DECISION

The Prudential Insurance Company of America v. SFXB

Claim Number: FA0109000099671

PARTIES

The Complainant is The Prudential Insurance Company of America, Newark, NJ ("Complainant") represented by Maribel Figueredo, of The Prudential Insurance Company of America. The Respondent is SFXB, Las Vegas, NV ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bpbprumerica.com>, registered with GKG.net.

PANEL

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.

The Honorable Charles K. McCotter, Jr. as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 5, 2001; the Forum received a hard copy of the Complaint on September 6, 2001.

On September 11, 2001, GKG.net confirmed by e-mail to the Forum that the domain names <bpbprumerica.com> is registered with GKG.net and that the Respondent is the current registrant of the name. GKG.net has verified that the Respondent is bound by the GKG.net 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 September 11, 2001, a Notification of the Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 1, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@bpbprumerica.com by e-mail.

A timely response was received and determined to be complete on September 12, 2001.

On October 1, 2001, pursuant to the Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. The Complainant

The <bpbprumerica.com> domain name is identical in part to and/or confusingly similar to the Complainant’s Prumerica Marks. The Respondent has no legitimate interest in the domain name, and the registration of such domain name has no purpose other than to prevent Prudential and BPB, the legitimate owners of the corresponding mark, from obtaining and making commercial use of that name as web site addresses. The Respondent’s effort to extort Prudential and BPB is precisely the type of bad faith domain name registration that the Policy is designed to address.

B. The Respondent

The Respondent is a webhosting company which registers domain names and registered this name for a client. On September 7, 2001, the Respondent transferred the domain name to its client.

The Complainant has no rights to the name.This domain name is not famous and has no trademark of any sort.

The Respondent denies that this domain name was registered in "bad faith."

FINDINGS

    1. For 125 years, the Complainant, The Prudential Insurance Company of America ("Prudential"), has provided a wide variety of insurance, securities, investment, financial and real estate services throughout the United States and the world.

    2. "Prumerica" is a brand name used by Prudential and its affiliates when operating in certain locations outside the United States. Prudential’s PRUMERICA and PRUMERICA combination marks (collectively, the "Prumerica Marks") are the subject of over 100 trademark registrations in 46 countries.

    3. Prudential uses its Prumerica Marks in connection with a full range of asset management, insurance, securities and employment solutions in numerous countries around the world.

    4. Prudential and its affiliated companies operate various web sites around the world through domain names that incorporate the well-known Prumerica Marks, including "prumerica.com," "prumerica.net," "prumerical.com.pl," "prumericafinancial.com," "prumerica-financial.com", and "prumerica.ie."

    5. Each year Prudential spends thousands of dollars advertising and promoting its services marketed under the Prumerica Marks on its web sites and through its other forms of advertising and marketing.

    6. As a result of its extensive use and promotion of its marks, Prudential has achieved tremendous amount of goodwill in its Prumerica Marks, and consumers and the trade have come to associate those marks exclusively with Prudential and its affiliates.

    7. On July 25, 2001, Prudential Financial and Banca Popolare de Bergamo-Credito Varesino ("BPB") announced the formation of an asset management joint venture to be called BPB Prumerica Global Investments (hereinafter the "BPB Prumerica JV"). This announcement was widely reported both on the Internet and in publications such as Bloomberg’s.

    8. The BPB Prumerica JV intends to use the domain name <bpbprumerica.com>, but that domain name is not available.

    9. Shortly after the announcement of the BPB Prumerica JV, Prudential learned that the domain name <bpbprumerica.com> the domain name had been registered by the Respondent SFXB/B. Evans, with the listed address of 8635 W. Sahara, Las Vegas, NV 89117, on July 25, 2001, immediately after the public announcement of the joint venture.

    10. The domain name currently does not have an active website but instead has a placeholder that states "BPBPRUMERICA.COM Coming Soon."

    11. Prudential also leaned that on July 25, 2001 its joint venture partner, BPB, received an email from "BEvans8576@aol.com" stating in Italian: "I received an email from someone that he is interested in an internet domain name that is no longer being used: bpbprumerica.com. It is now for sale for $10,000 usd." This email was wholly unsolicited.

    12. On July 30, 2001, Prudential’s counsel sent a cease and desist letter to the Respondent via electronic mail and telefax to the address and fax number identified in the Respondent’s "Whois" data.

    13. On the same day, the Respondent replied to Prudential’s counsel via email, stated that "BPBPR, U-Merica is our established company name, used since 1996" and claimed that the domain name "was NOT registered recently [emphasis in original]."

    14. In response, Prudential’s counsel requested documentation that the Respondent in fact used the name "BPBPR, U-Merica" since 1996, and disputed the Respondent’s contention that the domain name was not registered recently.

    15. Instead of providing documentation, the Respondent changed his story and replied that BPBPR, U-Merica was never incorporated and that a different business name was ultimately used. The Respondent provided no evidence to confirm that the domain name had originally been registered earlier than July 25, 2001. The Respondent then stated, "To resolve the matter, we’ll let it go for $3,000 usd."

    16. Upon investigation, Prudential learned that the Respondent had been involved in several cases under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"). As in this matter, the domain names at issue in those cases had either been registered under the name "B. Evans" and/or emails soliciting the sale of the domain names had originated from BEvans8576@aol.com. In addition, the registrant’s address in many of those cases was identical to the listed address in the "Whois" record for the domain name.

    17. When confronted with this information, the Respondent denied being the individual involved in those cases, explaining that B. Evans "is a common name." Not surprisingly, the Respondent could not explain how the B. Evans involved in the cybersquatting cases not only has the identical name but the identical address.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Identical and/or Confusingly Similar

The disputed domain name is confusingly similar to the Complainant’s PRUMERICA mark, as the domain name is merely a combination of the Complainant’s mark with the letters "bpb." See EntergyShaw LLC v. CPIC Net, FA 95950 (Nat. Arb. Forum Dec. 8, 2000) (finding that Policy ¶ 4(a)(i) had been satisfied because the joint venture company name, as well as the domain names at issue, are comprised of the merged ENTERGY and SHAW marks). In addition, the disputed domain name is so confusingly similar a reasonable Internet user would assume that the domain name is somehow affiliated with the Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist).

Rights or Legitimate Interests

The Respondent is not commonly known by the domain name in question, nor has the Respondent used the domain name in connection with a legitimate noncommercial or fair use without intent for commercial gain. See EntergyShaw LLC v. CPIC Net, supra. (finding no rights or legitimate interests where Respondent registered the domain names at issue on the same day Complainant issued a press release regarding a forthcoming joint venture, to be known as EntergyShaw L.L.C.).

Registration and Use in Bad Faith

At the time of registration, the Respondent knew or should have been aware of the Complainant’s famous mark. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration).

The Respondent has shown opportunistic bad faith registration and use by registering a domain name after learning about the merger of the two businesses. See EntergyShaw LLC v. CPIC Net, supra. ("Respondent’s opportunistic bad faith is obvious. Respondent registered the domain names at issue the very day Complainant issued a press release regarding the proposed joint venture. Such timing cannot be a coincidence"); see also Time Warner Inc. and EMI Group plc v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that Respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith pursuant to Policy ¶ 4(b)(i), (ii) and (iii), because Respondent registered the domain names after Complainant issued a press release of the proposed merger between Complainants); see also The London Metal Exch. Ltd. v. Hussain, D2000-1388 (WIPO Dec. 15, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(i) where Respondent registered <lmeholdings.com> on the same day that a news article was published regarding the Complainant’s new company called "LME Holdings Limited").

Several reported decisions establish that the Respondent has engaged in a pattern of cybersquatting. In Astro-Med, Inc. v. Merry Christmas Everyone! And B. Evans, D2000-0072 (WIPO March 27, 2000), the Complainant alleged that, shortly after it created a new business division called Grass-Telefactor Instrument Group, it received an unsolicited email from B. Evans stating, "Someone emailed me about a few domain names I own. Yes, they are for sale in response to the email." The Panel concluded that those domain names were registered in bad faith.

Similarly, in Marconi Commerce Systems, Inc. v. Mr. B. Evans, FA 93560 (Nat. Arb. Forum, March 15, 2000) the Complainant, which conducts business under the name Gilbarco, alleged that B. Evans registered the domain name <gilbarcoeclipse.com> shortly after the Complainant’s adoption and rollout of its Eclipse product, and then offered to sell the domain name to the Complainant. The Panel found that B. Evans registered that domain name in bad faith.

In Exario Networks Inc. v. The Domain Name You Have Entered Is For Sale, AF-0538 (e Resolution, Dec. 11, 2000), the Panel concluded that the Respondent had engaged in repeated instances of cybersquatting. In that case, the Complainant issued a press release publicly announcing its new corporate name, Exario Networks, Inc. On the same day, the Respondent registered the domain name <exarionetworks.com>. Thereafter, the Complainant received an unsolicited email from "BEvans8576@aol.com" stating, "Someone emailed me about a domain name I own: exarionetworks.com. Yes it is for sale." In finding bad faith registration of the domain name, the Panel noted the Respondent’s clear pattern of cybersquatting.

As in these reported cases, the Respondent registered the domain name shortly after the public announcement of a new company to be formed by Prudential and its partner BPB. The Respondent then sent an unsolicited email claiming to respond to an earlier email and offering to sell the domain name for several thousand dollars in excess of his out-of-pocket expenses. The Respondent registered and used the domain name in bad faith.

DECISION

Based upon the findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name <bpbprumerica.com>.

 

Charles K. McCotter, Jr., Panelist

Dated: October 12, 2001

 

 

 

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