The Prudential Insurance Company of America v. The Prudential Insurance Company of America c/o Dwain Ammons
Claim Number: FA0605000701631
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Sue J. Nam, 751 Broad Street, 21st Floor, Newark, NJ 07102, USA. Respondent is The Prudential Insurance Company of America c/o Dwain Ammons (“Respondent”), Five Greentree Centre, Marlton, NJ 08312.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <prudentialragette.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 5, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 9, 2006.
On May 5, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <prudentialragette.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, 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 May 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2006 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@prudentialragette.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <prudentialragette.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark.
2. Respondent does not have any rights or legitimate interests in the <prudentialragette.com> domain name.
3. Respondent registered and used the <prudentialragette.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 its PRUDENTIAL mark in relation to a variety of insurance, securities, investment, financial and real estate goods and services both in the United States and internationally for almost 130 years. In connection with these services, Complainant holds several trademark registrations for the PRUDENTIAL mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 693,628 issued on February 23, 1960), as well as additional trademarks in over 30 other countries. Complainant and its affiliated companies utilize the PRUDENTIAL mark on the Internet to promote Complainant’s services through numerous domain names, including, but not limited to <prudential.com>, <prudentialproperties.com>, <prudentialhomefinder.com>, and <prudentialcalbayarea.com>.
Respondent registered the <prudentialragette.com> domain name on July 20, 2003. Respondent is using the disputed domain name to divert Internet users to Respondent’s website featuring links to competing goods and services, for which Respondent presumably receives a pay-per-click referral fee.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s registration of its PRUDENTIAL mark with the USPTO establishes Complainant’s rights in the mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”).
Respondent’s <prudentialragette.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark because Respondent’s domain name incorporates Complainant’s mark in its entirety and adds the term “ragette,” which is identical to the name used by a Franchisee of Complainant, Prudential Ragette. Affixing additional terms to Complainant’s mark creates a domain name that is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar).
Complainant has satisfied Policy ¶ 4(a)(i).
Pursuant to Policy ¶ 4(a)(ii), Complainant bears the initial
burden of proving that Respondent does not have rights or legitimate interests
in the disputed domain name. However,
once the Complainant has made a prima facie case, the burden shifts to
Respondent to show that it does have rights or legitimate interests as provided
in Policy ¶ 4(c). If Respondent fails
to respond the Panel may interpret Respondent’s silence as evidence that no
rights or legitimate interests exist in the disputed domain name. See G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent. Respondent’s failure to respond means that Respondent has
not presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). The Panel finds that Complainant has presented
a prima facie case, and the Panel now chooses to evaluate whether or not
Respondent has rights or legitimate interests under Policy ¶ 4(c) despite
Respondent’s failure to respond.
Complainant alleges that the <prudentialragette> domain name is being used to redirect Internet users to Respondent’s commercial website featuring links to competing goods and services, presumable for a fee. The Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s PRUDENTIAL mark to redirect Internet users to its commercial website does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
Further, Complainant asserts, without contradiction from Respondent, that Respondent is neither commonly known by the <prudentialragette> domain name nor authorized to use a domain name featuring Complainant’s mark, despite the WHOIS information indicating that Respondent is “The Prudential Insurance Company of America c/o Dwain Ammons.” Thus, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); Hewlett-Packard Co. v. HP Supplies, FA 282387 (Nat. Arb. Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s unauthorized use of Complainant’s PRUDENTIAL
mark in the <prudentialragette.com> domain name diverts Internet
users from Complainant’s business by redirecting Internet users to Respondent’s
website featuring links to competing goods and services. The Panel finds this usage amounts to
disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly
similar to Complainant's mark to divert Internet users to a competitor's
website. It is a reasonable inference that Respondent's purpose of registration
and use was to either disrupt or create confusion for Complainant's business in
bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Respondent’s use of the <prudentialragette.com> domain name creates a likelihood of confusion with Complainant’s PRUDENTIAL mark, thus misleading Internet users as to the affiliation or endorsement of Respondent’s website. Respondent is using the <prudentialragette.com> domain name to attract Internet users to a website providing links to goods and services in competition with Complainant, presumably for a fee. The Panel finds this is evidence of attraction for commercial gain, pursuant to Policy ¶ 4(b)(iv). See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Complainant has satisfied 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 <prudentialragette.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 20, 2006
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