The Prudential Insurance Company of America v. Peter Carrington a/k/a Party Night Inc.
Claim Number: FA0301000143707
PARTIES
Complainant is The Prudential Insurance Company of America, Newark, NJ, USA (“Complainant”). Respondent is Peter Carrington a/k/a Party Night Inc., Amsterdam, The Netherlands (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <prudentialprefered.com>, registered with Key-Systems GmbH.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 30, 2003; the Forum received a hard copy of the Complaint on January 31, 2003.
On January 31, 2003, Key-Systems GmbH confirmed by e-mail to the Forum that the domain name <prudentialprefered.com> is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 January 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@prudentialprefered.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <prudentialprefered.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark.
2. Respondent does not have any rights or legitimate interests in the <prudentialprefered.com> domain name.
3. Respondent registered and used the <prudentialprefered.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Prudential Insurance Company of America, holds trademark rights in the PRUDENTIAL mark in over 50 countries. In the United States, Complainant holds over 100 U.S. Patent and Trademark Office (“USPTO”) registrations for its PRUDENTIAL family of marks. More specifically, Complainant’s USPTO registrations are described in the table below, listed without limitation:
|
TRADEMARK |
CLASS |
REG. NO. |
REG. DATE |
|
EPRUDENTIAL (Stylized) |
9 |
2,390,040 |
26 Sept. 2000 |
|
PRUDENTIAL |
36 |
693,628 |
23 Feb. 1960 |
|
PRUDENTIAL (Stylized) |
36 |
978,340 |
5 Feb. 1974 |
|
PRUDENTIAL AND ROCK DESIGN |
36 |
2,110,034 |
28 Oct. 1997 |
|
PRUDENTIAL, THE |
36 |
1,510,408 |
25 Oct. 1988 |
|
PRUDENTIAL CAPITAL |
36 |
1,499,901 |
9 Aug. 1988 |
|
PRUDENTIAL FINANCIAL |
36 |
2,646,316 |
5 Nov. 2002 |
|
PRUDENTIAL HOME CENTER |
35 |
1,993,110 |
13 Aug. 1996 |
|
PRUDENTIAL INVESTMENTS |
36 |
2,075,860 |
1 July 1997 |
|
PRUDENTIAL SECURITIES |
15 |
2,389,766 |
25 Sept. 2000 |
|
PRUDENTIAL-BACHE SECURITIES |
41 |
1,428,778 |
10 Feb. 1987 |
|
PRUDENTIAL.COM |
36 |
2,549,502 |
19 Mar. 2002 |
|
PRUDENTIAL HEALTHCARE |
42 |
2,062,195 |
13 May 1997 |
|
PRUDENTIAL ONLINE |
36 |
2,118,060 |
2 Dec. 1997 |
Complainant and its affiliated companies operate numerous websites that rely on the famous PRUDENTIAL mark for secondary source identification, including: <prudential.com>, <prudentialpreferred.com>, <prudentialsecurities.com>, <prudential-bache.com>, <prudential.co.kr> and <prudential.co.jp>.
Complainant
has expended substantial resources advertising and promoting its services
marketed under the PRUDENTIAL mark. Because of Complainant’s extensive efforts,
the PRUDENTIAL mark has achieved a significant amount of goodwill among the
consuming public. Complainant’s PRUDENTIAL mark is recognized by millions of
people around the world as a symbol of Complainant’s real estate, financial,
insurance and related services.
Respondent, Peter Carrington,
registered <prudentialprefered.com>
on May 28, 2002. Complainant’s investigation of Respondent’s use of the
disputed domain name indicates that <prudentialprefered.com>
resolves to a pornographic website located at
<hanky-panky-college.com>.
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.
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 has established rights in the PRUDENTIAL mark through registration with the USPTO and subsequent continuous use of the mark in commerce.
Respondent’s <prudentialprefered.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and adds the common misspelling of the generic term “preferred.” The dominant element of Respondent’s domain name remains Complainant’s mark; thus, the domain name is confusingly similar. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).
Additionally, generic top-level domains (such as “.com”) represent a required element in domain names, and therefore are not considered significant when conducting a Policy ¶ 4(a)(i) analysis. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
As stated, Respondent has failed to submit a Response to Complainant’s submission. Because Complainant’s prima facie case is uncontested, the Panel may accept Complainant’s allegations and inferences as valid, unless clearly contradicted by the evidence. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).
Furthermore, because Complainant has provided proof of valid, subsisting rights in the PRUDENTIAL mark and has alleged that Respondent lacks rights or legitimate interests in the domain name, the burden shifts to Respondent. By failing to respond, Respondent has consequently failed to assert any circumstances that could substantiate its rights or interests in <prudentialprefered.com>. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Complainant’s uncontested evidence indicates that Respondent is using the infringing domain name to redirect Internet users to an adult website located at <hanky-panky-college.com>. Respondent opportunistically uses Complainant’s famous mark in the domain name to create Internet interest, and subsequently diverts unsuspecting Internet users to the pornographic website. Respondent’s diversionary use of the PRUDENTIAL mark tarnishes Complainant’s reputation and goodwill; thus, such use is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) and (iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
There is no evidence that suggests Respondent has a legitimate interest in the <prudentialprefered.com> domain name. As stated in the Findings, Respondent’s primary use of the domain name is to redirect Internet users to a website that displays adult content and material unrelated to the PRUDENTIAL mark. Because of Complainant’s extensive use of the PRUDENTIAL mark in connection with its services and Respondent’s diversionary use of the domain name, the Panel infers that Respondent is not commonly known by <prudentialprefered.com> or the “prudentialprefered” second-level domain. Therefore, Respondent fails to establish rights in the disputed domain name under Policy ¶ 4(c)(ii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Policy paragraph 4(b) presents a non-exhaustive listing of bad faith criteria. When deciding whether Respondent registered and used the domain name in bad faith it is proper for the Panel to consider the “totality of circumstances” surrounding the dispute and its origin. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy do not constitute an exhaustive listing of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Respondent opportunistically registered and uses Complainant’s PRUDENTIAL mark in the infringing domain name to attract unsuspecting Internet users, subsequently diverting Internet interest to an adult website. Respondent’s registration and use of the subject domain name tarnishes Complainant’s mark because the characteristics of the domain name imply that Complainant is affiliated with Respondent’s pornographic offerings. Respondent’s commercial use of the infringing domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prudentialprefered.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 4, 2003
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page