National Arbitration Forum

 

DECISION

 

The Prudential Insurance Company of America v. Sheri Jones

Claim Number: FA0510000584625

 

PARTIES

Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Sue J Nam, of The Prudential Insurance Company of America, 751 Broad Street, 21st Floor, Newark, NJ 07102.  Respondent is Sheri Jones (“Respondent”), 248 West Main Street, Hamilton, MT 59840.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prudentialmontana.com>, registered with Network Solutions, Inc.

 

PANEL

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.

 

Hugues G. Richard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 31, 2005.

 

On October 25, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <prudentialmontana.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 November 4, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 28, 2005 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@prudentialmontana.com by e-mail.

 

A timely Response was received and determined to be complete on November 28, 2005.

 

Complainant submitted a timely Additional Submission on November 29, 2005.

 

On December 5, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hugues G. Richard as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant submits that:

 

-         it owns the PRUDENTIAL mark for a broad range of goods and services for insurance, security, investment, financial, and real estate services;

-         its trademarks are registered in over 50 countries, including the United States and that most of these U.S. registrations are incontestable pursuant to 15 U.S.C. Sec. 1065;

-         Prudential has achieved a tremendous amount of goodwill as a result of its long and continuous use of its well-known PRUDENTIAL mark and as a result of the foregoing, consumers and the trade have come to associate the PRUDENTIAL mark exclusively with Prudential and its affiliated companies;

-         Respondent is not affiliated with Prudential, and has not been licensed or otherwise authorized to use the PRUDENTIAL name and mark.

 

With respect to the first criterion of the Policy, i.e. the identical or confusing similarity between Complainant’s trademark and Respondent’s domain name, Complainant contends that the Domain Name directly incorporates Prudential’s PRUDENTIAL mark in conjunction with the generic geographic term “montana.”  The addition a geographic term does not render the domain name distinguishable from Prudential’s mark.

 

Complainant further contends that the second element of the ICANN test i.e. that Respondent has no rights or legitimate interest is also met because Respondent is not commonly known by the domain name and is not a licensee of the PRUDENTIAL mark or in anyway authorized to use the PRUDENTIAL mark.

 

Finally, complainant submits that the domain name is being used in bad faith given the general fame of the PRUDENTIAL mark, the explicit reference to Prudential in Respondent’s website and the direct competition between the parties in the same real estate market are elements that were known to Respondent and yet it further uses Prudential’s mark to misdirect internet users to its website despite the lack of its affiliation or relationship with Prudential. It adds that the disclaimer on Respondent’s site in no way justifies or excuses an otherwise improper use of an infringing domain name.

 

B. Respondent

 

Respondent submits that:

 

-         it , was affiliated with Complainant as Prudential Ranch & Land REALTORS from June 24, 1995 to June 24, 2005;

-         when Respondent was affiliated with Complainant, it was the fastest growing Prudential office in the State of Montana and doubled the amount of revenue it produced in a 3 year period.  Respondent is now affiliated with Greater Montanan GMAC Real Estate;

-         the domain name <prudentialmontana.com> was registered October 19, 1999, by the previous owners of  Respondent’s business;

-         the website for the domain <prudentialmontana.com> was created and made available on line by Respondent in December 2000.  The website was reviewed and approved after minor design changes to the site by Complainant; 

-         the domain name has been trademarked by Respondent.

 

Respondent contends that Complainant has no such mark (PRUDENTIAL MONTANA) and has produced no evidence that the domain name in dispute is even in a form similar to that used by Complainant.  Moreover, the domain name in dispute does not say anything about real estate or any other line of business which Complainant conducts.  Complainant also advised Respondent in the Fall of 2004 that the domain name did not meet Complainant’s identity standards for domain names, essentially conceding that there was nothing confusing about the domain name as it related to Complainant.  Finally, Complainant has not provided any evidence of actual confusion caused by Respondent’s use of this domain name.

 

Respondent further submits that it has rights or legitimate interests in the domain name since Respondent’s customers have come to associate the domain name with Respondent. In addition, the only party that has provided any evidence of a right or interest in the domain name is Respondent because its predecessor registered this domain name in 1999—over six years ago and Respondent trademarked the domain name.

 

Finally, Respondent contends that Complainant has failed to demonstrate bad faith since Respondent has only used the domain name to ensure that the customer goodwill it has built up over at least ten years is not destroyed. The domain name is not being used as a ruse to create the impression that Respondent is doing business as an entity of Complainant’s.  In fact, Respondent’s website clearly states that Respondent is not doing business under this name.  Respondent is merely using the domain name it registered years ago to redirect clients of Respondent to the website for the broker with whom Respondent is currently affiliated. Thus, Respondent is using the domain name without intent to mislead consumers or to tarnish the reputation of Complainant.

 

C. Additional Submissions

 

In addition to its complaint, Complainant submitted that Respondent is no longer affiliated with Prudential and that it is using the domain name to redirect people to a website promoting a competing real estate business.  Thus, according to Complainant, there can be no question that Respondent has legitimate rights to the domain name since it is well-established that a licensee retains no rights to a mark once the license is terminated.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove cumulatively 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 asserts the disputed domain name integrally incorporates its registered trademark PRUDENTIAL, the only difference being the addition of the geographic term Montana.

 

Respondent denies the allegation that the domain names in dispute are identical or confusingly similar to the Complainant’s trade mark since Complainant does not have a PRUDENTIAL MONTANA trademark. Furthermore, it adds that “Complainant advised Respondent that it would have to release the domain name, <prudentialmontana.com> because it did not satisfy Complainant’s identity standards.  In other words, Complainant essentially released any proprietary claim it had in the domain name that is in dispute here.”

 

The Panel finds that the addition of the top-level domain “.com” is irrelevant in determining whether the <prudentialmontana.com> domain name is confusingly similar to Complainant’s marks.  In Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000), the Panel decided that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

 

Furthermore, in VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000), the Panel found confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark. Also in CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000), a similar finding was adopted by the Panel in that the domain name <cmgiasia.com> was confusingly similar to the complainant’s CMGI mark.

 

In the present case, the Panel agrees that the mere addition of the word "montana" at the end of the domain name is not sufficient to distinguish it from Complainant’s trademark. This is consistent with the abovementioned case law and the Panel’s decision in AT&T Corp v. Worldclass Media.com, D2000-0553 (WIPO Jul. 28, 2000), in relation to the role of geographic descriptors.

 

For these reasons, the Panel finds that the disputed domain name <prudentialmontana.com> is confusingly similar to Complainant’s mark PRUDENTIAL.

 

Rights or Legitimate Interests

 

First, Complainant never mentioned the parties’ affiliation in its Complaint.  It was brought to the Panel’s attention by Respondent’s response and was not denied by Complainant in its additional submissions; it stated however, that the affiliation was terminated.  Hence, the exact nature of the parties past relationship and the scope of Respondent’s rights in the domain name at the time of registration are unknown to the Panel.  However, the words “affiliation” or “affiliated” are used by Respondent throughout its response.  The Panel interprets their use as qualifying the nature of the parties’ relationship as one of a licensor-licensee.

 

The Panel accepts as true Respondent’s allegation that the parties were affiliated from June 24, 1995 to June 24, 2005.  The Panel also believes that Respondent had rights and legitimate interest in the disputed domain name during the term of the affiliation agreement.  However, that term having come to an end, Respondent can no longer use Complainant’s mark albeit Respondent had registered the domain name with Complainant’s consent.  See Mariah Boats, Inc. v. Shoreline Marina, LLC, FA 94392 (Nat. Arb. Forum May 5, 2000); Express Servs., Inc. v. Personnel Plus, FA 112624 (Nat. Arb. Forum June 20, 2002).

 

Respondent alleges that “Respondent trademarked the domain name and built up her reputation and goodwill over the years by using it” in an attempt to demonstrate to the Panel that it is commonly known by the domain name. However, it is of the essence of a licensing agreement that the use by the licensee of the trademark or the trade name benefits the owner of said trademark or trade name.  Hence, Respondent has no goodwill of its own to protect resulting from the use of the trademark under licence.

 

Furthermore, Respondent being no longer authorized to use the PRUDENTIAL mark, its use since June 24, 2005 cannot constitute a bona fide offering of goods or services given that it is trading on the fame of Complainant. See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000); State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept 27, 2000) (finding that "unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”).

 

For the reasons mentioned above, the Panel finds that Complainant has succeeded in demonstrating that Respondent does not have rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

 

In Royal Caribbean Cruises Ltd. v. Urbanczyk, FA490111 (Nat. Arb. Forum July 29, 2005), the panelist held the following:

 

It is most of the time quite difficult, if not impossible, to actually show bad faith, at the time of registration and use, with concrete evidence. While bad faith cannot be presumed, once Complainant has presented some evidence pointing in that direction, it is then incumbent upon Respondent to either respond or explain why its conduct should not be assimilated to bad faith. The Panel’s understanding of the Policy is that although the initial burden to prove Respondent’s bad faith in the registration and the use of the disputed domain name relies squarely on the shoulders of Complainant, such obligation is only to make out a prima facie case, and once it has done so, it is then incumbent upon Respondent to either justify or explain its business conduct (if not to demonstrate the contrary).

 

The Panel believes that the Policy has established two prongs to the bad faith criterion. The first prong requires Complainant to demonstrate Respondent’s bad faith registration, and the second prong necessitates a proof of use in bad faith.  For Complainant to succeed in establishing bad faith it must have ascertained both prongs with success.  See Green Tyre Co. v. Shannon Group, D2005-0877 (WIPO Oct. 5, 2005); Telaxis Commc’ns Corp. v. Minkle, D2000-0005 (WIPO Mar. 7, 2000) (Respondent registered the disputed domain name in good faith but subsequently began to use it in bad faith.  The Panel held that because the registration was made in good faith the requirement of Paragraph 4(a)(iii) was not met).

 

In the case at hand, the Panel finds that Complainant has not satisfactorily met its burden as to bad faith at least as far as registration is concerned.  Indeed, Respondent having shown that at the time of the registration, it was a licensee of Complainant; the latter is therefore, prima facie, precluded from claiming that Respondent’s registration of the disputed domain name constitutes bad faith, unless he can show circumstances that warrant it.  The Panel relies on Thread.com, LLC v. Poploff, D2000-1470 (WIPO Feb. 1, 2001), wherein the Panel found that Respondent did not register the disputed domain name in bad faith since it “registered the Domain Name with the full consent and knowledge of Complainant” and therefore “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”.  See also Vanden Bos v. Proxyone Domain Trust, FA 170632 (Nat. Arb. Forum Sept. 10, 2003) (“Complainant knew from 1997 that Respondent used and promoted the <fusac.com> domain name in the United States and Complainant cannot show bad faith registration because Complainant approved Respondent's registration of the mark in a domain name, acquiesced to it and received the benefits from it.”).

 

As the burden rests squarely on Complainant’s shoulders, the Panel is of the view that Complainant could not disregard, once alleged and proved by Respondent, the affiliation of the parties from June 24, 1995 to June 24, 2005; such inaction is fatal to Complainant’s burden on the issue of bad faith.  Indeed, Respondent’s allegation “The website for the domain www.PrudentialMontana.com was created and made available on line by Respondent in December 2000.  The website was reviewed and approved after minor design changes to the site by Complainant.  The domain name has been trademarked by Respondent”  was never contradicted and no attempts were made by Complainant to even address it.  For reasons unexplained, Complainant chose to ignore it. The uncontested evidence of Respondent is that Complainant has approved Respondent’s registration of the domain name <prudentialmontana.com> and hence, the latter could not have registered it in bad faith.

 

For all of these reasons, the Panel finds that Complainant has failed to meet its burden, on a balance of probabilities, that Respondent has registered and used the disputed domain names <prudentialmontana.com> in bad faith.

 

It is noteworthy that the present case involves a dispute between a licensor, the Complainant, and its former licensee, the Respondent concerning a domain name. In this respect, it is important to keep in mind that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting and that it cannot be used to litigate all disputes involving domain names. Hence, this decision is not in any way to be interpreted detrimental to Complainant if it decides to pursue the unresolved contractual issues before a relevant national court.

 

DECISION

Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

Hugues G. Richard, Panelist
Dated: December 19, 2005