The Prudential Insurance Company of America v. Jacob Taiwo Awolusi
Claim Number: FA1910001865205
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Wendy C. Larson, Texas, USA. Respondent is Jacob Taiwo Awolusi (“Respondent”), Benin.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <prudentialinvests.com>, registered with OVH sas.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 3, 2019; the Forum received payment on October 3, 2019.
On October 4, 2019, OVH sas confirmed by e-mail to the Forum that the <prudentialinvests.com> domain name is registered with OVH sas and that Respondent is the current registrant of the name. OVH sas has verified that Respondent is bound by the OVH sas 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 October 8, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 28, 2019 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 also to the attention of postmaster@prudentialinvests.com. Further, on October 8, 2019, 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 October 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the world’s leading financial services companies.
Complainant holds a registration for the PRUDENTIAL service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,229,716, registered April 17, 2007, renewed as of May 26, 2017.
Respondent registered the domain name <prudentialinvests.com> on January 8, 2019.
The domain name is confusingly similar to Complainant’s PRUDENTIAL mark.
Respondent is not licensed or otherwise permitted to use Complainant’s PRUDENTIAL mark.
Respondent has not been commonly known by the domain name.
Respondent is not using the domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use.
Rather, Respondent uses the domain name to resolve to a web site at which it falsely purports to offer for sale products and services that, if they were genuine, would compete with Complainant’s business.
The same web site features a “contact us” page whereby consumers are invited to enter their personal contact information.
Respondent uses the domain name thus to facilitate a scheme by which it seeks to acquire and exploit the confidential personal information of unsuspecting Internet users for its commercial gain.
Respondent does not have either rights to or legitimate interests in the domain name.
Respondent failed to respond to Complainant’s cease and desist letter.
Respondent has registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). But see eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [...] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights to the PRUDENTIAL service mark sufficient for purposes of Policy ¶4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for its mark sufficiently demonstrated its rights in that mark under Policy ¶4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Benin). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <prudentialinvests.com> domain name is confusingly similar to Complainant’s PRUDENTIAL service mark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “invests,” which describes an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”). These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Microsoft Corp. v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (determining that confusing similarity existed where a contested domain name contained a UDRP complainant’s entire mark and differed only by the addition of a generic phrase and a gTLD, the differences between them being insufficient to distinguish one from the other for purposes of the Policy). See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (finding that affixing a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶4(a)(i) analysis). This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the disputed <prudentialinvests.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <prudentialinvests.com> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the PRUDENTIAL mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Jacob Taiwo Awolusi,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy ¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <prudentialinvests.com> domain name to resolve to a web site at which it purports to offer for sale products and services that, if they were genuine, would compete with Complainant’s business, and that the same web site features a “contact us” page whereby consumers are invited to enter their personal contact information, and, further, that Respondent uses the domain name thus to facilitate a scheme by which it seeks to exploit the personal information of Internet users for its commercial gain. This use is neither a bona fide offering of goods or services by means of the domain name under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum August 6, 2018) (finding, under Policy ¶4(c)(i) and (iii), that a respondent lacked rights to and legitimate interests in a contested domain name where it used the domain name to resolve to a website mimicking a UDRP complainant’s site that encouraged Internet users to enter their login information so that that respondent might gain access to their cryptocurrency accounts).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶4(a)(ii).
We are persuaded by the evidence that, as alleged in the Complaint, Respondent uses the <prudentialinvests.com> domain name to facilitate a fraudulent scheme by which it seeks to prosper from the exploitation of Internet users’ sensitive personal information. This stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1625750 (Forum July 17, 2015):
Respondent uses the … domain to engage in [a species of Internet fraud commonly known as] phishing, which means Respondent registered and uses the domain name in bad faith under Policy¶4(a)(iii).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the PRUDENTIAL mark when Respondent registered the contested domain name. This further illustrates Respondent’s bad faith in registering the domain name. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [of a UDRP complainant’s rights in a mark from which a challenged domain name was derived] through the name used for the domain and the use made of it.
See also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (the panel there finding bad faith registration where a respondent knew of a UDRP complainant's rights in a mark incorporated in a confusingly similar domain name when it registered that domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy¶4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <prudentialinvests.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 31, 2019
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