The Prudential Insurance Company of
America v. QuickNet Communications a/k/a Tim Bach
Claim
Number: FA0302000146242
Complainant is
The Prudential Insurance Company of America, Newark, NJ (“Complainant”).
Respondent is QuickNet Communications a/k/a Tim Bach, New London,
CT (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <prudentialmotors.com>, registered with Enom,
Inc.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 20, 2003; the Forum received a hard copy of the
Complaint on February 21, 2003.
On
February 24, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain
name <prudentialmotors.com> is registered with Enom, Inc. and that
Respondent is the current registrant of the name. Enom, Inc. has verified that
Respondent is bound by the Enom, Inc. registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 25, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@prudentialmotors.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 24, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, 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."
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 makes the following assertions:
1. Respondent’s <prudentialmotors.com>
domain name is confusingly similar to Complainant’s PRUDENTIAL mark.
2. Respondent does not have any rights or legitimate
interests in the <prudentialmotors.com> domain name.
3. Respondent registered and used the <prudentialmotors.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, The
Prudential Insurance Company of America, has used the PRUDENTIAL mark to denote
the wide variety of insurance, securities, investment, financial and real
estate services it has offered for over 125 years. Complainant has registered the valuable PRUDENTIAL trademark in
over 50 countries, including the United States. In the U.S. alone, Complainant owns over 100 trademark
registrations for the PRUDENTIAL mark and PRUDENTIAL combination marks. The earliest United States trademark
registration for the PRUDENTIAL mark, as provided in the Complaint, is February
23, 1960.
Complainant
conducts a significant amount of business on the Internet at numerous websites
that reach a worldwide audience. Some
of the websites that Complainant operates include the following: <prudential.com>,
<prudentialpreferred.com>, <prudentialsecurities.com>,
<prudential-bache.com>, <prudential.co.kr>,
<prudential.co.jp> and <prudentialbradesco.com.br>. All of these websites reflect Complainant’s
PRUDENTIAL mark, as the mark is an invaluable source identifier.
Complainant
annually spends millions of dollars advertising and promoting its services
offered under the PRUDENTIAL mark on its websites and through alternative
advertising and marketing. Due to
Complainant’s longstanding use of the PRUDENTIAL mark, consumers and those in
financial and insurance industries associate the PRUDENTIAL mark with
Complainant’s services and affiliated companies. Further, Complainant notes that the “PRUDENTIAL mark is recognized
by millions of people around the world as a symbol of financial strength,
quality, and trust.”
Respondent
registered the <prudentialmotors.com> domain name on June 30,
2002. Complainant learned of the domain
name registration by Respondent on or about July 23, 2002, and immediately sent
Respondent an e-mail at the address identified on the WHOIS registration
record, notifying Respondent that the domain name would be monitored for
improper use.
On February 13,
2003, Complainant learned that Respondent actively used the <prudentialmotors.com>
domain name to link to a pornographic website, specifically
<bignaturals.com>. Complainant
attempted to send an email to the same address it previously used for
correspondence, ordering Respondent to cease and desist, but the email was
returned as undeliverable. The <prudentialmotors.com>
domain name currently diverts Internet traffic to the adult website.
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."
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(e), 14(a) and 15(a) of the Rules and draw such
inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 has
established rights in the PRUDENTIAL mark through proof of substantial use in
the insurance and financial industry and trademark registration with the U.S.
Patent and Trademark Office. The <prudentialmotors.com>
domain name at issue incorporates the PRUDENTIAL mark with the addition of the
word “motors.” Taken together
“prudentialmotors,” the second level domain, has no apparent connection to
Complainant or the insurance and financial industry. Cf. Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business). The
domain name conjures up a relationship with the automotive industry, rather
than Complainant’s PRUDENTIAL services.
Cf. The Prudential Ins. Co. of Am.
v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) cited by Complainant and
holding that <prudentialonline.com> was sufficiently similar to the
PRUDENTIAL mark to cause public confusion.
See, also, Donald J. Trump and Trump Hotels &
Casino Resorts, Inc. v olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that
if Complainant is really making an initial interest confusion argument, it
would have to be suggesting that the public would be expecting that its
distinguished moniker and service mark TRUMP would be readily associated with
<porntumps.com>). The domain name
at issue does not suggest that the Complainant is the source, origin or sponsor
of Respondent’s website.
The Complainant
lacks any proof of actual confusion, which is required when a domain name has
such a tenuous relationship to the mark.
See Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat.
Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing
similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the
public would be confused between its NATIONSBANK mark and the disputed domain
name <nationsbanking.com>).
Complainant failed to allege any consumer confusion that would prove the
<prudentialmotors.com> domain name’s “confusingly similar”
status. Simply stated, “[t]he domain
name at issue does not suggest that the Complainant is the source, origin or
sponsor of Respondent’s website.” Id. Thus, the Panel concludes that Complainant
has not satisfied its burden of proof under Policy ¶ 4(a)(i).
The
Panel concludes that no further analysis of the Policy need be undertaken
because Complainant failed to satisfy Policy ¶ 4(a)(i). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20,
2002) (finding that because Complainant must prove all three elements under the
Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining elements unnecessary).
Having failed to
establish the elements required under ICANN Policy, the Panel concludes that
relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated:
March 27, 2003
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