URS FINAL DETERMINATION
The Prudential Insurance Company of America v. Terrance McQuilkin et al.
Claim Number: FA1505001618256
DOMAIN NAME
<rocksolid.financial>
PARTIES
| Complainant: The Prudential Insurance Company of America of Newark, NJ, United States of America | |
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Complainant Representative: Partridge & Garcia P.C.
Mark V.B. Partridge of Chicago, IL, United States of America
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| Respondent: Mark Jeftovic of Toronto, ON, USA | |
REGISTRIES and REGISTRARS
| Registries: Just Cover, LLC | |
| Registrars: Tucows Domains, Inc. |
EXAMINER
| 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 Examiner in this proceeding. | |
| Antonina Pakharenko-Anderson, as Examiner |
PROCEDURAL HISTORY
| Complainant Submitted: May 7, 2015 | |
| Commencement: May 8, 2015 | |
| Response Date: May 22, 2015 | |
| Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules"). |
RELIEF SOUGHT
| Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
| Clear and convincing evidence. |
FINDINGS and DISCUSSION
| Findings of Fact: Under URS 9.1. the evidences will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire records used by the Examiner to make a Determination. URS 8.2. reads that the burden of proof shall be clear and convincing evidences. Under URS 8.6. if the Examiner finds that all three standards provided for by URS 8.1. are satisfied by clear and convincing evidences and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favour of the Complainant. The Examiner reminds that the primary purpose of the URS is to provide for rapid suspension of domain names on trademark infringement cases in which there is no genuine contestable issue as to the infringement and abuse that has taken place. The Complainant holds the valid trademark registration for the ROCK SOLID trademark (U.S. Registration No. 1,443,527), the mark was verified by the Trademark Clearinghouse and is in current use. The Complainant has been using the mark connection with financial and insurance services since at least as early as 1986. The Complainant’s official website locates at the URL address http://www.prudential.com/view/page/public where some limited use of the ROCK SOLID may be found, although the Complainant asserts that the ROCK SOLID marks are some of the most famous marks in the financial industry and sources of significant goodwill for the Complainant. The disputed domain name resolves to the parking page utilizing the standard parking page design without any PPC links published on it. The Complainant contends that the disputed domain name fully incorporates the registered trademark and the addition of the gTLD “.financial” directly identifies Complainant’s chief services used in connection with the ROCK SOLID mark, only heightening the potential for confusion. The Complainant contents that he has not authorized the Respondent to use its ROCK SOLID trademark. Furthermore, the Complainant contends that the Respondent’s use is not a legitimate noncommercial or fair use, and is not in connection with a bona fide offering of goods or services. The Complainant asserts that the disputed domain name is registered and used in bad faith as the domain name was registered in order to prevent the trademark holder from reflecting the mark in a corresponding domain name. The Respondent has alleged that the disputed domain name consists of a generic term and that the use is not targeting any trademark holder. The Respondent further contends that the domain name is not part of a wider pattern or series of abusive registrations and has been chosen to educate about some solutions how to build a banking business on a rock-solid foundation. The Respondent asserts that he does not gain anything from advertising. Additional submission: After the timely Response was filed, the counsel for the Respondent filed a response vie e-mail on May 25, 2015, i.e. two days before the decision in this case was due. The Rules do not permit supplementary filings as of right. Still, the Examiner has looked at the supplemental filing in this case to see if it should be admitted as it was served prior to issuance of the Determination in the case. The additional response does not appear to raise any new facts or argument that the Respondent who has been provided sufficient time to respond could not with reasonable diligence have included in the original Response. In those circumstances, the Examiner is not prepared to consider the supplemental filing. |
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URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The registered domain name < rocksolid.financial> fully incorporates the word mark ROCK SOLID for which the Complainant holds a valid national registration and that is in current use. TLD “.financial” is descriptive for the services in respect of which the Complainant’s mark is used. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity. Thus “.financial” is of no consequence here. Respectively, the Examiner finds that the domain names < rocksolid.financial> is identical to the Complainant’s ROCK SOLID mark under URS 1.2.6.1. (i). [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Complainant contends that the disputed domain name fully incorporates the registered trademark and the addition of the gTLD “.financial” directly identifies Complainant’s chief services used in connection with the ROCK SOLID mark, only heightening the potential for confusion. The Complainant contents that he has not authorized the Respondent to use its ROCK SOLID trademark. The Complainant asserts that the passive holding of a domain does not generate any rights or legitimate interest to a domain name. The Respondent has contended that the parking page is permissible since the disputed domain name consists of a generic term which constitutes a dictionary word and the use is not targeting any trademark holder. The Respondent contends that the domain name has been chosen to educate about some solutions how to build a banking business on a rock-solid foundation. However, according to the records of the case the domain is not used now. There is the consensus view that the mere registration of a domain name, even one that is comprised of the confirmed dictionary word or phrase may not of itself confers rights or legitimate interest in a domain name. Thus, the Examiner therefore concludes that the Respondent has no rights or legitimate interests in the domain names under URS 1.2.6.2.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Respondent URS 1.2.6.3. provides for a non-exclusive list of circumstances that demonstrate bad faith registration and use by the Registrant. The Complainant asserts that the disputed domain name is registered and used in bad faith as the domain name was registered in order to prevent the trademark holder from reflecting the mark in a corresponding domain name. The records of the case do not contain any evidences supporting that the Respondent has registered multiple domain names which are similar to the ROCK SOLID mark which may constitute a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name. Furthermore, there is a consensus view that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant, unless the domain name is used with bad faith intent to profit from the goodwill of a trademark belonging to someone else. At the same time, the Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that there is the case of the bad faith use. However, the Complainant’s allegations of bad faith registration are without sufficient facts to support such allegation. The circumstances of the case do not give the grounds for such finding either. Therefore, the Examiner finds that the Complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish circumstances that demonstrate bad faith registration and use by the Registrant under URS 1.2.6.3. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the Complainant
has NOT demonstrated all three elements of the URS by a standard of clear and convincing
evidence; the Examiner hereby Orders the following domain name(s) be returned to
the control of Respondent:
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Antonina Pakharenko-Anderson
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