national arbitration forum

 

DECISION

 

The Prudential Insurance Company of America v. Debra Speyer

Claim Number: FA1101001366304

 

PARTIES

Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Chris Kindel of Fulbright & Jaworski L.L.P., Texas, USA.  Respondent is Debra Speyer (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <prudentialannuity.com> and <prudentialfraud.com>, registered with GoDaddy.com, 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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2011; the National Arbitration Forum received payment on January 7, 2011.

 

On January 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <prudentialannuity.com> and <prudentialfraud.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On January 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2011 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@prudentialannuity.com and postmaster@prudentialfraud.com.  Also on January 10, 2011, 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 February 2, 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

A.          Rights of Complainants

(a)         For over 130 years, Prudential has used its well-known PRUDENTIAL name and mark in connection with a wide variety of financial, securities, investment, insurance, and real estate and relocation services throughout the United States and the world.  Prudential offers, among other things, a wide range annuities products and services and protection against insurance fraud under its PRUDENTIAL mark.

(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 and PRUDENTIAL combination marks (the “PRUDENTIAL Marks”) are the subject of trademark registrations in over 50 countries, including the United States.  In the United States, Prudential owns at least 35 U.S. trademark registrations for its PRUDENTIAL marks, including a registration for the mark PRUDENTIAL ANNUITIES (Reg. No. 3522211). Many of Prudential’s registrations for the PRUDENTIAL Marks are incontestable pursuant to 15 U.S.C. §1065,  including the following:  PRUDENTIAL FINANCIAL (Reg. No. 2646316), PRUDENTIAL FINANCIAL and Design (Reg. No. 2488926), PRUDENTIAL (Reg. No. 693628), and PRUDENTIAL.COM (Reg. No. 2549502).

(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.

B.          Confusing Similarity

(a)         The domain names prudentialannuity.com and prudentialfraud.com are confusingly similar to the PRUDENTIAL marks.  See Policy ¶4.a.(i). 

(b)        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); Minnesota Mining & Manufacturing v JonLRD2001-0428 (WIPO June 18, 2001) (finding 3mcare.com confusingly similar to 3M).

(c)         Furthermore, the addition of the common descriptive terms “annuity” and “fraud” to an identical version of Complainant’s famous PRUDENTIAL mark does not negate the confusing similarity between the domain names 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). 

1.             Prudential is engaged in the sale of annuities through its Prudential Annuities business.  Respondent’s use of “annuities” in the prudentialannuities.com domain name is clearly intended to refer to Prudential’s annuity business.  See Transamerica Corp. v. Gila,  FA1238257 (NAF January 26, 2009) (finding that the addition of “annuity” to the TRANSAMERICA mark  rendered the domain confusingly similar, stating:  “The remainder of the disputed domain name is Complainant’s mark and the term “annuity,” which is a financial product offered by Complainant.  Combining Complainant’s mark with a product offered by Complainant results in the disputed domain name being confusingly similar to the mark pursuant to Policy ¶4(a)(i)”).

2.             Prudential is also engaged in the business of offering protection against insurance fraud.  As shown by a prior UDRP decision against Respondent, mere combination of the PRUDENTIAL mark with the descriptive term “fraud” which describes a service offered by Complainant’s business, renders Respondent’s prudentialfraud.com domain name confusingly similar to Complainant’s marks.  See Am. Int’l Group, Inc. v. Speyer, FA422815 (NAF April 7, 2005) (finding that the addition of “fraud” to the AIG mark rendered the domain name confusingly similar, stating: “The addition of a descriptive terms such as “fraud” which also describes part of Complainant’s business does not change the overall impression of the mark”).

(d)        Respondent uses the domain name prudentialannuity.com to redirect to a website entitled “Annuities Fraud” which promotes legal consultations to visitors with potential annuities fraud claims.  Respondent uses the domain name prudentialfraud.com to redirect to the website of the “Wall Street Fraud” law firm which solicits clients with potential securities fraud claims.  Like in the prudentialrealestate.net and ahava-usa.com decisions, the descriptive terms “annuity” and “fraud” cannot negate the confusing similarity between the PRUDENTIAL Marks and the prudentialannuity.com domain name.

C.          Respondent’s Lack of Rights or Legitimate Interest

(a)         Respondent has no rights or legitimate interest in the Domain Name.  See Policy ¶4.a.(ii).

(b)        Respondent is not commonly known by the names “Prudential Annuity” or “Prudential Fraud,” nor does Respondent operate a business or other organization under the marks or names “Prudential Annuity” or “Prudential Fraud.”  See Policy ¶4.c.(ii). 

(c)         Respondent has no legitimate connection to Complainant’s famous PRUDENTIAL Marks.  There is no plausible explanation for Respondent’s use of the PRUDENTIAL Marks 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).

(d)        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).

1.             First, Respondent is using the PRUDENTIAL Marks without consent from Complainant. Respondent was put on constructive notice of Complainant’s rights in the PRUDENTIAL marks through Complainant’s federal registrations.  Therefore, Respondent is knowingly using the PRUDENTIAL Marks in violation of  Complainant’s rights. 

2.             Second, the websites located at prudentialannuity.com and prudentialfraud.com are operated for commercial gain.  As previously discussed, the prudentialannuity.com domain redirects to a website entitled “Annuities Fraud” which promotes legal consultations to visitors with potential annuities fraud claims.  That domain is sponsored by and contains a description of the “Wall Street Fraud” law firm of which Respondent is an attorney.  Further, the “Annuities Fraud” website contains a prominently displayed link to the domain WallStreetFraud.com, which contains solicitations for clients with potential securities fraud claims as well as a biography of Respondent.  The prudentialfraud.com domain also directly redirects to the WallStreetFraud.com domain.  Such solicitations of legal services for commercial gain do not amount to a legitimate noncommercial interest in the domain name.  See MSNBC Cable LLC, v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark when Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).   In fact, numerous UDRP panels have found in favor of trademark owners under similar circumstances where an attorney or law firm registered a domain name incorporating the trademark owners’ marks and the words “lawsuit,” “litigation” or some other term.  See, e.g., American Int’l Group, Inc. v. Debra Speyer, FA422815 (Nat. Arb. Forum April 7, 2005); American Int’l Group, Inc. v. Debra Speyer, FA481752 (Nat. Arb. Forum June 28, 2005); American Int'l Group, Inc. v. Bruce Levin, FA591254 (Nat. Arb. Forum Dec. 21, 2005); Key Bank N.A. d/b/a Champion Mortgage Co., Inc. v. James Griffin, FA562478 (Nat. Arb. Forum Nov. 1, 2005); Ginn Real Estate Company LLC v. Hilton Wiener, FA1211342 (Nat. Arb. Forum Aug. 20, 2008).

3.             Third, Respondent’s use cannot be characterized as fair use.  Under the Policy, fair use contemplates use without intent for commercial gain.  See Policy ¶(4)(c)(iii).  Respondent’s prudentialannuity.com and prudentialfraud.com domains redirect to websites offering legal consultations that may lead to new clients and, thus, commercial gain for Respondent’s law firm.  As shown, for example, in prior UDRP cases involving Respondent’s improper registration of domains featuring third-party marks, such use cannot be considered fair.  See Am. Int’l Group, Inc. v. Speyer, FA 481752 (Nat. Arb. Forum June 28, 2005) (“Complainant asserts that Respondent is using the <aiglawsuit> domain name to redirect Internet users to its commercial website unrelated to Complainant’s business for Respondent’s commercial gain.  In the Panelist’s opinion such use does not constitute legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers, in accordance with the Policy ¶4(c)(iii).”).

D.         Bad Faith Acts of Respondent

(a)         Respondent registered and is using the Domain Name in bad faith.  See Policy ¶4.b.(iii).

(b)        Respondent is intentionally using the PRUDENTIAL Marks in the domain name to attract Internet searchers for commercial gain. See Policy ¶4.b.(iv); See G. D. Searle & Co. v. Clebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to the Policy because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).  See also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

(c)         Upon information and belief, Respondent engages in the practice of registering domain names featuring the registered, well-known trademarks of other companies to direct traffic to Respondent’s law firm website for commercial gain.  Such domains include, among others:  allstatefraud.com (ALLSTATE is a registered trademark of Allstate Insurance Company); americanexpressannuity.com (AMERICAN EXPRESS is a registered trademark of American Express Marketing & Development Corp.); edwardjonesfraud.com (EDWARD JONES is a registered trademark of Edward D. Jones & Co., L.P.); fanniemaefraud.com (FANNIE MAE is a registered trademark of the Federal National Mortgage Association Corporation); greatamericaninsurancefraud.com (GREAT AMERICAN INSURANCE COMPANY is a registered trademark of Great American Insurance Company Corporation); and verizonpension.com (VERIZON is a registered trademark of Verizon Trademark Services LLC). 

1.                  Most of the cited domain names redirect to the domain wallstreetfraud.com, the website of a securities fraud law firm of which Respondent is listed as an attorney. 

2.                  Upon information and belief, Respondent is appropriating a domain name that is confusingly similar to Complainant’s mark to attract internet users for commercial gain.  Respondent’s registration of numerous domain names featuring third party marks which redirect to a webpage advertising her legal services constitutes an attempt to generate revenue.  This behavior shows a pattern of bad faith conduct and further evidences that Respondent is intentionally using the PRUDENTIAL Marks for commercial gain.  See e.g.,  Policy ¶4(b)(ii); Volvo Trademark Holding AB v. Unasi, Inc., D2005-0556 (WIPO July 29, 2005) (finding, as evidence of bad faith, that the respondent had registered multiple third party trademarks as domain names); Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (same).

3.                  Moreover, upon information and belief, in at least two prior UDRP proceedings, Respondent was found to have registered a third party’s trademark in bad faith for commercial gain under essentially the exact same circumstances.  See Am. Int’l Group, Inc. v. Speyer, FA422815 (NAF Apr. 7, 2005), Am. Int’l Group, Inc. v. Levin, FA591254 (Dec. 21, 2005) (finding that Respondent registered the disputed domain names on behalf of Debra G. Speyer and that Ms. Speyer “operate[d] the websites associated with the disputed domain names for her own benefit and financial gain”).  The finding in these prior UDRP decisions against Respondent further evidences Respondent’s bad faith to profit in the present matter. 

(d)        Further, Respondent had actual knowledge or reasonably should have had knowledge of Complainant’s prior use and registration of the PRUDENTIAL Marks, as the mark is famous.  Respondent also had constructive notice of Complainant’s rights in the PRUDENTIAL Marks as a result of Complainant’s ownership of numerous trademark registrations for the PRUDENTIAL Marks with the USPTO, including a registration for PRUDENTIAL ANNUITIES.  Respondent’s constructive and actual knowledge of Complainant’s rights in the PRUDENTIAL Marks 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.

 

FINDINGS

Complainant, The Prudential Insurance Company of America, offers a wide variety of financial, securities, investment, insurance, and real estate and relocation services through the United States and the world, including annuities products and services and protection against insurance fraud.  Complainant owns trademark registrations for the PRUDENTIAL.COM and related marks with the United States Patent and Trademark Office (“USPTO”):

 

PRUDENTIAL                      Reg. No. 693,628     issued February 23, 1960 and

PRUDENTIAL.COM                        Reg. No. 2,549,502  issued March 19, 2002.

 

Respondent, Debra Speyer, registered the <prudentialannuity.com> and <prudentialfraud.com> domain names on April 25, 2004.  The <prudentialannuity.com> domain name resolves to a website sponsored by a “Wall Street Fraud” law firm of which Respondent is apparently an attorney and that promotes legal consultations to visitors with potential annuities fraud claims.  The <prudentialfraud.com> domain name directly redirects to the <wallstreetfraud.com> domain name, the website of the “Wall Street Fraud” law firm described at the <prudentialannuity.com> domain name.

 

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 required 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 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

 

Complainant owns trademark registrations for the PRUDENTIAL.COM and related marks with the United States Patent and Trademark Office (“USPTO”):

 

PRUDENTIAL                      Reg. No. 693,628     issued February 23, 1960 and

PRUDENTIAL.COM                        Reg. No. 2,549,502  issued March 19, 2002.

 

The Panel finds these USPTO trademark registrations are sufficient evidence of Complainant’s rights in the PRUDENTIAL.COM mark pursuant to Policy ¶4(a)(i). See 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); 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 <prudentialannuity.com> and <prudentialfraud.com> domain names are confusingly similar to Complainant’s PRUDENTIAL.COM mark because both disputed domain names consist of Complainant’s mark with only the generic or descriptive terms “annuity” or “fraud” inserted. Respondent does not dispute this.  Therefore, the Panel finds the addition of generic or descriptive term does nothing to remove the disputed domain names from the realm of confusing similarity according to Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).  Therefore, the Panel finds Respondent’s <prudentialannuity.com> and <prudentialfraud.com> domain names are confusingly similar to Complainant’s PRUDENTIAL.COM mark for the purposes of Policy ¶4(a)(i).

 

The Panel finds Policy ¶4(a)(i) satisfied.

 

Rights or Legitimate Interests

 

Before the burden transfers to Respondent to show rights and legitimate interests in the disputed domain name, Policy ¶4(a)(ii) requires Complainant to present a prima facie  case against Respondent.  The Panel finds Complainant has adequately satisfied its obligation in these proceedings.  Respondent, however, has defaulted and therefore not shown any evidence of rights or legitimate interests.  While the Panel could hypothesize various possible legitimate interests, the Panel must rule on the basis of the uncontroverted evidence in front of it and not on unasserted possibilities, see, for example, Homer TLC, Inc. v. GreenPeople, FA0508000550345 (10/25/2005).  The Panel accordingly concludes Complainant’s allegations may be accepted as true and Respondent lacks all rights and legitimate interests in the disputed domain names. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint); see also Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest in the Domain Name . . . . It is incumbent on Respondent to contribute to the fact-finding and if contrary to that, it rather incurs in default, there is nothing that the Panel could do to discuss in its benefit.”).  The Panel will consider all the evidence in the record in light of the Policy ¶4(c) factors, however, in order to make a complete determination on Respondent’s rights and legitimate interests.

 

Complainant alleges Respondent does not operate a business or other organization under Complainant’s mark or the disputed domain names.  Complainant asserts Respondent has no legitimate connection to Complainant’s marks and Complainant has not given Respondent consent to use the marks. The Panel thus finds Respondent is not commonly known by the <prudentialannuity.com> and <prudentialfraud.com> domain names and consequently does not possess rights and legitimate interests under Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Complainant contends both of Respondent’s <prudentialannuity.com> and <prudentialfraud.com> domain names are operated for commercial gain.  Complainant argues the <prudentialannuity.com> domain name redirects to a website entitled “Annuities Fraud,” which promotes legal consultations to visitors with potential annuities claims.  Complainant alleges this resolving website is sponsored by and advertises for the “Wall Street Fraud” law firm of which Respondent is an attorney.  Complainant contends this resolving website features a link to that firm’s website.  Complainant also alleges the <prudentialfraud.com> domain name directly redirects to the <wallstreetfraud.com> domain name, the same website at the <prudentialannuity.com> domain name. Complainant asserts such solicitations for legal services under Complainant’s mark do not satisfy the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) as a bona fide offering of goods or services or a legitimate noncommercial or fair use.  Respondent chooses not to dispute this.

 

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

 

Registration and Use in Bad Faith

 

Complainant argues Respondent’s <prudentialfraud.com> domain name redirects Internet users to the commercial website of a law firm at the <wallstreetfraud.com> domain name. Complainant alleges Respondent’s <prudentialannuity.com> domain name resolves to a page featuring information about and links to the same law firm at the <wallstreetfraud.com> domain name.  Complainant contends Respondent is an attorney with this firm.  Complainant asserts Respondent intentionally registered the <prudentialfraud.com> and <prudentialannuity.com> domain names to capitalize on Complainant’s customer base and direct them to Respondent’s firm’s website for commercial gain by creating confusion among Internet users.  Respondent does not dispute this.  The Panel finds these actions show bad faith registration and use pursuant to Policy ¶4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

The Panel finds Policy ¶4(a)(iii) 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 <prudentialannuity.com> and <prudentialfraud.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: February 15, 2011

 

 

 

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