Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Prudential Insurance Company of America , Newark, NJ, USA ("Complainant"). The Respondent is J.J. Corp, KOREA ("Respondent").

The domain names at issue are "prudentialamerica.com", "prudentialbrazil.com" registered with Yes Nic.

The Panelist James P. Buchele, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 30, 2000; The Forum received a hard copy of the Complaint on August 30, 2000.

On August 31, 2000, Yes Nic confirmed by e-mail to the Forum that the domain names "prudentialamerica.com", "prudentialbrazil.com" are registered with Yes Nic and that the Respondent is the current registrant of the names. Yes Nic has verified that Respondent is bound by the Yes Nic registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 31, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 20, 2000 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@prudentialamerica.com, prudentialbrazil.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 26, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform 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 Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant asserts that the domain names "prudentialbrazil.com" and "prudentialamerica.com" are confusingly similar to Complainant’s various trademarks. The source-identifying root of the domain names registered by Respondent, "prudential," is identical to the "PRUDENTIAL" and "PRUDENTIAL" combination marks owned by Complainant. Further, the domain names in their entirety are confusingly similar to the family of "PRUDENTIAL" and "PRUDENTIAL" combination marks owned by Complainant.

Complainant asserts that Respondent has no rights or legitimate interest in the domain names. Respondent has never made use of the domain names. In light of the Complainant’s numerous trademark registrations, there is no legitimate basis for Respondent to have registered or to maintain the domain names.

Complainant asserts that Respondent has registered the domain names and is using them in bad faith. Complainant’s marks are well known to the consuming public, and therefore, the mere registration of a domain name which incorporates Complainant’s mark, without a legitimate interest in the "Prudential" name, is evidence of registration in bad faith. Additionally, Respondent offered to sell the domain names to Complainant for $15,000 each, and this, Complainant asserts, evidences use in bad faith.

B. Respondent

Respondent submitted no response in this matter. Because Respondent has failed to submit a response, based on the Policy, the Panel accepts as true all allegations set for the Complaint. ICANN Rule 14(b).

Complainant has used its "PRUDENTIAL" mark for 125 years in connection with a wide variety of insurance, securities, investment, financial and real estate services throughout the United States and the world, including in South Korea and Brazil. In Korea, Respondent’s country of residence, Complainant operates an insurance business, Prudential Life Insurance Co., Ltd. In Brazil, Prudential operates a securities business under the name Prudential Securities (Brazil) LTDA.

The "PRUDENTIAL" trademark is the subject of trademark registrations in over 50 countries, including Brazil, Korea and the United States. In Korea, Respondent owns 58 registrations for its "PRUDENTIAL" marks in English and Korean. In Brazil, Prudential owns 13 trademark registrations for its "PRUDENTIAL" and "PRUDENTIAL" combination marks, in English and Portuguese. In the United States, Complainant has over 100 trademark registrations for its "PRUDENTIAL" and "PRUDENTIAL" combination marks.

On May 13 and 31, 2000 respectively, Respondent registered the domain names "prudentialbrazil.com" and "prudentialamerica.com". On August 23, 2000, Respondent’s administrative contact, Mr. J.J. Park, contacted Complainant’s general counsel and offered to sell the domian names at issue for $15,000 each.

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 domain names in issue are confusingly similar to Complainant’s registered trademarks. The addition of a generic word to an otherwise distinctive or famous mark does not lessen the confusing similarity. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark). See also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word "shop" with the Complainant’s registered mark "llbean" does not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy). Adding the generic or descriptive words "brazil" and "america" to the Complainant’s "PRUDENTIAL" mark does not alleviate the confusing similarity.

The name "PRUDENTIAL" is not generic or descriptive. If it were, Respondent and others would likely be entitled to its use and registration. See Fifty Plus Media Corp. v. Digital Income, Inc. FA94924, Nat. Arb. Forum, July 17, 2000 (discussing generic and descriptive names). Respondent has not made a legitimate noncommercial use of the domain names. Nor has Respondent been known by or connected to the names "prudentialbrazil.com" or "prudentialamerica.com".

Respondent failed to produce any evidence sufficient to rebut Complainant’s allegations. This failure entitles the Panel to conclude that Respondent has no such rights or legitimate interests with respect to the domain names at issue. See Parfumes Christian Dior v. QTR Corp., No. D2000-0023 (WIPO Mar. 9, 2000). Therefore, Complainant has proved that the Respondent has no rights or legitimate interest in respect of the domain names "prudentialbrazil.com" and "prudentialamerica.com". See ICANN Policy ¶ 4(b)(ii).

Respondent knew or should have known of the Complainant’s usage of the marks "PRUDENTIAL" and "THE PRUDENTIAL" prior to Respondent’s registration of the domain name, since Complainant operates an insurance business in Korea, Respondent’s country of residence. 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"). Id.

Additionally, Complainant presented evidence that Respondent offered to sell the domain names at issue to the Complainant for $15,000 each. This offer to sell the domain name, only 3 months after Respondent registered them, indicates that Respondent registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names to the Complainant. See ICANN Policy ¶ 4(b)(i). See also America Online, Inc. v. Netsbest, FA 93563 (Nat. Arb. Forum Mar. 29, 2000) (finding bad faith where the Respondent made no use of the domain name <icqguide.com> other than offering it for sale for $99,000);

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the forgoing reasons, it is ordered that the domain names "prudentialbrazil.com" and "prudentialamerica.com" be transferred from the Respondent to the Complainant.