Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Prudential Insurance Company, Newark, NJ, USA ("Complainant"). The Respondent is Taerim International Corp., Korea ("Respondent").

The domain names at issue are "PRUDENTIALKOREA.COM" and "PRUDENTIALUSA.COM", registered with YesNIC Co., Ltd. ("YesNIC").

The Panelist 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 the panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/01/2000; The Forum received a hard copy of the Complaint on 08/01/2000.

On 08/04/2000, YesNIC confirmed by e-mail to The Forum that the domain names "PRUDENTIALKOREA.COM" and "PRUDENTIALUSA.COM", are registered with YesNIC and that the Respondent is the current registrant of the name.

On 08/04/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/24/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail. It also was e-mailed to postmaster@prudentialkorea.com and postmaster@prudentialusa.com.

On August 28, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

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

A. Complainant

The Complainant contends that the Respondent registered the domain names that are the subject of this Complaint in bad faith. Furthermore, the domain names are identical or confusingly similar to the Complainant’s trademark, violating the Complainant’s trademark rights.

B. Respondent

The Respondent contends that he did not register the domain names in bad faith, but is considering starting a Prudential insurance policyholder club in the future, and would provide consumer feedback to Prudential.

The Complainant operates insurance, securities, investment, financial and real estate services throughout the world, and owns in excess of 150 trademark registrations in the U.S. and Korea for its "Prudential" and "Prudential" combination marks. The Complainant spends a substantial sum of money advertising and promoting its services on its web sites and through its other forms of advertising and marketing.

As a result of Complainant’s extensive use and ownership of the family of "Prudential" marks, consumers in the two countries at issue in this case, Korea and the United States, have come to associate the Complainant’s trademark "Prudential" with Complainant.

In reviewing the Complaint and Exhibits it is noted that a good portion of the exhibits were written in Korean and therefore of no particular value.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

The Respondent does not dispute the fact that the domain names are identical or confusingly similar to the Complainant’s mark. Therefore, this Arbitrator finds in favor of the Complainant on this issue.

The Respondent does not claim to have any rights or legitimate interests in the domain names. Therefore, this Arbitrator finds in favor of the Complainant on this issue.

It is obvious that the domain names registered by the Respondent that are the subject of this Complaint are connected to the Complainant. Registration and use of domain names that are affiliated with the Complainant’s famous marks and obviously not connected to Respondent is evidence of bad faith. See Charles Jourdan Holding AG v. AAIM. D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is "so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith). Therefore, this Arbitrator finds in favor of the Complainant on this issue.

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted. Accordingly, for all of the foregoing reasons, it is ordered that the domain names "prudentialkorea.com" and "prudentialusa.com" be transferred from the Respondent to the Complainant.