The Prudential Insurance Company of America v. daniel clark
Claim Number: FA2005001897518
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Danae T. Robinson of Pirkey Barber PLLC, Texas, USA. Respondent is daniel clark (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pgiminvest.com> and <pruiporecovery.com>, registered with Hosting Concepts B.V. d/b/a Openprovider.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 22, 2020; the Forum received payment on May 22, 2020.
On May 27, 2020, Hosting Concepts B.V. d/b/a Openprovider confirmed by e-mail to the Forum that the <pgiminvest.com> and <pruiporecovery.com> domain names are registered with Hosting Concepts B.V. d/b/a Openprovider and that Respondent is the current registrant of the names. Hosting Concepts B.V. d/b/a Openprovider has verified that Respondent is bound by the Hosting Concepts B.V. d/b/a Openprovider 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 May 29, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 2020 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 to postmaster@pgiminvest.com, postmaster@pruiporecovery.com. Also on May 29, 2020, 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 June 23, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is one of the world’s leading financial services companies, offering a wide range of financial, retirement planning, and insurance services, among others. Complainant has operations in the United States, Asia, Europe and Latin America. Complainant asserts rights in the PGIM and PRU marks through its registration of the marks in the United States in, respectively, 2016 and 2002.
Complainant alleges that the disputed domain names are identical or confusingly similar to its marks, as the domain names incorporate Complainant’s PGIM or PRU marks in their entirety and merely tack on the generic terms “invest” or “IPO recovery” along with the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names nor has Complainant licensed Respondent to use its marks. Additionally, Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The UK Financial Conduct Authority (“FCA”), the regulator of the conduct of financial services in the UK, has identified the disputed domain names as being used in connection with a fraudulent scheme that involved impersonating Complainant. Indeed, one domain name mirrors Complainant’s legitimate web site (specifically, the source code for <pgiminvest.com> revealed that “HTTrack Website Copier” was being used to mirror Complainant’s website at <www.pgim.com>); the other domain name was used to impersonate Complainant in emails in furtherance of a fraudulent scheme. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and used the disputed domain names in bad faith. Respondent disrupts Complainant’s business through a fraudulent email scheme. Also, Respondent’s use of Complainant’s mark signals an intent to deceive and create confusion to attract Internet users for financial gain. Additionally, Respondent’s failure to respond to Complainant’s demand letter signals bad faith. Finally, Respondent had knowledge of Complainant’s rights in its marks at the time of registration. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the PGIM and PRU marks and uses them to market financial and insurance services.
Complainant’s rights in its marks date back to, respectively, 2016 and 2002.
The disputed domain names were registered in 2019.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names were used to impersonate Complainant in furtherance of a fraudulent scheme. The resolving website for one of the disputed domain names mirrors Complainant’s legitimate website. The other disputed domain name was used to send fraudulent emails impersonating complainant; the emails displayed Complainant’s mark and logo.
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:
(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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also 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”).
The disputed domain names incorporate Complainant’s marks in their entirety, merely adding the terms “invest” and “IPO recovery” along with the “.com” gTLD. The addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names: where a response is lacking, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, the WHOIS information for the disputed domain names lists the registrant as “DANIEL CLARK”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The disputed domain names were used to impersonate Complainant in furtherance of a fraudulent scheme. Specifically, the <pgiminvest.com> domain name was used to impersonate Complainant in emails seeking financial contributions from Complainant’s clients. The <pruiporecovery.com> domain name was used to mirror Complainant’s website to impersonate Complainant. Use of a disputed domain name in furtherance of a fraudulent scheme is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii); the same holds for mirroring a complainant’s website. See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be 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)); see also SOLTA MEDICAL, INC., A Division of Valeant Pharmaceuticals North America LLC v. Huy Nguyen, FA 1658583 (Forum Mar. 10, 2016) (finding that the use of HTTrack Website Copier to copy the complainant’s website was not a legitimate noncommercial or fair use). Thus the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent used the disputed domain names to impersonate Complainant in furtherance of a fraudulent scheme. Impersonating a complainant for commercial gain, in particular through email, may be evidence of bad faith disruption of business under Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)); see also Chevron Intellectual Property LLC v. Richard Bailey / Jacobs FA1411001588430 (Forum Dec. 9 2014) (“The Panel accepts that Respondent’s conduct in impersonating Complainant in furtherance of fraud encompasses the requisite element of competition envisioned by Policy ¶ 4(b)(iii), and finds this is evidence of Respondent’s bad faith use and registration.”); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Consequently, the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the fraudulent emails display Complainant’s mark and logo and the resolving website for one of the disputed domain names mirrors Complainant’s legitimate website. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pgiminvest.com> and <pruiporecovery.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 23, 2020
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