national arbitration forum

 

DECISION

 

The Prudential Insurance Company of America v. Helpful Information Sites c/o Tracy Dubay

Claim Number: FA1007001337954

 

PARTIES

Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Brandon M. Ress, of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Helpful Information Sites c/o Tracy Dubay (“Respondent”), Ohio, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prudentialfinancialstock.com>, registered with ENOM, INC.

 

PANEL

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.

 

Judge Harold Kalina (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 28, 2010.

 

On Jul 29, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <prudentialfinancialstock.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 29, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 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@prudentialfinancialstock.com by e-mail.  Also on July 29, 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 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 (the "Rules") "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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <prudentialfinancialstock.com> domain name is confusingly similar to Complainant’s PRUDENTIAL FINANCIAL mark.

 

2.      Respondent does not have any rights or legitimate interests in the <prudentialfinancialstock.com> domain name.

 

3.      Respondent registered and used the <prudentialfinancialstock.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Prudential Insurance Company of America, provides financial, securities, investment, insurance, and real estate and relocation services under its PRUDENTIAL FINANCIAL mark.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its PRUDENTIAL FINANCIAL mark (e.g., Reg. No. 2,646,316 issued November 5, 2002).

 

Respondent, Helpful Information Sites c/o Tracy Dubay, registered the <prudentialfinancialstock.com> domain name on January 17, 2010.  The disputed domain name resolves to a website that provides hyperlinks to stock investment websites, retirement fund websites, and life insurance websites.  All of the aforementioned websites directly compete with Complainant’s financial services. 

 

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 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.

 

Identical and/or Confusingly Similar

 

Previous panels have found that a complainant may establish rights in a mark for Policy ¶ 4(a)(i) purposes by registering a mark with a federal trademark authority.  See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  Complainant holds multiple trademark registrations with the USPTO for its PRUDENTIAL FINANCIAL mark (e.g., Reg. No. 2,646,316 issued November 5, 2002).  The USPTO is a federal trademark authority.  Therefore, the Panel finds Complainant has established rights in its PRUDENTIAL FINANCIAL mark under Policy ¶ 4(a)(i).

 

Past panels have determined that a disputed domain name is confusingly similar if a disputed domain name removes the space separating a complainant’s mark, adds a descriptive term, and adds a generic top-level domain (“gTLD”) to a complainant’s mark.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).  Respondent’s <prudentialfinancialstock.com> domain name removes the space separating the terms “PRUDENTIAL” and “FINANCIAL” in Complainant’s mark.  Respondent further adds the descriptive term “stock,” which references Complainant’s financial services.  Finally, Respondent’s <prudentialfinancialstock.com> domain name appends the gTLD “.com” to Complainant’s mark.  Based on the decisions of past panels, this Panel concludes that Respondent’s <prudentialfinancialstock.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds the elements of Policy ¶ 4(a)(i) are satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <prudentialfinancialstock.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a sufficient prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”).

 

Prior panels have found that a respondent is not commonly known by a disputed domain name when the WHOIS information fails to indicate such a fact and when the respondent fails to provide any evidence and the panel cannot find any evidence in the record, that would suggest that the respondent is commonly known by the domain name.  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).  In this case, the WHOIS information identifies “Helpful Information Sites c/o Tracy Dubay” as the domain name registrant, which the Panel determines is not similar to Respondent’s <prudentialfinancialstock.com> domain name and does not indicate that Respondent is commonly known by the disputed domain name.  Respondent has failed to respond to the Complaint and, therefore, has failed to offer any evidence that would suggest that Respondent is commonly known by the <prudentialfinancialstock.com> domain name.  After examining the record, the Panel fails to find any evidence that would suggest that Respondent is commonly known by the disputed domain name and thus holds that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). 

 

Previous panels have concluded that a respondent’s use of a disputed domain name to provide hyperlinks to websites that compete with a complainant was not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products.  The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).  Respondent uses its <prudentialfinancialstock.com> domain name to resolve to a website that contains hyperlinks to Complainant’s competitors in the financial services industry.  Respondent presumably commercially benefits from these hyperlinks through the receipt of pay-per-click fees.  Based on past precedent, the Panel finds Respondent’s use of the <prudentialfinancialstock.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Past panels have determined that a respondent’s use of a disputed domain name disrupts a complainant’s business under Policy ¶ 4(b)(iii) when a respondent uses a domain name to resolve to a website featuring hyperlinks to a complainant’s competitors.  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).  Respondent’s <prudentialfinancialstock.com> domain name resolves to a website that contains hyperlinks to stock investment websites, retirement fund websites, and insurance websites, all of which compete with Complainant’s financial services.  Consequently, the Panel finds Respondent’s use of the <prudentialfinancialstock.com> domain name disrupts Complainant’s business, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

Prior panels have held that a respondent’s attempt to commercially benefit from Internet users’ confusion as to a complainant’s association with a disputed domain name constitutes bad faith registration and use.  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).  Respondent presumably receives click-through fees from the aforementioned hyperlinks featured on the website resolving from the <prudentialfinancialstock.com> domain name.  Internet users interested in Complainant may become confused as to Complainant’s affiliation with the disputed domain name due to the domain name’s confusing similarity with Complainant’s PRUDENTIAL FINANCIAL mark.  Respondent commercially benefits from these Internet users that mistakenly enter Respondent’s website.  The Panel determines that Respondent is attempting to profit from Internet users’ confusion and consequently finds that Respondent’s use of the <prudentialfinancialstock.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <prudentialfinancialstock.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Judge Harold Kalina (Ret.), Panelist

Dated:  September 2, 2010

 

 

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