The Prudential Insurance Company of America v. Chris Nelson
Claim Number: FA2306002049196
Complainant is The Prudential Insurance Company of America (“Complainant”), USA, represented by Brandon M. Ress, USA. Respondent is Chris Nelson (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pgimdcsolutions.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on June 15, 2023; Forum received payment on June 15, 2023.
On June 16, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <pgimdcsolutions.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 June 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2023 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@pgimdcsolutions.com. Also on June 19, 2023, 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.
A timely Response was received and determined to be complete on June 26, 2023.
Complainant submitted an Additional Submission on June 27, 2023.
On June 29, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
On July 2, 2023, the Panel issued a procedural order to Respondent to the effect that if Respondent wants to file an Additional Submission in the context of Complainant’s Additional Submission, Respondent may file it within 5 calendar days from the date of the notification. Respondent did not file an Additional Submission by the due date.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant, The Prudential Insurance Company of America, offers a wide range of financial, retirement planning, and insurance services, among others. Complainant has rights in the PGIM mark through its registration of the mark with multiple trademark organizations including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 5,214,203, registered on May 30, 2017). The disputed domain name is confusingly similar to Complainant’s PGIM mark as it incorporates the mark while adding the descriptive or generic term “dc solutions” and the “.com” generic top-level domain (“gTLD”).
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the PGIM mark, nor has Complainant authorized or licensed Respondent to use its mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts pay-per-click links.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent disrupts Complainant’s business and attracts users for commercial gain while hosting pay-per-click links. Additionally, Respondent uses a privacy service to hide its identity. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the PGIM mark.
B. Respondent
i) The disputed domain name was registered on September 20, 2021.
ii) On June 19, 2023, Respondent submitted a “Withdrawal Request” agreeing to release the domain name if the complaint is withdrawn. On June 24, 2023, Respondent submitted a Response in this proceeding.
iii) Respondent has the right to purchase available domain name and has done so in this case.
C. Additional Submissions
Complainant submitted an Additional Submission on June 27, 2023 by way of rebutting Respondent’s arguments. The Panel gave Respondent the opportunity to submit an Additional Submission in the context of Complainant’s Additional Submission. Respondent did not submit an Additional Submission by the due date. The Panel determines to accept and consider Complainant’s unsolicited Additional Submission.
Complainant’s Additional Submission
Respondent's arguments that they lacked bad faith are inapposite. First, Respondent is responsible for the content of its website, which contained pay-per-click advertisements. See McGuireWoods LLP v. Jerry McGuire / McGuire Construction Inc., FA2030144 (Forum Mar. 5, 2023). "Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith."
Moreover, the circumstances here are sufficient for a finding of bad faith through passive holding of the disputed domain name for almost two years. In particular: (i) Complainant's PGIM mark is widely known and was specifically targeted by Respondent; (ii) Respondent provided no evidence of any actual or contemplated good faith use of the disputed domain name; (iii) Respondent concealed its identity through a privacy service (and notably did not sign or otherwise identify themselves in their June 24, 2023 response); and (iv) there is no plausible legitimate use of the disputed domain name by Respondent.
1. The disputed domain name was registered on September 20, 2021.
2. Complainant has established rights in the PGIM mark through its registration of the mark with multiple trademark organizations including the USPTO (e.g., Reg. No. 5,214,203, registered on May 30, 2017).
3. The disputed domain name is resolved to a website hosting third parties’ links.
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.
Complainant asserts rights in the PGIM mark through its registration of the mark with multiple trademark organizations including the USPTO (e.g., Reg. No. 5,214,203, registered on May 30, 2017). Registration of a mark with multiple trademark organizations including the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Since Complainant has provided evidence of its trademark registration with multiple trademark organizations including the USPTO, the Panel finds Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant argues the disputed domain name <pgimdcsolutions.com> is confusingly similar to Complainant’s PGIM mark. Under Policy ¶ 4(a)(i), adding a descriptive or generic term and a “.com” gTLD is insufficient in differentiating from the mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). The disputed domain name incorporates the mark in its entirety while adding the descriptive or generic term “dc solutions” and the “.com” gTLD. Complainant also notes that PGIM DC Solutions is Complainant’s subsidiary company. The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s mark under 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), then the burden shifts to Respondent to show 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 argues Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its PGIM mark in the disputed domain name. Under Policy ¶ 4(c)(ii), where a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). 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 Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). The WHOIS information identifies Respondent as “Chris Nelson.” The Panel thus finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use because the disputed domain name’s resolving website hosts pay-per-click links. Under Policy ¶¶ 4(c)(i) and (iii), hosting pay-per-click links is not a bona fide offering of goods or services, nor any noncommercial or fair use. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides screenshots of the resolving webpage hosting third party links.
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name. Respondent contends that (i) he has the right to purchase available domain name and has done so in this case; and (ii) the resolving webpage is the default from the Registrar. The Panel finds that Respondent is responsible for the content of its website, which hosts third parties’ advertisements. Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that Respondent himself may not have directly profited, would constitute a bona fide offering of goods or services, or any noncommercial or fair use by himself. As the Panel finds that Respondent has failed to rebut the prima facie case against him, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues Respondent registered and uses the disputed domain name in bad faith by disrupting Complainant’s business and attracting users for commercial gain. Under Policy ¶ 4(b)(iii), hosting click-through links is a disruption of a complainant’s business and thus evidence of bad faith registration and use. See Independent Insurance Agents & Brokers of America, Inc. v. Liqian, FA1409001582252 (Forum Nov. 10, 2014) (concluding that because the complainant operated in the insurance business and the respondent was using the disputed domain name to display hyperlinks that ultimately promoted insurance companies and quote rates, the respondent was disrupting the complainant’s business and demonstrating bad faith registration and use of the domain name under Policy ¶ 4(b)(iii)). Additionally, attracting users for commercial gain and hosting pay-per-click links is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panel recalls that the disputed domain name’s resolving webpage hosts third parties’ links.
Respondent contends that he did not register the disputed domain name in bad faith because he is not using the disputed domain name and the resolving webpage is the default from the Registrar. However, the Panel finds that Respondent is responsible for the content of its website, which contains third party advertisements. Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent himself may not have directly profited, would by itself prevent a finding of bad faith.
Next, Complainant contends that the circumstances here are sufficient for a finding of bad faith through passive holding of the disputed domain name for almost two years. In particular: (i) Complainant's PGIM mark is widely known and was specifically targeted by Respondent; (ii) Respondent provided no evidence of any actual or contemplated good faith use of the disputed domain name; (iii) Respondent concealed its identity through a privacy service (and notably did not sign or otherwise identify themselves in their June 24, 2023 response); and (iv) there is no plausible legitimate use of the disputed domain name by Respondent.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.)
The particular circumstances of this case that the Panel has considered are:
i) Complainant 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. PGIM is the global investment management business of Complainant. PGIM is a top ten investment manager globally. Since at least as early as January 2016, Complainant has used the mark PGIM mark in connection with global investment management services. Complainant’s range of financial services include the provision of defined contribution (“DC”) retirement plans and solutions offered by one of PGIM’s subsidiaries PGIM DC Solutions LLC (“PGIM DC Solutions”). As such, Complainant’s mark ‘PGIM’ is considered as being a well-known and reputable trademark; and
ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by himself of the disputed domain name.
Taking into account all of the above, the Panel concludes that Respondent’s passive holding of the disputed domain name constitutes bad faith under Policy, paragraph 4(a)(iii) and that Respondent is using the disputed domain name in bad faith.
Complainant further argues that Respondent registered the disputed domain name with bad faith actual knowledge of Complainant’s rights in the PGIM mark because Respondent’s domain name fully incorporates Complainant’s subsidiary company name. Under Policy ¶ 4(a)(iii), actual knowledge is sufficient in demonstrating bad faith and may be established where a respondent fully incorporates complainant’s mark and hosts links related to its business. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the PGIM mark at the time of registering the disputed domain name, and finds that Respondent registered the disputed domain in 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 <pgimdcsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq, Panelist
Dated: July 10, 2023
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