The Prudential Insurance Company of America v. IntesaSanpaolo S.p.A
Claim Number: FA2103001935815
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Rebecca R. McCurry of Pirkey Barber PLLC, Texas, USA. Respondent is IntesaSanpaolo S.p.A (“Respondent”), Unknown.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pgim.group>, registered with Eranet International Limited.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2021; the Forum received payment on March 8, 2021.
On March 10, 2021, Eranet International Limited confirmed by e-mail to the Forum that the <pgim.group> domain name is registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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 March 11, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 31, 2021 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@pgim.group. Also on March 11, 2021, 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 April 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 is one of the world’s leading financial services companies, offering a wide range of financial, retirement planning, and insurance services, among others. PGIM is the global investment management business of Complainant. Complainant has rights in the trademark PGIM through its use in commerce since 2016 and its registration of the mark with the United States Patent and Trademark Office (“USPTO”) in 2017. Respondent’s <pgim.group> domain name, registered on February 16, 2021, is identical to Complainant’s PGIM mark as it incorporates Complainant’s PGIM Mark in its entirety and merely adds the gTLD “.group”.
Respondent lacks rights or legitimate interests in the <pgim.group> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or otherwise permitted Respondent to use its PGIM mark. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services as Respondent uses the disputed domain name to fraudulently impersonate Complainant, copy elements of Complainant’s own website, and send fraudulent emails to job seekers, offering the victims jobs at PGIM that do not exist.
Respondent registered and uses the <pgim.group> domain name in bad faith. Respondent uses the disputed domain name to fraudulently impersonate Complainant and defraud potential job seekers. Furthermore, Respondent had actual knowledge of Complainant’s rights to the PGIM mark prior to registering the disputed domain name as evidenced by Respondent’s attempts to impersonate Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(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:
(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 and evidence 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 and supported 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”).
Complainant asserts rights in the PGIM mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant has submitted copies of two of its USPTO registration certificates, the Panel finds that it has demonstrated rights in the PGIM mark per Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <pgim.group> domain name is identical to Complainant’s PGIM mark as it incorporates the mark in its entirety and merely adds the gTLD “.group”. Adding a gTLD to a mark typically fails to sufficiently distinguish a disputed domain name from the mark per Policy ¶ 4(a)(i). See Bittrex, Inc. v. HOUSNTA BENSLEM, FA 1760232 (Forum Jan. 3, 2018) (“[S]ince the disputed domain name differs from the trademark only by the addition of the gTLD “.cam” the Panel finds the domain name to be legally identical to the trademark.”). As the second level of the disputed domain name copies the PGIM mark exactly and the only addition is the “.group” gTLD, the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the <pgim.group> domain name as Respondent is not commonly known by the domain name at issue, and Complainant has not licensed or otherwise permitted Respondent to use its well-known PGIM Mark or any other mark owned by Complainant. In considering this issue, relevant WHOIS information may inform a determination of whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “IntesaSanpaolo S.p.A,”[i] and Complainant argues there is no other evidence to suggest that Respondent was known by or authorized to use the PGIM mark. Therefore, the Panel finds no evidence upon which to conclude that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <pgim.group> domain name in connection with a bona fide offering of goods or services or that it makes a legitimate noncommercial or fair use thereof as Respondent uses the disputed domain name to fraudulently impersonate Complainant. Using a confusingly similar domain name to pass oneself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass itself off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant claims that Respondent uses the disputed domain name to send fraudulent emails to potential job seekers offering the victims jobs with Complainant that do not exist in an attempt at gathering personal information from such victims. Copies of such emails and related text messages have been submitted into evidence. Complainant also provides screenshots of Respondent’s resolving website and highlights that the site fraudulently impersonates Complainant by prominently featuring Complainant’s PGIM marks, its well-known Rock of Gibraltar graphic logo, and a significant amount of content that has been copied from Complainant’s own websites at <pgim.com> and <prudential.com> (images from these sites are also provided in a side-by-side comparison with Respondent’s site). Respondent has not filed a Response nor made any other submission in this case. As Complainant has made out a prima facie case that has not been rebutted by Respondent, upon a preponderance of the evidence before it the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent registered the <pgim.group> domain name with actual knowledge of Complainant’s rights in the PGIM mark based on Respondent’s attempts to impersonate and pass itself off as Complainant. Attempting to pass oneself off as a complainant can demonstrate actual knowledge of a complainant’s rights to a mark and show bad faith. See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”) As noted above, Complainant provides screenshots of emails using the disputed domain name, as well as related text messages, in which Respondent attempts to pass itself off as Complainant and entice potential job seekers to divulge personal information. In light of this evidence the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant and its PGIM mark and in bad faith per Policy ¶ 4(a)(iii).
Complainant also contends that Respondent registered and uses the <pgim.group> domain name in bad faith as Respondent uses the disputed domain name to fraudulently impersonate and pass itself off as Complainant. Using a confusingly similar domain to pass oneself off as a complainant can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). The evidence in this case shows that Respondent sent emails and text messages in which it attempts to pass itself off as Complainant to potential job seekers and collect their personal information. Respondent also resolved the disputed domain name to a website that copies Complainant’s PGIM mark, its logo, and certain content from Complainant’s own websites. Respondent has not participated in this case to explain its actions and so, based upon the available evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business, per Policy ¶ 4(b)(iii), and by seeking commercial gain through confusion with Complainant’s PGIM mark, per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pgim.group> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 6, 2021
[i] Although not addressed by the Complainant, the Panel notes that Intesa Sanpaolo S.p.A. is the name of a well-known banking group based in Italy and so the Panel concludes that this is not, in fact, the name of the Respondent in this case and that the actual Registrant of the disputed domain name has used the name Intesa Sanpaolo S.p.A. as a false alias.
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