The Prudential Insurance Company of America v. Domain Admin / Taranga Services Pty Ltd
Claim Number: FA1008001340663
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Brandon M. Ress, of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Domain Admin / Taranga Services Pty Ltd (“Respondent”), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prudentiallifeinsurance.com>, registered with MONIKER ONLINE SERVICES, INC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2010.
On August 13, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <prudentiallifeinsurance.com> domain name is registered with MONIKER ONLINE SERVICES, INC. and that Respondent is the current registrant of the name. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 August 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@prudentiallifeinsurance.com by e-mail. Also on August 23, 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 September 23, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prudentiallifeinsurance.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark.
2. Respondent does not have any rights or legitimate interests in the <prudentiallifeinsurance.com> domain name.
3. Respondent registered and used the <prudentiallifeinsurance.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Prudential Insurance Company of America, owns the exclusive rights to use its PRUDENTIAL mark in connection with a wide variety of insurance, financial, securities, investment, and real estate and relocation services. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its PRUDENTIAL (e.g., Reg. No. 693,628 issued February 23, 1960) and PRUDENTIAL.COM (Reg. No. 2,549,502 issued March 19, 2002).
Respondent, Domain Admin / Taranga Services Pty Ltd, registered the <prudentiallifeinsurance.com> domain name on June 24, 2006. The disputed domain name resolves to a website displaying links to sponsored advertisers which operates upon a pay-per-click system. The links provided on said website do not relate to any of the goods or services that Complainant offers.
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 contends that it has established rights in the PRUDENTIAL mark. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Complainant holds multiple trademark registrations for the PRUDENTIAL and PRUDENTIAL.COM marks with the USPTO (e.g., Reg. No. 693,628 issued February 23, 1960) and (Reg. No. 2,549,502 issued March 19, 2002). Therefore, the Panel finds Complainant has established rights in the PRUDENTIAL mark through Complainant’s registrations.
Complainant contends Respondent’s <prudentiallifeinsurance.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark. The disputed domain name contains Complainant’s PRUDENTIAL mark, combines the mark with the descriptive terms “life” and “insurance,” and adds the generic top-level domain (“gTLD”) “.com”. Previous panels have found that the addition of a term related to the Complainant’s business and a gTLD fail to distinguish the disputed domain name from the Complainant’s mark. See 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.”); see also 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). Therefore, the Panel concludes Respondent’s <prudentiallifeinsurance.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <prudentiallifeinsurance.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant makes a 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 <prudentiallifeinsurance.com> 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also 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).
Respondent has offered no evidence, and there is no evidence in the record, suggesting that Respondent is commonly known by the <prudentiallifeinsurance.com> domain name. Complainant asserts that Respondent is not authorized to use the PRUDENTIAL mark. The WHOIS information identifies the domain name registrant as “Moniker Privacy Services.” Therefore, the Panel finds that the Respondent has not established rights or legitimate interests in the <prudentiallifeinsurance.com> domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the <prudentiallifeinsurance.com> domain name to direct Internet users to a site offering pay-per-click advertisements which are unrelated to the Complainant’s mark or Complainant’s business. The Panel finds this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <prudentiallifeinsurance.com> domain name to direct Internet users to a pay-per-click site featuring links by sponsored advertisers. Visitors to the website resolving from the disputed domain name are likely confused as to the Complainant’s relationship or sponsorship of such a website. The Panel finds Respondent’s use of the <prudentiallifeinsurance.com> domain name is an attempt to commercially gain from this confusion, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) has been 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 <prudentiallifeinsurance.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 28, 2010
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