The Prudential Insurance Company of America v. Konstantinos Zournas
Claim Number: FA1106001392709
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Christopher M. Kindel of Fulbright & Jaworski L.L.P., Texas, USA. Respondent is Konstantinos Zournas (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pru.us>, registered with Moniker Online Services, LLC.
The undersigned Daniel B. Banks, Jr., as panel chair, certifies that he and the other panelists have acted independently and impartially and to the best of his knowledge we have no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2011 and in hard copy on June 9, 2011.
On June 10, 2011, Moniker Online Services, LLC confirmed by e-mail to the National Arbitration Forum that the <pru.us> domain name is registered with Moniker Online Services, LLC and that Respondent is the current registrant of the name. Moniker Online Services, LLC has verified that Respondent is bound by the Moniker Online Services, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on July 7, 2011.
On July 11, 2011, an Additional Submission was filed by the Complainant and was considered by the panel.
On July 18, 2011, an Additional Submission was filed by the Respondent and was considered by the panel.
On July 12, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Carol Stoner, Esq., Diane Thilly Cabell and Daniel B. Banks, Jr., as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The PRU trademark is the subject of forty trademark registrations in over twenty-eight countries. In the United States, Prudential owns at least eight U.S. trademark registrations and pending applications for its PRU and PRU combination marks.
Complainant has used its well-known PRU mark in connection with a wide variety of securities, investment, financial, retirement, investment and real estate and relocation services throughout the United States and the world for over 40 years. It has also used PRU as its stock-ticker symbol for nearly nine years
Prudential spends more than $50 million annually for advertising and promotion of its services under the Prudential Marks. From January 2009 through July 2010, Prudential launched a substantial television, print and digital advertising campaign featuring the PRU mark and the slogan "Who? PRU." Prudential spent roughly $15 million on the advertising campaign.
The domain name <pru.us> is confusingly similar to the Prudential Marks. Investors and consumers are familiar with PRU as the stock-ticker symbol of the company.
Respondent has no rights or legitimate interest in the domain name. It is not used in connection with a bona fide offering of goods or services. Respondent is not commonly known by the name "PRU" nor does Respondent operate a business or other organization under the name "PRU" or "Prudential." Prudential has not authorized Respondent to register or use its marks in any domain name.
Respondent uses the domain name to redirect to a pay-per-click landing page that displays links to sponsored advertisers for financial and insurance services that directly compete with Complainant. Also, at the landing page is an announcement that the domain name is for sale.
Respondent is not making a legitimate non-commercial or fair use of the domain name without intent for commercial gain and instead, is using the domain name to misleadingly divert consumers in order to make money. Also, Respondent's willingness to sell the domain name is additional prima facie evidence that Respondent lacks a legitimate interest in the domain name.
Respondent registered the domain name in bad faith or is using it in bad faith. Because it is for sale, it is likely that Respondent registered the domain name with the aim of selling it to Complainant or a competitor for consideration in excess of documented out-of-pocket costs. Also, Respondent's website diverts consumers to a website linking to competing businesses which is evidence of bad faith.
Upon information and belief, Respondent receives compensation for driving traffic to third-party websites via the pru.us domain. Respondent therefore capitalizes on and commercially benefits from the likelihood that users seeking Complainant will be confused when they reach the pru.us website.
Respondent had actual knowledge or reasonably should have had knowledge of Complainant's prior use and registration of the Prudential Marks. Respondent's actual knowledge is illustrated by the fact that Respondent directs the domain to a website with pay-per-click links to third parties that offer insurance and financial services that compete with Complainant. Respondent also had constructive notice of Complainant's rights in the Prudential Marks as a result of Complainant's ownership of numerous trademark registrations for the Prudential Marks. Such knowledge demonstrates bad faith.
Also, upon information and belief, Respondent has previously been found to have registered a third party's trademark in bad faith for commercial gain under similar circumstances. The findings in prior UDRP decisions further evidence Respondent's bad faith to profit in the present matter.
B. Respondent
Respondent, Konstantinos Zournas, registered the domain name <pru.us> on the 4th of July 2007. Respondent will not extensively comment on the first element of the policy, because a single trademark for the term “pru” registered anytime and in any country of the world is enough for the Panel to find that the Complainant satisfies the first element of the policy.
Respondent acquired the disputed domain pru.us because it incorporated the simple 3-letter combination pru, which the Respondent believed was valuable as a short domain.
Complainant does not have exclusive rights to this 3-letter term. There are hundreds of third party uses of the common term PRU. This substantial third-party use is evidence that Complainant does not have exclusive rights to the term PRU and, thus, supports Respondent’s legitimate interest in the Disputed Domain.
It is established under the Policy that anyone is entitled to register a domain name incorporating a simple 3-letter combination and that the first to register such a name has a legitimate interest in it, provided that it was not registered with the purpose of selling to the complainant, disrupting its business, preventing it from acquiring a domain incorporating its mark, or to confuse users.
Complainant alleges that Respondent does not have a legitimate interest because it is not known as “pru”. However, a domain owner does not have to be known by a domain name to establish a legitimate interest. A domain owner does not have to be known as or be formally associated with the name in the domain name which has been noted by many Panels.
Respondent is a web developer. Its primary focus is the development of websites. Respondent acquires domains with intent to develop them and on behalf of clients. Respondent has many websites such as bluepixel.gr (to advertise the Respondent’s webdevelopment skills) and dikatsa.info (educational portal). Respondent also develops themed search portals among other internet development projects. Respondent uses the disputed domain name in connection with a third-party paid search advertising, and it is used as a portal/search engine. Respondent is using the domain pru.us in connection with a bona fide offering of services. Respondent provides links to various unconnected areas that are not focused on a certain subject. As a directory, links cover as many fields possible. Please refer to Annex 10. The Complainant is correct that the Respondent derives revenue from directing web traffic from the portal site – as is the common practice among portal sites generally. The use of such a legitimately-acquired domain for advertising and promotion further constitutes use in connection with a bona fide offering of goods or services.
Respondent’s legitimate rights and interests include a reasonable reliance interest in the previous years of inaction by the Complainant. Complainant was aware of Respondent’s registration for 4 years but didn’t object to the registration until now.
It is well established that the offer for sale of common word domain names does not constitute bad faith under the Policy but, rather, is a bona fide business activity that establishes the Respondent’s legitimate interest.
Respondent registered <pru.us> on 2007 when it was available for anyone to register. Complainant chose not to register it. Complainant’s inability to register the domain at issue is not itself evidence of bad faith of the Respondent. The Disputed Domain pru.us is composed solely of the common 3-letter combination PRU. The term "pru" is an acronym and a generic term, to which Complainant does not, and cannot, have the exclusive rights to it.
The term “pru” is subject to substantial third party use unaffiliated with the Complainant. While Complainant seems to be of the opinion that it is the only entity in the world that uses the name “pru”, there are numerous third parties using it, either singularly or in conjunction with other terms, to identify their name, business, products, and services that bear no association with the Complainant. A search on the Internet search engine Google.com for “pru”, yields numerous third-party webpage results, including playgrounds, computer networking, finance, the stock market, construction, rugby, music, etc.
Complainant did not register the sole term “PRU”. Trademark ownership confers no absolute monopoly on a word. Complainant must be aware of this as USPTO database reflects at least five registrations that include the mark “PRU”. 2 of the registrations contain solely the term “pru”. Please refer to Annex 21. Registered trademarks relate to building materials, radars, dietary and nutritional supplements and order fulfillment services. Complainant does not enjoy exclusive use of the “pru” term, thus it cannot be concluded that Respondent selected <pru.us> with Complainant in mind.
Respondent denies that it had any knowledge of the Complainant or its mark at the time it registered the domain. The disputed domain was not registered, and has not been used, in bad faith. Respondent is not a competitor of the Complainant and clearly did not register the domain name in order to disrupt the business of the Complainant. Respondent had not heard of the Complainant when he registered this simple 3-letter combination domain.
The domain name was not registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant. Respondent never contacted the Complainant or any of its competitors and offered to sell the domain name <pru.us>.
There is no evidence of bad faith of the Complainants mark at the time of registration. Complainant has not submitted any registration certificates from Greece or the European Union where the Respondent resides.
Complainant has presented no evidence that it has ever conducted business or that it has advertised in Greece. Complainant does not operate in Greece. Complainant does not have and never had an office in Greece. Whilst the name “Prudential” may have some meaning in the USA in conjunction with some kind of business of the Complainant’s, there is no recognition at all for the term “pru” in the US or any other country, such as would be held by a trademark such as "IBM". Complainant only recently (2009-2010) launched advertising campaign in the US featuring the Pru mark. Before that the pru was totally unknown in the US and still is in other countries of the world. In fact the PRU term is not mentioned in the Complainant’s website except when referring to its stock market symbol.
Complainant claims that the pru.us website contained links to Complainant’s competitors. That is true but it was true only for about 3 weeks in May and June 2011. That is when the Complainant noticed these ads and started these proceedings. This was due to an administration error by Sedo.com and it was not Respondent’s choice or intent.
Complainant has presented 4 previous decisions involving the Respondent. Complainant provides only the cases that the Respondent lost. Complainant fails to provide the 3 cases Respondent won. Respondent has not established a pattern of conduct registering infringing domain names. A few UDRP complaints can’t possibly establish a pattern, considering the volume of domain names the Respondent has in his possession. It is not disputed that the Respondent is a domainer in the sense he has a substantial portfolio.
Complainant has actually been denied transfer for 3 domain names through UDRP proceedings: PRU.COM, prudentialmotors.com and prudentialmontana.com.
C. Additional Submissions
Complainant:
Respondent has clearly failed to demonstrate a legitimate interest in the domain name. He does not operate a business or organization commonly known by the name. He claims legitimate interest by arguing that he registered the domain because it was a three-letter combination and that "it is established under the Policy that anyone is entitled to register a domain name incorporation a simple 3-letter combination." This argument lacks merit when the combination in question conflicts with a registered trademark. Here, the domain consists of Prudential's registered, distinctive PRU mark.
While Respondent argues that there may be other third-parties with a legitimate interest in a PRU-formative domain, given his misuse of the domain, Respondent has demonstrated that he is not one of them.
Respondent does not dispute that the domain name has been used to advertise the services of third-party competitors of Complainant for Respondent's own financial gain. Instead he attributes this use to what he characterizes as an "error" by Sedo.com, with whom he contracted for domain-parking services. Ultimately, however, Respondent is responsible for the use of the domain.
Respondent argues that he "has not established a pattern of conduct registering infringing domain names" also fails. He admits to numerous transfer proceedings but argues that he has prevailed in some disputes. Even putting aside Respondent's past adverse UDRP decisions, a WhoIs search for the Respondent's name shows that he is currently the registrant of over 140 domain names comprised of third party trademarks or celebrity names such as anaheimmightducks.com, buffythevampire.com, forbes.info, jessicasimpsom.com, newyorktimes.info, rollingstones.biz, and thebeatles.info.
Respondent's repeated and continued registration of third party marks as domain names clearly shows a pattern of conduct of registering infringing domains and presents strong evidence of Respondent's bad faith.
Under the usDRP, Prudential need only show that Respondent registered or used the domain name in bad faith, not both.
Laches is not recognized as a defense in usDRP or UDRP proceedings.
Respondent:
Respondent did not know Complainant at the time of registration and up to the commencement of these proceedings. Complainant does not submit registrations for any of the 28 countries it claims to have a "pru" mark. Complainant has never used the domain names pru.info or pru.net since 2001. Nobody associates the company with the mark "pru" and nobody enters those web addresses to look for the Complainant.
Respondent did not manufacture a legitimate interest. Respondent provided proof of 128 3-letter .us domain names in the Response. Respondent also has hundreds of 3-letter .biz domain names. Respondent has rights to the disputed domain name while using it as a directory portal.
Complainant claims that the most prominent category in the Sedo.com generic category portal is "finance." That is not true. Finance is just one of many categories covering almost any field possible. Respondent is not targeting Complainant. It is the default format of the generic portal that Sedo offers. Finance is just one of the 12 main categories and over 60 subcategories that are provided on the webpage.
With regard to bad faith, Respondent has extensively explained and proved how the offensive links were displayed on the disputed domain. There are many cases under the Policy that have accepted that accidental or temporary offensive links do not constitute bad faith use.
Respondent has not established a pattern of conduct registering infringing domain names. A few UDRP complaints can't possibly establish a pattern considering the volume of domain names the Respondent has in his possession. Registering domain names and selling them is a bona fide business. Out of 3500 domain names that Respondent owns or manages, Complainant found 147 that supposedly have trademarks. Even if there are a couple of domain names that does not negate the fact that this case should be decided on its own merits.
Complainant argues that this Panel should strip Respondent of the domain name because Respondent registered or manages a few unrelated domain names that may be typographical misspellings of third party trademarks. The real pattern is established by the hundreds of generic domain names registered by Respondent for their value as dictionary words. It is regrettable that Respondent also registered a small number of domain names that could be classified as trademark typos. Respondent did not register nor use the domain name in bad faith.
With respect to the matter of laches, this Doctrine has been widely recognized under the Policy. Complainant was aware of Respondent's registration for 4 years but didn't object.
FINDINGS
1 - The disputed domain name is identical or confusingly similar to trademark in which the Complainant has rights.
2 - The Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered or is being used 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Respondent does not extensively comment on this element of the Policy recognizing that a single trademark for the term "pru" registered anytime and in any country of the world is enough for the Panel to find that Complainant satisfies the first element of the Policy. Complainant supplies evidence of two such registrations with the USPTO. The Panel determines that Complainant’s submitted evidence of its trademark registration is adequate to demonstrate rights in the mark under Policy ¶ 4(a)(i). Further, the Panel finds that Complainant does not need to own a trademark registration in the country of Respondent’s business operation or residence to establish such rights under the Policy. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant further argues that the <pru.us> domain name is identical to its PRU mark because the domain name contains its entire mark while adding only the country-code top-level domain (“ccTLD”) “.us.” The Panel agrees and finds that where a domain name merely adds the ccTLD “.us” to Complainant’s mark, that such domain name is identical to the mark pursuant to Policy ¶ 4(a)(i). See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to the complainant’s TROPAR mark); see also Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”).
A majority of this Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Upon such a finding, the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
A majority of this Panel finds that there is no evidence on record indicating that Respondent owns a trademark or service mark for the PRU mark. See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Also, there is no evidence that Respondent is commonly known by the name “Pru” nor does Respondent operate a business or other organization under the marks or name “Pru” or “Prudential.” Further, Complainant has not authorized Respondent to register Complainant’s mark in a domain name. WHOIS information for the domain name identifies “Konstantinos Zournas” as the registrant. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Further, a majority of this Panel finds that Respondent is not using the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). The evidence shows that the disputed domain name resolves to a pay-per-click landing page that displays third-party links to sponsored advertisers for financial and insurance services in competition with Complainant, as well as other unrelated links. Respondent receives commercial benefit from such use of the domain name each time an Internet user clicks on one of the links contained within the website. Respondent’s commercial gain through its use of the PRU mark owned by Complainant is further evidence that Respondent does not have rights or legitimate interests in the domain name. Respondent’s use of the disputed domain name as evidenced in Complainant’s submissions, is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii)).
Lastly, Respondent is attempting to sell the disputed domain name, which is further evidence that Respondent does not have rights or legitimate interests in the domain name. Complainant has submitted screen shot evidence to show that Respondent’s website states, “BUY THIS DOMAIN The domain pru.us may be for sale by its owner!” with a hyperlink offering more information on how to purchase the domain name. Respondent’s apparent willingness to sell the domain name at issue is further evidence that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
A majority of the panel was influenced by Complainant's Additional Submission regarding Respondent's 3-letter combination argument lacking merit when the combination in question conflicts with, or is confusingly similar to a registered trademark. The majority of the Panel was not persuaded by Respondent's Additional Submission, except to agree with Respondent's admission that "it is regrettable that Respondent also registered a small number of domain names that could be classified as trademark types." The majority of the panel submits that the domain name in dispute is indeed a "trademark type" and subject to UDRP protection, rather than merely a common name, i.e. "target" which a bundler or reseller could possibly use in good faith.
Respondent has been, and is currently, attempting to sell the disputed domain name to the general public. Complainant submits evidence to show that Respondent’s website displays the following statement: “BUY THIS DOMAIN The domain <pru.us> may be for sale by its owner!” with a hyperlink offering more information on how to purchase the domain name. The Panel finds that Respondent registered or is using the domain name in bad faith where it is offering the domain name for sale to the general public pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under [UDRP] ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Further, Respondent has a pattern of registering domain names in bad faith. Complainant submits several previous UDRP decisions in which Respondent was ordered to transfer domain names to the respective complainants. See Quinn v. Zournas, FA 610713 (Nat. Arb. Forum Feb. 17, 2006); see also Microsoft Corp., v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007); see also Board of Regents, Univ. of Tex. Sys. v. Zournas, FA 1218397 (Nat. Arb. Forum Sept. 17, 2008). Respondent’s previous behavior in registering domain names in bad faith also indicates that Respondent registered the <pru.us> domain name in bad faith pursuant to Policy ¶ 4(b)(ii), where Respondent has a pattern of registering the trademarks of others in domain names as evidenced by its previous adverse UDRP decisions. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to UDRP ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).
Respondent’s use of the disputed domain name as a pay-per-click landing page with various third-party links to Complainant’s competitors in the insurance and financial services industries harms Complainant by diverting Internet traffic from its website to the websites of its competitors, resulting in a loss of business. Such use of the domain name actively disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also 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 UDRP ¶¶ 4(b)(iii) [and] (iv).”).
Further, Respondent receives commercial compensation through its use of Complainant’s PRU mark in the form of pay-per-click links on its website. Each time an Internet user clicks one of the links displayed on Respondent’s website, Respondent receives a referral fee. Respondent’s commercial gain through its use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant contends that Respondent could not have registered the disputed domain name without actual or constructive knowledge of Complainant and its rights in the PRU mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant had previously registered the disputed domain name but that registration had lapsed. Some 4 months later, Respondent registered the domain. This information came from Respondent indicating some actual knowledge of Complainant's use and rights in the mark. Complainant contends that Respondent could not have registered the disputed domain name without actual or constructive knowledge of Complainant and its rights in the PRU mark. While constructive notice has not been generally held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Although Complainant fails to mention its prior registration of the disputed domain name, the opportunistic registration of the disputed domain name supports a finding of bad faith under Policy ¶ 4(a)(iii). See Aurbach v. Saronski, FA 155133 (Nat. Arb. Forum May 29, 2003) (“Where the domain name registration was previously held, developed and used by Complainant, opportunistic registration of the domain name by another party indicates bad faith, absent any justification that illustrates legitimate use.”); see also Hewlett-Packard Co. v. Domain ForSale, FA 103182 (Nat. Arb. Forum Feb. 7, 2002) (“[T]he fact that Complainant once held registration for the disputed domain name and that Respondent sought to capitalize on Complainant’s decision to let the registration lapse evidences bad faith registration and use under the Policy.”).
Having established all three elements required under the usTLD Policy, a majority of the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pru.us> domain name be TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Daniel B. Banks, Jr., Panel Chair
Carol Stoner, Panelist
Dated: July 26, 2011
DISSENTING OPINION:
The undersigned Panelist agrees with the majority that the domain is identical to the mark and that the Respondent is acting in bad faith by using the mark to extract commercial value from users seeking the same class of goods and services offered by Complainant. I agree with the majority that Respondent bears the ultimate responsibility for the contractors he hires in this endeavor and I am not persuaded that a domainer of his sophistication and previous UDRP experience cannot prevent temporary lapses in link generation.
However, I do find that Respondent had a right and legitimate interest. I hold that domain reselling and offering of directory services are per se legitimate enterprises. The domain aftermarket is a thriving business, which engages well-known resellers such as GoDaddy and Network Solutions. Yahoo! is a well-known web directory. Hence, I find that Respondent had an established business model involving both markets. As with other bulk resellers, large portfolios of domains are traded among other resellers, just as in the stock market. Any large portfolio of registrations will include domains that reflect someone's commercial brand because most common words are subject to trademark claims of some kind. Such registrars and directories were part of the landscape when the UDRP was established and the fact that bad faith and rights are two separate elements in the Policy reflects that understanding.
When the domain is a 3-letter acronym and common name, it can certainly be used in good faith and without any intended harm to the mark owner. Hence it's registration for legitimate purposes may be presumed in the absence of any indication of intent to trade on the mark owner. Mark owners must suffer the consequences of using marks consisting of common expressions or acronyms. No evidence was presented that the domain name has been used in bad faith during the first 4 years of Respondent's stewardship, which further supports a conclusion that Respondent did not acquire this domain with the intention of abusing Complainant's rights. Since I find a right and interest, I hold for the Respondent.
Diane Cabell, Panelist
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