The Prudential Insurance Company of America v. domains Ventures
Claim Number: FA0606000741637
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Sue J. Nam, 751 Broad Street, 21st Floor, Mail Stop NJ-01-21-05, Newark, NJ 07102-3777. Respondent is domains Ventures (“Respondent”), 136 Xiaoxue Road, Xiamen, Fujian, II 361001 CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <prudental.com>, registered with Moniker Online Services, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 28, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2006.
On July 7, 2006, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <prudental.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 July 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 1, 2006 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@prudental.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 7, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <prudental.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark.
2. Respondent does not have any rights or legitimate interests in the <prudental.com> domain name.
3. Respondent registered and used the <prudental.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Prudential Insurance Company of America, is
a well-known and leading provider of various financial services, including
insurance, securities, investment, and real estate services. Prudential operates throughout the world,
and holds numerous trademark registrations for its PRUDENTIAL mark, including
with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 693,628
issued February 23, 1960).
Additionally, Complainant operates a website at
<prudential.com>.
Respondent registered the <prudental.com> domain name on April 10, 2002. Respondent’s disputed domain name resolves to a website that displays links for third-party websites, some of which are in direct competition 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."
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.
The Panel finds that Complainant’s trademark registrations internationally and with the USPTO sufficiently establishes Complainant’s rights in the PRUDENTIAL mark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Respondent’s <prudental.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark as it is a misspelling of the mark. In Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002), the panel found that the domain name <compq.com> was confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name did not significantly change the overall impression of the mark. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar). Accordingly, as Respondent’s disputed domain name simply omits an “i” from Complainant’s mark, the Panel finds that the <prudental.com> domain name is confusingly similar under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant has alleged that Respondent lacks rights or legitimate interests in the <prudental.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s PRUDENTIAL mark and that Respondent is not associated with Complainant in any way. Furthermore, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the <prudental.com> domain name. As such, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(a)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The evidence on record shows that Respondent is using the disputed domain name to divert Internet users attempting to locate Complainant’s website and services to Respondent’s own website where Respondent displays links to third-party websites, some of which are in direct competition with Complainant. In Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), the panel found that the respondent’s demonstrated intent to divert Internet users seeking the complainant's website to a website of the respondent and for the respondent's benefit was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name). The Panel thus finds that Respondent’s use of the <prudental.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the <prudental.com> domain name that is a
misspelling of Complainant’s mark.
Respondent is using the disputed domain name to redirect Internet users
to a website that displays links that resolve to various third-party websites,
some of which are in direct competition with Complainant. In EBAY,
Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000), the panel found that the
respondent registered and used the domain name <eebay.com> in bad faith
as the respondent was using the disputed domain name to promote competing
auction sites. See Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)). Accordingly, the Panel finds that Respondent’s use of the
disputed domain name constitutes disruption and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii).
Based on the uncontested evidence presented by Complainant,
the Panel finds that Respondent has registered and is using the <prudental.com>
domain name to benefit commercially from the good-will associated with
Complainant’s PRUDENTIAL mark by displaying links to various websites, some of
which compete with Complainant. The
Panel finds that Respondent is using the disputed domain name to commercial
benefit via receiving click-through fees for the operation of its website. The Panel additionally finds that the use of
Complainant’s mark in the <prudental.com> domain name is capable
of creating confusion as to Complainant’s sponsorship and association with the
disputed domain name and corresponding website. The Panel therefore concludes that Respondent’s use of the
disputed domain name constitutes bad faith registration and use under Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Identigene,
Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
The Panel thus finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <prudental.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 18, 2006
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