The Prudential Insurance Company of America v. Hemang Infrasructure Private Limited
Claim Number: FA1310001525844
Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Nancy J. Mertzel of Schoeman Updike Kaufman Stern & Ascher LLP, New York, USA. Respondent is Hemang Infrasructure Private Limited (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwprudential.com>, registered with Tirupati Domains and Hosting Private Limited.
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 as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2013; the National Arbitration Forum received payment on October 22, 2013.
On October 23, 2013, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <wwwprudential.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the name. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited 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 October 24, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2013 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@wwwprudential.com. Also on October 24, 2013, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues 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
a) For over 130 years, Complainant has used the PRUDENTIAL mark in connection with a wide variety of financial, securities, investment, insurance, real estate, and relocation services throughout the United States and the world. Since at least 1997 Complainant has advertised and promoted its services via its website at <prudential.com>. Complainant owns numerous registrations with the United States Patent and Trademark Office (“USPTO”) for the PRUDENTIAL mark (e.g., Reg. No. 693,628 registered Feb. 23, 1960).
b) The <wwwprudential.com> domain name is confusingly similar to the PRUDENTIAL mark. Respondent merely removes the period from what would be Complainant’s domain name with the preceding “www.”
c) Respondent has no rights or legitimate interests in the <wwwprudential.com> domain name. Respondent has no connection to Complainant’s PRUDENTIAL mark. Respondent is using the PRUDENTIAL mark without Complainant’s consent.
d) Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent is operating the domain name for commercial gain by displaying links to sponsored advertisers for retirement and financial products and services, among others, that directly compete with Complainant’s offerings.
e) Respondent drives traffic to websites via the <wwwprudential.com> domain name so as to capitalize and commercially benefit on the likelihood that users seeking Complainant will be confused when they reach the disputed domain name and potentially generate income for Respondent. There is no plausible explanation for Respondent’s use of the PRUDENTIAL mark or the disputed domain name other than a desire to trade on the fame and goodwill of Complainant and create confusion. Respondent’s use of a typosquatted domain name is evidence that Respondent is purposefully trading on Complainant’s PRUDENTIAL mark. Respondent displays competing sponsored links and advertises for which Respondent receives compensation each time an Internet user clicks on one of the links.
f) Respondent’s use of the PRUDENTIAL mark in the <wwwprudential.com> domain name is a clear example of typosquatting. Respondent merely eliminates the period from what would be between the “www” and the mark to create Complainant’s genuine domain name. Respondent is clearly attempting to generate Internet traffic at its own website by diverting those users who mistakenly mistype the “www” component of Complainant’s domain without including the following period.
g) Respondent was put on constructive notice of Complainant’s rights in the PRUDENTIAL mark through Complainant’s federal registrations for the mark. Therefore, Respondent is knowingly using the PRUDENTIAL mark in violation of Complainant’s rights. Moreover, Respondent’s registration of a typo-based version of Complainant’s mark reveals that Respondent had actual knowledge of Complainant’s use in its PRUDENTIAL mark. Further, given the widespread recognition of Complainant’s PRUDENTIAL mark, it is difficult to conceive of a plausible circumstance in which respondent could legitimately use the <wwwprudential.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the <wwwprudential.com> domain name on December 16, 1999.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 and is being used in bad faith.
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.”).
Complainant contends that, for over 130 years, it has used the PRUDENTIAL mark in connection with a wide variety of financial, securities, investment, insurance, real estate, and relocation services throughout the United States and the world. Since at least 1997 Complainant claims to have advertised and promoted its services via its website at <prudential.com>. Complainant notes that it owns numerous registrations with the USPTO for the PRUDENTIAL mark (e.g., Reg. No. 693,628 registered Feb. 23, 1960). Panels have found that, regardless of the location of the parties, registration of a mark with a trademark authority is evidence of having right in the mark that satisfy the required showing under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the PRUDENTIAL mark under Policy ¶ 4(a)(i).
Complainant asserts that the <wwwprudential.com> domain name is confusingly similar to the PRUDENTIAL mark. According to Complainant, Respondent merely removes the period from what would be Complainant’s domain name with the preceding “www” prefix. The Panel agrees that the prefix “www” has never been a serious consideration under the Policy. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). The Panel further agrees that the generic-top level domain “.com” is in no way a relevant addition. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Thus the Panel finds that the <wwwprudential.com> domain name is confusingly similar to the PRUDENTIAL 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), and then 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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <wwwprudential.com> domain name. Complainant states that Respondent has no connection to Complainant’s PRUDENTIAL mark, and Respondent is using the PRUDENTIAL mark without Complainant’s consent. The Panel notes that the WHOIS information lists “HERMANG INFRASTRUCTURE PRIVATE LIMITED” as the registrant of record. The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark. As such, the Panel finds that Respondent is not commonly known by the <wwwprudential.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent’s domain name is operated for commercial gain by displaying links to sponsored advertisers for retirement and financial products and services, among others, that directly compete with Complainant’s offerings. The Panel notes that the domain name resolves to a website wherein competing investment and financial hyperlinks are promoted. See Amended Compl., at Attached Ex. E. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held 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 Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). As such, the Panel finds that Respondent’s use of the <wwwprudential.com> domain name for the display of links to third-party websites that compete with Complainant is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith. Complainant claims that Respondent drives traffic to websites via the <wwwprudential.com> domain name so as to capitalize and commercially benefit on the likelihood that users seeking Complainant will be confused when they reach the disputed domain name and potentially generate income for Respondent. Complainant argues that there is no plausible explanation for Respondent’s use of the PRUDENTIAL mark or the disputed domain name other than a desire to trade on the fame and goodwill of Complainant and create confusion. Complainant avers that Respondent’s use of a typosquatted domain name is evidence that Respondent is purposefully trading on Complainant’s PRUDENTIAL mark. The Panel again notes that the domain name is used to facilitate the promotion of competing hyperlink content. See Amended Complaint, at Attached Ex. E. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000), the panel found bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes. Given this example, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant next alleges that Respondent’s use of the PRUDENTIAL mark in the <wwwprudential.com> domain name is a clear example of typosquatting. Complainant notes that Respondent merely eliminates the period from what would be between the “www” and the mark to create Complainant’s genuine domain name. According to Complainant, Respondent is clearly attempting to generate Internet traffic at its own website by diverting those users who mistakenly mistype the “www” component of Complainant’s domain without including the following period. As such, the Panel finds that Respondent attempted to create a domain name that would take advantage of typographical errors made by Internet users searching for Complainant, and thus that the disputed domain name was registered and is used in bad faith under Policy ¶ 4(a)(iii). See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (“Registering a domain name which entirely incorporates a famous mark with the addition of the “www” prefix evidences not only actual knowledge of a trademark holder’s rights in that mark but an intent to ensnare Internet users who forget to type the period between the “www” and a second-level domain name while attempting to reach Complainant’s URL.”).
Complainant contends that Respondent was put on constructive notice of Complainant’s rights in the PRUDENTIAL mark through Complainant’s federal registrations for the mark. Moreover, Complainant asserts that Respondent’s registration of a typo-based version of Complainant’s mark reveals that Respondent had actual knowledge of Complainant’s use in its PRUDENTIAL mark. Further, Complainant states that, given the widespread recognition of Complainant’s PRUDENTIAL mark, it is difficult to conceive of a plausible circumstance in which respondent could legitimately use the <wwwprudential.com> domain name. Therefore, Complainant argues that Respondent is knowingly using the PRUDENTIAL mark in violation of Complainant’s rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwprudential.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: November 20, 2013
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