The Prudential Insurance Company of America v. Venkateshwara Distributor Private Limited.
Claim Number: FA1210001469497
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Chris M. Kindel of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <retirementprudential.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2012; the National Arbitration Forum received payment on October 31, 2012.
On November 2, 2012, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail to the National Arbitration Forum that the <retirementprudential.com> domain name is registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the name. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED has verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED 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 November 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 2012 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@retirementprudential.com. Also on November 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant’s business relates to a wide variety of retirement, financial, securities, investment, insurance, real estate and relocation services throughout the United States and the world. Complainant offers a wide range of retirement planning products and services under its PRUDENTIAL mark. Complainant offers retirement services and products through its “Prudential Retirement” business and promotes these services at its <retire.prudential.com> website.
Complainant owns and shows evidence of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PRUDENTIAL mark (e.g., Reg. No. 693,628, registered February 23, 1960), and for the PRUDENTIAL RETIREMENT mark (Reg. No. 2,866,851, registered July 27, 2004).
Respondent’s <retirementprudential.com> is confusingly similar to Complainant’s PRUDENTIAL marks because the addition of the common descriptive term “retirement” does not negate the confusing similarity under Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the name “Retirement Prudential” nor does Respondent operate a business or other organization under the mark or name “Retirement Prudential.”
Respondent’s <retirementprudential.com> domain name connects to a website that redirects to a pay-per-click landing page, displaying links to sponsored advertisers for retirement and financial products and services that directly compete with Complainant.
Respondent has registered and is using the disputed domain name in bad faith. Respondent had constructive notice of Complainant’s rights in the PRUDENTIAL marks as a result of Complainant’s ownerships of numerous trademark registrations for the PRUDENTIAL marks. Respondent had actual knowledge or reasonably should have had knowledge of Complainant’s prior use and registration of the PRUDENTIAL marks.
Respondent is intentionally using the PRUDENTIAL marks in the disputed domain name to attract Internet searchers for commercial gain. Respondent receives monetary compensation for driving traffic to third party websites via the <retirementprudential.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for its PRUDENTIAL mark, as well as for related trademarks.
Respondent registered the at-issue domain name after Complainant acquired rights in the PRUDENTIAL mark.
Respondent is not authorized to use Complainant’s trademarks.
Respondent operates a website addressed by the <retirementprudential.com> domain name that displays pay-per-click links on the homepage. The page offers links to vendors of retirement and financial products and services that directly compete with Complainant.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns trademark registrations with the USPTO for its PRUDENTIAL mark, as well as for other related trademarks. Complainant’s trademark registrations establish Complainant’s rights in a mark for the purposes of Policy ¶4(a)(i) notwithstanding that Respondent may live outside the United States. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The addition of the common descriptive term “retirement” does not serve to distinguish the at-issue domain name from Complainant’s trademarks. Respondent’s use of the descriptive term “retirement” in <retirementprudential.com> is intended to refer to Complainant’s retirement products and services and therefore only adds to confusion. Moreover, it is well settled that the addition of the top level domain name to the second level name is immaterial under Paragraph ¶4(a)(i) analysis. Given the foregoing, the Panel concludes that Respondent’s <retirementprudential.com> is confusingly similar to Complainant’s PRUDENTIAL marks under the Policy. 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); see also, Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business);see also, Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there is no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name lists “Venkateshwara Distributor Private Limited” as the domain name’s registrant. The registrant’s name is in no way comparable to the at-issue domain name in sight, sound, or meaning. Furthermore, there is no evidence before the Panel which otherwise suggests that Respondent is known by the at‑issue domain name. See 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). Therefore, the Panel finds, pursuant to Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <retirementprudential.com> domain name.
Respondent’s <retirementprudential.com> domain name addresses a website that displays a pay per click ridden landing page. On that page are displayed links to sponsored advertisers for retirement and financial related products and services such as links to “401k Retirement Account,” “Retirement Plans,” “401 Rollover,” and various other links, that directly compete with services and products offered by Complainant. It is reasonable to assume that Respondent receives, or intends to receive, compensation each time a visitor clicks on one of these links. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is non-Policy ¶4(b) evidence from which the Panel may likewise conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent is intentionally using the confusingly similar at-issue domain name to attract Internet users to its <retirementprudential.com> website for commercial gain. There is little doubt Respondent receives, or intends to receive, monetary compensation for driving traffic to third parties via its <retirementprudential.com> website. Respondent thereby seeks to capitalize and commercially benefit from the likelihood that confused Internet users seeking Complainant will instead reach <retirementprudential.com> and then click on one of the several pay-per-click links displayed thereon. These circumstances evidence bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent was undoubtedly aware of Complainant’s PRUDENTIAL mark when it registered the <retirementprudential.com> domain name. Complainant and its PRUDENTIAL trademarks are very well known throughout the world in the field of financial products and services. Respondent’s use of the domain name for a website linking to Complainant’s competitors further suggests that Respondent had prior knowledge of PRUDENTIAL. Additionally, there is no plausible explanation as to why Respondent registered the confusingly similar domain name except to trade on Complainant’s mark. Registering a domain name with prior knowledge of another rights therein indicates bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <retirementprudential.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 10, 2012
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