The Prudential Insurance Company of America v. Forum LLC
Claim Number: FA0511000593316
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Maribel Figueredo, 751 Broad Street, 21st Floor, Newark, NJ 07102-3777. Respondent is Forum LLC (“Respondent”), PO Box 2331, Roseau, Roseau, 00152, DM.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com>, registered with Fabulous.com Pty Ltd.
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.
Tyrus R. Atkinson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2005; the National Arbitration Forum received a hard copy of the Complaint on November 14, 2005.
On November 8, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 21, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 12, 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@prudentialmortgagecapital.com, postmaster@prudentialfinacial.com, and postmaster@prudentialinsurnace.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 15, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson 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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names are confusingly similar to Complainant’s PRUDENTIAL mark.
2. Respondent does not have any rights or legitimate interests in the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names.
3. Respondent registered and used the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Prudential Insurance Company of America, has used its PRUDENTIAL mark for over 130 years in connection with a wide-variety of insurance, securities, investment, financial and real estate services throughout the United States and the world.
Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PRUDENTIAL mark (Reg. No. 693,628 issued February 23, 1960).
Respondent registered the <prudentialmortgagecapital.com> domain name on October 27, 2004, the <prudentialfinacial.com> on August 25, 2004, and the <prudentialinsurnace.com> domain name on August 22, 2004. Respondent’s domain names resolve to websites that feature products and services that compete with Complainant’s business.
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 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.”).
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 of the mark with the USPTO and through continuous use of
the mark in commerce. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names are confusingly similar to Complainant’s PRUDENTIAL mark because Respondent’s domain names incorporate Complainant’s mark in its entirety and add the terms “mortgage,” “capital,” the misspelled terms “finacial,” and “insurasnce,” and the generic top-level domain “.com.” Furthermore, the terms describe Complainant’s business. The Panel finds that such minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark); see also 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent is using the <prudentialmortgagecapital.com>,
<prudentialfinacial.com>, and <prudentialinsurnace.com> domain
names to redirect Internet users to websites that feature products and services
that compete with Complainant’s business.
Respondent’s use of domain names that are confusingly similar to
Complainant’s PRUDENTIAL mark to redirect Internet users interested in
Complainant’s products and services to websites that offer similar goods and
services in competition with Complainant’s business is not a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Or. State Bar v. A Special Day, Inc., FA 99657
(Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and
sale of law-related books under Complainant's name is not a bona fide offering
of goods and services because Respondent is using a mark confusingly similar to
the Complainant's to sell competing goods.”).
Moreover, Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, or <prudentialinsurnace.com> domain name. Thus, Respondent has not established rights or legitimate interests in the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests 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 Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names, which are confusingly similar to Complainant’s PRUDENTIAL mark, to redirect Internet users to Respondent’s commercial websites that feature goods and services that compete with Complainant’s business. The Panel finds that such use constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees for diverting Internet users to competing websites. Because Respondent’s domain names are confusingly similar to Complainant’s PRUDENTIAL mark, Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting websites. Thus, Respondent’s use of the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant’s mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prudentialmortgagecapital.com>, <prudentialfinacial.com>, and <prudentialinsurnace.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: December 27, 2005
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