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 Respondent is Garzotto, New York, NY, USA ("Respondent").

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

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.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 3, 2000; The Forum received a hard copy of the Complaint on November 3, 2000.

On November 7, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name prutrade.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 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On November 9, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 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@prutrade.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 December 5, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody 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 name be transferred from the Respondent to the Complainant.

A. Complainant

B. Respondent

Respondent did not submit a response.

The Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") state the following with regard to situations where a Respondent did not submit a response:

ICANN Rules 14. This panelist will therefore proceed to a decision based on the complaint.

Prudential owns the Federal trademark registration PRUTRADE, Registration Number 2,258,019, in International Class36, for "providing securities brokerage services, financial account information and investment advisory services by means of a global computer network." Complainant’s PRUTRADE was the first Internet-based trading system available directly from any full-service brokerage firm. Prudential also owns an extensive family of "Pru" formative marks which it has registered at the U.S. Patent and Trademark Office.

Prudential and its subsidiaries are often referred to by the public and the media as "Pru." As a result of the foregoing, and in particular because of Prudential’s ownership of an extensive family of "Pru" formative marks, and the public’s tendency to abbreviate the Prudential name to "Pru", consumers and the trade have come to associate terms having the prefix "Pru" with Complainant Prudential and its related companies.

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 first ICANN Policy element requires Complainant to demonstrate two things, that Complainant has rights in a trademark or service mark, and that the domain name at issue is identical or confusingly similar to that trademark or service mark. Complainant has demonstrated both.

Complainant’s rights in PRUTRADE are evidenced by a federal trademark registration for PRUTRADE, Registration No. 2,258,019, in International Class 36, for "providing securities brokerage services, financial account information and investment advisory services by means of a global computer network." The mark was first used in commerce in February 1998. The mark was registered on June 29, 1999.

The domain name at issue, prutrade.com is confusingly similar to Complainant’s PRUTRADE mark. A domain name which entirely incorporates a trademark or service mark, adding only a TLD such as ‘.com,’ is confusingly similar to such a mark under the ICANN Policy. See DLJ Long Term Investment Corporation v Russell Johnson d/b/a Darryl Lee Johnson FA 95565 (Nat. Arb. Forum. Oct. 16, 2000) ("The addition of generic words, hyphens or ".com" does not affect the analysis under ICANN Policy ¶ 4(a)(i)").

Respondent may demonstrate its rights or legitimate interests in a domain name by providing evidence of any of the following:

There is no evidence to indicate that Respondent has any such rights. Respondent registered the domain name on December 1, 1998 and the evidence indicates that it has not made any use of the domain name since that time, other than seeking to transfer it to Complainant in exchange for a fee. Respondent does not appear to be commonly known by the domain name. Respondent has failed to demonstrate any rights or legitimate interest in the domain name prutrade.com.

Respondent has registered and is using the domain name in bad faith. The strength of Complainant’s marks, when combined with Respondent’s registration of a domain name that entirely incorporates one of Complainant’s marks, indicates registration in bad faith. There is no other plausible explanation for Respondent to choose to register prutrade.com. See Dr. Karl Albrecht v. Eric Natale FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (finding registration in bad faith based where there is no reasonable possibility, and no evidence from which to infer that the domain name was selected at random since it entirely incorporated Complainant’s name).

Respondent’s continued passive holding of the domain name indicates use in bad faith. Respondent registered the domain name in December 1998, but since that time, has not made any use of the domain name, other than making several attempts to transfer it to Complainant. The combination of Respondent’s lack of use and his offers to transfer the domain name indicate use in bad faith. See Cruzeiro Licenciamentos Ltda v. Sallen and Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).

Respondent has both registered and used the domain name in bad faith.

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 prutrade.com be transferred from the Respondent to the Complainant.