The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA
Claim Number: FA1702001718308
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Rebecca McCurry of Pirkey Barber PLLC, Texas, USA. Respondent is Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prudentialbrasil.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2017; the Forum received payment on February 21, 2017.
On February 22, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <prudentialbrasil.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2017 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@prudentialbrasil.com. Also on February 22, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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" 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 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
i) Complainant has registered its famous PRUDENTIAL mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 693,628, registered Feb. 23, 1960), and has rights in the mark under Policy ¶ 4(a)(i). Respondent’s <prudentialbrasil.com> is confusingly similar to Complainant’s mark because it merely inserts the geographical term “brasil” into the fully incorporated PRUDENTIAL mark and appends the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its PRUDENTIAL marks in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent has been using Complainant’s marks on the resolving website to attract Internet users and attempt to steal users’ personal and financial information. Such use cannot be construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
iii) Respondent has registered and is using the <prudentialbrasil.com> domain name in bad faith. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the PRUDENTIAL mark. Respondent creates confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant to exploit customer trust and gain users’ personal information. This use clearly points to a finding that Respondent had actual knowledge of Complainant’s rights in the PRUDENTIAL mark when it registered the disputed domain name.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered the domain name on December 20, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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(f), 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 (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.”).
Complainant contends it has registered the PRUDENTIAL mark with the USPTO (Reg. No. 693,628, registered Feb. 23, 1960), and therefore it has rights in the mark under Policy ¶ 4(a)(i). Per the Policy, USPTO registration confers rights in a mark, even when the registration is not from the governmental authority of the country in which the respondent is operating. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its PRUDENTIAL mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <prudentialbrasil.com> is confusingly similar to Complainant’s mark because it merely appends the geographically descriptive term “brasil” to the fully incorporated PRUDENTIAL mark and adds the gTLD “.com.” Such alterations have not been considered distinguishing features. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). As such, the Panel may choose to hold that the <prudentialbrasil.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant asserts Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its PRUDENTIAL mark in any fashion, and Respondent is not commonly known by the disputed domain name. WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Similarly, lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that the WHOIS information for the domain name in question lists “HENRIQUE BRYAN SOUZA” as the registrant. See Compl., at Attached Ex. D. Thus, the Panel finds that Respondent is not commonly known by <prudentialbrasil.com> per Policy ¶ 4(c)(ii).
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent was using Complainant’s marks on the resolving website to pass itself off as Complainant for the purpose of stealing users’ personal information. Complainant has submitted screenshots of Respondent’s website which displays the PRUDENTIAL mark and a color scheme similar to Complainant’s website. A respondent who attempts to pass itself off as the complainant for the purpose of exploiting customer trust lacks the rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i) & (iii). See Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). Therefore, the Panel finds that Respondent does not have any rights or legitimate interests in the <prudentialbrasil.com> domain name.
Complainant asserts that Respondent has registered and is using the <prudentialbrasil.com> domain name in bad faith under Policy ¶ 4(b)(iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the PRUDENTIAL mark. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). Complainant contends that <prudentialbrasil.com> creates confusion as to the source, sponsorship, affiliation, or endorsement of its website for the purpose of exploiting customer trust and gaining users’ personal information. As such, the Panel concludes that Respondent registered the domain name in bad faith.
Next, Complainant contends that Respondents use of <prudentialbrasil.com> in furtherance of a phishing scheme is further evidence of Respondent’s bad faith. Previous Panels have concluded that respondent’s use of a confusingly similar domain name and resolving website that imitates complainant’s for the purpose of carrying out a phishing scheme constitutes bad faith under Policy ¶ 4(a)(iii). See Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The disputed domain name resolves to a webpage that appears strikingly similar to Complainant’s and prompts users to supply personal information. The Panel agrees that this constitutes a phishing attempt and is evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Furthermore, Complainant asserts that Respondent possessed actual knowledge of Complainant’s rights prior to registering the disputed domain name <prudentialbrasil.com>. The fame of the PRUDENTIAL mark and the fact that Respondent imitated Complainant’s website support Complainant’s argument. Panels hold that a respondent’s actual knowledge of a complainant’s mark at the time of registration is sufficient to establish bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name"). Therefore, the Panel holds that Respondent acted in bad faith under Policy ¶ 4(a)(iii) when he registered the domain name <prudentialbrasil.com>.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prudentialbrasil.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: April 3, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page