Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The Prudential Insurance Company of America , Newark, NJ, USA ("Complainant") represented by Maribel Figueredo, The Prudential Company of America. The Respondent is Douglas Irvine, West Palm Beach, FL, USA ("Respondent").

The domain name at issue is prudentialonline.com registered with Network Solutions.

On November 3, 2000 pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed James P. Buchele as Panelist.

The Panelist 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 October 6, 2000; The Forum received a hard copy of the Complaint on October 6, 2000.

On October 9, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name prudentialonline.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On October 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 30, 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@prudentialonline.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.

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 name be transferred from the Respondent to the Complainant.

A. Complainant

Respondent’s’ registration of the Domain Name violates the ICANN Policy because:

B. Respondent

The Respondent did not submit a response to the Complaint or otherwise contest the Complainant’s assertions. Under paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default, as it considers appropriate. Nevertheless, the Panel can only rule in the Complainant’s favor after it has proven that the requisite three elements listed below are present.

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

With respect to the first ICANN factor, the domain name is identical and confusingly similar to the Complainant’s registered marks. The domain name is identical to the Complainant’s PRUDENTIAL ONLINE trademark. In addition, the root of the domain name, namely the word "Prudential," is identical to the PRUDENTIAL and PRUDENTIAL combination marks owed by Complainant. Thus, the domain name in its entirety is confusingly similar to the family of PRUDENTIAL and PRUDENTIAL combination trademarks, owned by Complainant. See, e.g., Cardservice Int’l, Inc. v. McGee, 950 F.Supp. 737 (E.D. Va.), aff’d, 129 F.3d 1258 (4^th Cir. 1997) ("cardservice.com" confusingly similar to "Card Service" trademark; permanent injunction granted); Public Service of New Mexico v. Nexus Energy Software, Inc., 36 F.Supp. 2d 436 (D. Mass. 1999) ("www.energyplace.com" confusingly similar to trademark "Energy Place"; preliminary injunction granted); Washington Speakers Bureau, Inc. v. Leading Authorities, Inc., 49 F. Supp. 2d 496 (E.D. Va. 1999) ("washingtonspeakers.com" confusingly similar to trademark "Washington Speakers Bureau"; preliminary injunction granted). As such, the first element of the ICANN test is satisfied.

With respect to the second ICANN factor, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name in question. In conversation with the Complainant, the Respondent indicated that he registered the domain name in connection with his company, Prudential National Leasing. However, the Respondent also indicated that his company was no longer operational and was willing to transfer the domain name.

While that Respondent might have once had rights in the domain name, it is evident that he no longer has any legitimate interest in using the domain name. He is not currently using the domain name for any commercial or noncommercial purpose. Policy ¶ 4.c.(i), (iii). It seems he is only holding the domain name in order to make a profit by selling it to the highest bidder.

He is also no longer known by the term Prudential National Leasing given that his company is no longer operational. Thus, he could not possibly be commonly known by the term PRUDENTIAL ONLINE anymore. Policy ¶ 4.c.(ii).

In addition to the above, the Respondent has not responded to the Complainant’s assertions. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess). As such, the second element of the ICANN test is satisfied.

With respect to the third ICANN factor, the Panel concludes that the Respondent has registered and used the domain name in bad faith. The Respondent’s refusal to accept the Complainant’s reasonable offer for reimbursement of the domain name registration costs and the Respondent’s statements indicate that the Respondent is holding the domain name in order to sell it to the highest bidder. This is evidence of bad faith registration and use based on Policy ¶ 4.b.(i). See World Wrestling Fed. Entertainment, Inc. v. Bosman, D0099-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs); VARTEC TELECOM, INC. v. Jim Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where the Respondent registered the domain in order to sell it "for far more than he paid for it" by sending a general email to the Complainant offering the domain name for sale).

As such, the third element of the ICANN test is satisfied.

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 foregoing reasons, it is ordered that the domain name prudentialonline.com be transferred from the Respondent to the Complainant.