its famous and well-known Prudential Marks, and they are recognized by millions of people around the world as a symbol of financial strength, quality, and trust.
(e) The Domain Name prudentiallife.com is confusingly similar to the PRUDENTIAL Mark. See Policy ¶4.a.(i).
(1)
ICANN panels have found that, when a domain name
incorporates a distinctive mark in its entirety, that creates sufficient
similarity between the mark and the domain name to render it confusingly
similar. See Lowen Corp. v. Henry Chan, D2004-0430 (WIPO Aug. 5, 2004) (finding
that the domain name lowensigns.com is confusingly similar to LOWEN);
(2) Furthermore, the addition of the common descriptive term “life” to an identical version of Complainant’s famous PRUDENTIAL mark does not negate the confusing similarity between the domain name and the PRUDENTIAL mark under Policy ¶4(a)(i). See The Prudential Insurance Company of America v. Domains2000.com, FA298227 (NAF September 2, 2004) (finding that the addition of “real estate,” which was descriptive of one of Complainant’s product lines, and a gTLD to the distinctive PRUDENTIAL mark did nothing to dispel confusion created by prudentialrealestate.com domain name); AHAVA NA, LLC v. Beauty Rose a/k/a Mark Hirsch, FA462441 (NAF May 31, 2005) (finding that the addition of hyphen and “usa” was not sufficient to overcome finding of confusing similarity between AHAVA mark and ahava-usa.com domain name). Life insurance is a product line offered by Prudential under the PRUDENTIAL mark and the Respondent’s use of “life” in the domain name is clearly intended to reference this product line.
(3) Respondent uses the domain name prudentiallife.com to display a website bearing links to other life insurance providers. Like in the prudentialrealestate.net and ahava-usa.com decisions, the descriptive term “life,” cannot negate the confusing similarity between the PRUDENTIAL mark and the prudentiallife.com domain name, particularly where Respondent’s website offer links designed to redirect web searches to other life insurance providers.
(f) Respondent has no rights or legitimate interest in the Domain Name. See Policy ¶4.a.(ii).
(1) Respondent is not commonly known by the name “Prudential Life,” nor does Respondent operate a business or other organization under the mark or name “Prudential Life.” See Policy ¶4.c.(ii).
(2) Respondent has no legitimate connection to Complainant’s famous PRUDENTIAL Mark. There is no plausible explanation for Respondent’s use of the PRUDENTIAL Mark or the Domain Name other than a desire to trade on the fame and goodwill of Complainant and create confusion. Such use of a domain name does not constitute a bona fide offering of goods and services. AltaVista Co. v. Geoffrey Fairbairn, D2000-0849 (WIPO Oct. 13, 2000) (use that intentionally trades on the fame of another cannot constitute a “bona fide” offering of goods or services).
(3) Respondent is not making a legitimate non-commercial or fair use of the Domain Name without intent for commercial gain, and is instead using the Domain Name to misleadingly divert consumers in order to make money. See Policy ¶4.c.(iii).
First, Respondent is using the PRUDENTIAL Mark without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in the PRUDENTIAL Mark through Complainant’s federal registrations. Therefore, Respondent is knowingly using the PRUDENTIAL Mark in violation of Complainant’s rights. Moreover, the content on Respondent's website at prudentiallife.com (which includes phrases such as “prudentialinsurancecompanyofamerica” and “prudentialinsurance” in the text) reveals that Respondent had actual knowledge of Prudential’s use of its PRUDENTIAL Mark and that Respondent is purposefully trading on Complainant's PRUDENTIAL Mark.
Second, the website located at prudentiallife.com is operated for commercial gain. This website functions as a directory site providing a listing of GoogleAds advertisements for providers of life insurance. When a searcher reaches the prudentiallife.com site and clicks on one of the many of the links, he or she is redirected to the website of one of these life insurance providers. Upon information and belief, Respondent receives compensation each time a searcher clicks on one of the links.
Third, Respondent’s use cannot be characterized as fair use. See Homer, TLC Inc. v. Kang, FA573872 (NAF November 22, 2005) (finding that Respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainants until they found that instead they were in a directory which would do the Complainants potential harm”). Searchers for Complainant’s PRUDENTIAL services who used the domain name prudentiallife.com would think they were visiting a PRUDENTIAL site until they discovered that they clicked on one of the links and found that they had been redirected to the website of another life insurance provider (i.e., a competitor of Complainant). Such use cannot be considered fair.
(g) Respondent registered and is using the Domain Name in bad faith. See Policy ¶4.b.(iii).
(1) Respondent is intentionally using the PRUDENTIAL Mark in its domain name to attract Internet searchers for commercial gain. See Policy ¶4.b.(iv); Kang, FA573872; Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO Oct. 6, 2000); Baylor University v. Kevin Daste, FA1082272 (Nov. 9, 2007).
In Kang,
the respondent registered the domain name “hamptonbay.com,” which was identical
to Complainant’s
In
Daste, the respondent registered and used the domain names
“baylorhospitals.com” and “bayloredu.com” which contained links to various
third party websites in competition with complainant. Daste,
FA1082272. The Panel found that the
respondent was commercially benefiting through the various click-through links
on the websites and was, thus, capitalizing on the likelihood that users,
presumably seeking complainant’s services, would be confused as to the
complainant’s affiliation with the disputed domain.
Upon information and belief, as noted above, Respondent receives monetary compensation for driving traffic to third party websites via the GoogleAds on its prudentiallife.com domain. Just as in Kang, the Respondent is capitalizing and commercially benefiting on the likelihood that users seeking Complainant will be confused when they reach the prudentiallife.com website and will thus generate income for Respondent. Such use constitutes bad faith under the policy.
In addition, upon information and belief, Respondent operates the website www.dropwatch.com, a website devoted to the purchase, sale, registration and exploitation of domain names. Respondent’s operation of this site indicates that Respondent traffics in domain names and further evidences that Respondent is intentionally using the PRUDENTIAL Mark for commercial gain.
Moreover, upon information and
belief, in a prior UDRP proceeding, JL
Audio, Inc. v.
(2) Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain name prudentiallife.com. See Countrywide Financial Corp. v. Web Domain Names, FA708909 (finding that respondent’s use of a disputed domain to divert Internet users to third-party websites created a likelihood of confusion as to the affiliation between the complainant and the disputed domain). And as reasoned in Athanasios, D2000-0923, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that Complainant endorsed, sponsored or affiliated themselves with the goods and services offered via the prudentiallife.com website.
(3) Further, Respondent had actual knowledge or reasonably should have had knowledge of Complainant’s prior use and registration of the PRUDENTIAL Mark, as the mark is famous. Respondent also had constructive notice of Complainant’s rights in the PRUDENTIAL Mark as a result of Complainant’s ownership of numerous trademark registrations for the PRUDENTIAL Mark with the USPTO. Respondent’s constructive and actual knowledge of Complainant’s rights in the PRUDENTIAL Mark at the time of the registration of the Domain Name demonstrates its bad faith in registering the names. See Domains2000.com, FA298227 (“Respondent’s registration of a domain name that incorporates Complainant’s famous registered mark in its entirety, and deviates only with the addition of a generic term that describes a part of Complainant’s business, suggests that Respondent had knowledge of Complainant’s rights in the well-known PRUDENTIAL mark. Thus, the Panel finds that Respondent likely chose the <prudentialrealestate.net> domain name based on the distinctive and famous qualities of Complainant’s mark.”).
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Prudential Insurance Company of America, uses its PRUDENTIAL mark in connection with a wide variety of insurance, securities, investment, financial, and real estate and relocation services throughout the United States and worldwide. Specifically, Complainant has offered life insurance products and services for over 100 years. Complainant has registered its PRUDENTIAL mark multiple times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 693,628 issued February 23, 1960).
Respondent, Domainut c/o Sidney Parfait, registered the disputed domain name on June 11, 2005. The disputed domain name resolves to a website that displays links to Complainant’s competitors in the life insurance industry.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant claims rights in its PRUDENTIAL mark based on its holding of multiple trademark registrations with the USPTO (e.g., Reg. No. 693,628 issued February 23, 1960). The Panel finds Complainant’s registration of its PRUDENTIAL mark with the USPTO is evidence of its rights in the mark under Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant argues Respondent’s <prudentiallife.com>
domain name is confusingly similar
to Complainant’s PRUDENTIAL mark.
Respondent’s disputed domain name contains Complainant’s mark in its
entirety and adds the descriptive term “life” and the generic top-level domain
(“gTLD”) “.com.” The Panel finds the
addition of a descriptive term with such an obvious relationship to
Complainant’s position in the life insurance industry creates a confusing
similarity between the disputed domain name and Complainant’s mark. The Panel also finds the addition of a gTLD
does not distinguish a disputed domain name from a mark. See
Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28,
2005) (finding that the additions of the term “batteries,” which described the
complainant’s products, and the generic top-level domain “.com” were
insufficient to distinguish the respondent’s <duracellbatteries.com> from
the complainant’s DURACELL mark); see
also Eastman Chem. Co. v. Patel, FA
524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that
the addition of a term descriptive of Complainant’s business, the addition of a
hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish
Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel finds that Respondent’s <prudentiallife.com>
domain name is confusingly similar
to Complainant’s PRUDENTIAL mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant asserts Respondent has no rights or legitimate
interests in the <prudentiallife.com> domain name. Based on the
requirements of Policy ¶4(a)(ii), Complainant must
first establish a prima facie case in
support of its assertions before the burden will shift to Respondent to prove that
it does have rights or legitimate interests in the disputed domain name. The Panel finds Complainant has established a
prima facie case based on the
arguments contained in the Complaint. See Intel Corp. v. Macare, FA 660685 (Nat. Arb.
Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie
case that [the] respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶4(a)(ii), and then
the burden shifts to [the] respondent to show it does have rights or legitimate
interests.”); see also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13,
2007) (finding that once a prima facie case
has been established by the complainant, the burden then shifts to the
respondent to demonstrate its rights or legitimate interests in the disputed
domain name pursuant to Policy ¶4(c)).
Nevertheless, the Panel will examine the record in light of the factors
outlined in Policy ¶4(c) to determine whether Respondent has rights or
legitimate interests in the <prudentiallife.com> domain name.
Complainant contends
Respondent has no legitimate connection to Complainant’s famous PRUDENTIAL mark
and is therefore not commonly known by the disputed domain name. The WHOIS information indicates the
registrant of the disputed domain name is “Domainut c/o Sidney
Parfait.” The Panel finds that without
evidence in the record to the contrary, Respondent is not commonly known by the
disputed domain name pursuant to Policy ¶4(c)(ii). See
M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the
respondent was not commonly known by the <cigaraficionada.com> domain
name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence
in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA
715089
(Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Complainant claims Respondent is using the disputed domain name to resolve to a directory site featuring advertisements for life insurance providers. Complainant further claims Respondent likely profits every time an Internet user clicks on one of the displayed links to competing life insurance providers. The Panel finds Respondent’s use of the <prudentiallife.com> domain name to receive click-through fees from the links to Complainant’s competitors in the life insurance industry is not a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
The Panel finds Policy ¶4(a)(ii) satisfied.
The Panel finds Respondent’s <prudentiallife.com>
domain name which resolves to a website that displays links to Complainant’s
competitors in the life insurance industry is evidence of Respondent’s bad
faith. The Panel concludes Internet
users seeking life insurance products or services from Complainant may instead
purchase these same products and services from a direct competitor of
Complainant based on the links displayed at the website resolving from the
confusingly similar disputed domain name.
The Panel finds this constitutes a disruption of Complainant’s business
and as such is evidence of Respondent’s bad faith registration and use pursuant
to Policy ¶4(b)(iii).
See David Hall Rare Coins v.
Complainant argues Respondent is intentionally using the PRUDENTIAL
mark in the disputed domain name to attract Internet users for commercial
gain. Respondent receives click-through
fees based on the advertisements and links displayed on the disputed domain
name that drive traffic to third-party websites. Internet searchers will likely be confused
into believing there is a connection of source, sponsorship or affiliation
between Complainant and Respondent based on Respondent’s use of the confusingly
similar <prudentiallife.com> domain name. The Panel finds Respondent’s registration and
use of the disputed domain name is evidence of Respondent’s bad faith pursuant
to Policy ¶4(b)(iv).
See Zee
TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the respondent engaged in bad faith registration and use by using
a domain name that was confusingly similar to the complainant’s mark to offer
links to third-party websites that offered services similar to those offered by
the complainant); see also Identigene, Inc. v.
Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where
the respondent's use of the domain name at issue to resolve to a website where
similar services are offered to Internet users is likely to confuse the user
into believing that the complainant is the source of or is sponsoring the
services offered at the site).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prudentiallife.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: Friday, August 20, 2010
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