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Generic Top Level Domain Name (gTLD) Decisions |
The Prudential Assurance Company Limited
v. Steve Davis
Claim Number: FA0204000112447
Complainant
is The Prudential Assurance Co. Ltd., London, UNITED KINGDOM
(“Complainant”). Respondent is Steve
Davis, Lakeport, CA, USA (“Respondent”).
The
domain name at issue is <prudential.biz>, registered with Easyspace
Ltd.
The
undersigned, Jacques A. Léger Q.C acting as
Panelist, 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.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual
Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel
and with the National Arbitration
Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 26, 2002; the Forum
received a hard copy of the Complaint on
April 30, 2002.
On
May 7, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to
Respondent
in compliance with paragraph 2(a) of the Rules for the Start-up Trademark
Opposition Policy (the “STOP Rules”).
A
timely Response was received and determined to be complete on May 28, 2002.
Complainant’s Additional Submission was timely received
and determined to be complete on May 31, 2002.
Respondent submitted a timely reply on June 6, 2002.
On June 19, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Jacques A. Léger Q.C as single Panelist.
Transfer of the domain name from Respondent to
Complainant.
A. Complainant
Identity
of the Disputed Domain Name <Prudential.biz> and Complainant’s
Mark Therein
Complainant
contends the disputed domain name is identical to the mark PRUDENTIAL.
It contends it has rights in the mark PRUDENTIAL by
relying on its proprietorship of trademark registrations and its use in
commerce
of the trademark PRUDENTIAL in the United Kingdom and in other
countries of Europe, Asia and Africa, even though Complainant admits
that in
the United States of America, the PRUDENTIAL mark is owned by The Prudential
Insurance Company of America, which is not affiliated
to the Complainant.
Complainant
states it is one of the leading life assurance companies in the UK. It has used
the mark PRUDENTIAL continuously since
1848. It is a wholly owned subsidiary of
Prudential plc, a company listed on the London and New York stock exchanges.
Complainant
alleges its principal activity and the one of its affiliates is to provide
financial services in the UK and many countries
of the world. The business has
over 7 million customers in Europe and 2.2 million customers in Asia.
Complainant
contends that in addition to its registered rights, both itself and its
affiliates have very substantial goodwill in the
mark PRUDENTIAL. This is also
seen by Complainant’s and its affiliates presence on the Internet through
various web sites.
Complainant
contends Respondent has no rights or legitimate interests in the disputed
domain name because:
Respondent
is not associated, connected or authorized by Complainant to use the mark
PRUDENTIAL. It says Respondent, with his wife
Elizabeth Davis, carries on
business under the name “Economy Web Design” which offers web page design and
search engine maximization
advice and services.
Complainant
alleges that Respondent is not the owner nor the beneficiary of any trademark
or service mark which is identical to the
domain name.
Complainant
states that Respondent is not commonly known by the name PRUDENTIAL.
Complainant
contends Respondent’s web site does not indicate, nor is it aware of, any
demonstrable preparations by Respondent to use
the disputed domain name in
connection with a bona fide offering of goods or services.
Complainant
adds that the disputed domain name is not presently leading to any web site.
Complainant
contends the disputed domain name has been registered in bad faith.
Complainant
contends Internet users will falsely associate the disputed domain name with
the business of Complainant.
Complainant
contends Respondent should be presumed to have had knowledge of Complainant’s
rights in the PRUDENTIAL mark since it has
been notified by the Registry
Operator that Complainant had submitted an IP Claim in respect of the trademark
PRUDENTIAL.
Complainant
contends Respondent must have been aware of Complainant’s rights and goodwill
in the mark PRUDENTIAL at the time of his
application to register the disputed
domain name because of the great international renown of Complainant.
Complainant
alleges that further or in the alternative, Respondent will have been aware of
the use of the name PRUDENTIAL in California
by Prudential California Realty in
connection with its real estate business.
Complainant
states that Prudential California Realty is not affiliated to Complainant.
Complainant
contends Respondent must be aware of Prudential California Realty because
Respondent is a business partner of Elizabeth
Davis who is a real estate agent
in Lake county California affiliated with the Coldwell Banker Real Estate
Corporation. Therefore,
Elizabeth Davis, as a Coldwell Banker affiliate, is a
competitor in Lakeport of Prudential California Realty.
Complainant
states that Respondent is a resident of Lakeport, California.
Complainant
also states that the HTML code for the web site at
<clearlakerealestate.ws> includes the words “Lakeport Prudential
realty”.
Complainant
therefore submits that Respondent and Elizabeth Davis are fully aware that
Prudential California Realty has an office
in Lakeport, that Prudential
California Realty is in competition with Coldwell Banker and that the HTML code
for the web site at
<clearlakerealestate.ws> includes the words “
Lakeport Prudential Realty”.
Complainant
contends Respondent has registered the disputed domain name to prevent
Complainant or alternatively Prudential California
Realty from reflecting the
mark PRUDENTIAL in a corresponding domain name and primarily for the purpose of
disrupting the business
of a competitor, or in the alternative, a competitor of
his partner Elizabeth Davis.
B. Respondent
Respondent
states that Complainant acknowledges that it does not own any PRUDENTIAL
trademark status in the United States and that
it is not affiliated with the
Prudential Insurance Company of America, who owns the PRUDENTIAL mark in the
Unites States of America.
Respondent
states that Complainant acknowledges that Prudential California Realty owns the
rights and legitimate use of the name PRUDENTIAL.
Respondent
contends he is affiliated to Prudential California Realty.
Respondent
contends Complainant is guilty of Reverse Domain Name Hijacking because
Complainant has shown no interest in securing the
specific domain name <prudentialassurance.biz>
and so it appears that Complainanat is attempting to steal the name from a
rightful
name holder so it can then market itself only under the only name that
could be confused with its American competitor, Prudential
Insurance Company of
America.
Respondent
submits that it is inappropriate for Complainant to claim trademark status for
a U.S. domain name based upon its trademark
status in other countries,
especially when a competitor already holds the same trademark in the U.S.
Respondent
contends he owns the company Economy Web Design.
Respondent
contends that in the case of a Prudential California Realty Agent such as his
wife, or that of a Prudential California
Realty Agency, such as his current
employer, there could be no better name than <prudential.com>, followed
closely by <prudential.biz>.
Real Estate is one of the highest name recognition environments in the business
community, making the domain name <prudential.biz>
an enormous business-generating asset.
Respondent
claims his wife, Elizabeth Davis, was hired by the owner of the Prudential
California Realty.
Respondent
contends he prepared a web site for Elizabeth Davis, in which she offered her
business and services under the name Prudential
California Realty, and featured
the PRUDENTIAL logo and trademark.
Respondent
alleges that the best interim web site domain name available at the time was
<clearlakerealestate.ws> which Respondent
obtained until such time as the
new ".biz" TLDs were made available.
Respondent
alleges Prudential California Realty hired him in late September to create a
separate web site for Prudential California
Realty.
Respondent
contends he applied for the domain name <prudential.biz>
in late August. The name was suitable for and could be legitimately used for
either web site.
Respondent
states that prior to the domain name <prudential.biz>
being officially granted to Respondent, Respondent was notified of
Complainant’s intent to challenge the domain name. Therefore,
Respondent has
voluntarily temporarily withheld the site out of respect for “due process”, and
the STOP Policy (8) which prohibits
Registrar transfers during the Complaint
challenge.
Respondent
alleges that while the Prudential California Realty website was in the process
of being created, the owner became ill and
found it necessary to temporarily
close the Prudential California Realty office while he treated for his illness.
Respondent contends the Prudential California Realty
website, in the midst of being created by Respondent, has been temporarily
delayed.
Respondent contends as it can be seen from the “in
progress” web site, he has shown demonstrable preparations to use the domain
name
in connection with a bona fide offering of services.
Respondent
claims that the illness of the owner of Prudential California Realty should not
be a factor in the decision of the Panel.
Because the website is on hold
doesn’t mean it should be presumed to not be in use.
Respondent
contends the attempted use by a Complainant, of a third party, to satisfy
Complainant’s requirement of proof, has been
deemed inappropriate and denied by
previous Panels.
Respondent
alleges he was working for and on behalf of Prudential California Realty. This
fact should deny any claim of bad faith.
Respondent
submits that if a Prudential California Real Estate page were displayed under
the name <prudential.biz> and
offering real estate services, users would more likely properly associate it
with Prudential California Realty and would not
falsely associate the site with
Prudential Assurance Company Limited of the United Kingdom.
Respondent
contends if Complainant were to prevail in this challenge and market themselves
under the US TLD <prudential.biz>
there is no doubt that users would likely falsely associate the web site as the
business of the US trademark holder Prudential Insurance
Company of America.
Respondent
contends the Respondent appears to be guilty of Reverse Domain Name Hijacking
by attempting to steal the domain name to
use it in bad faith.
Respondent
contends his action in not withdrawing from the registration process after
being served with the Conflict Notice, was merely
the lawful exercise of “due
process” of the complaint procedures, to which he is entitled by law and STOP
Policy and Rules.
Respondent
contends he was not aware of the great renown of Complainant.
Respondent
alleges Complainant should not assume, since it acknowledges it holds no
trademark for the name PRUDENTIAL in the United
States, that it automatically
would have exclusive rights to the domain name in the US.
Respondent
contends Complainant acknowledges that Prudential California Realty has at
least an equal and interchangeable claim to
the use of the trademark as
Complainant as well as rights and interests in the disputed domain name.
C. Additional Submissions
Complainant
contends Respondent’s reasoning in response to the allegation that he
registered the domain name in bad faith having no
right or legitimate interest
in the domain name is, on a fair reading of the Response, unclear and
confusing.
Complainant
restates that the mark PRUDENTIAL is of great value to it.
Complainant
contends in most of the major search engines Complainant’s group web site
appears in the top ten rankings when the search
term PRUDENTIAL is entered. In
such circumstances it is inconceivable that Respondent would not have known
that the mark PRUDENTIAL
was of substantial value to Complainant.
Complainant
contends it uses PRUDENTIAL as a trademark and as the distinctive element in
domain names in many countries of the world.
The same cannot be said by
Respondent.
Complainant
contends ".biz" is not a US domain name. It is open to any business
or individual across the globe.
Complainant
contends there is no proof that Respondent is properly to be regarded as
affiliated with Prudential California Realty
so as to give him any rights in
the name PRUDENTIAL.
Complainant
alleges it is not guilty of reverse Domain Name Hijacking. It states that if
the Panel orders the transfer of the domain
name to Complainant it will make
good faith use of it.
Complainant
alleges there is no explanation as to why an application made allegedly at the
request of an employee of a franchisee
of the owner of the mark PRUDENTIAL in
the US gives Respondent any legitimate interest in respect of the domain name.
Complainant
contends there is no evidence that Respondent was authorized to use the domain
name.
Complainant
alleges that the owner of Prudential California Realty appears to have had no
need for a new domain name neither does
he appear to have requested that one be
obtained for him.
Complainant
contends it does not know whether the owner of Prudential California Realty
does intend to re-open his business when he
is able to do so.
Complainant
contends Respondent, having no right himself to use the name PRUDENTIAL and
knowing of Complainant’s registered rights
in the mark PRUDENTIAL affirmatively
took steps to obtain the registration of the domain name.
Complainant
alleges Respondent had the opportunity of registering any number of other
permutations so as to avoid an exact match.
Complainant
contends there is no reason why a Complainant may not rely on the rights of a
third party in making out an allegation
of bad faith registration, as
Complainant does in these proceedings.
Complainant states that at the date Respondent elected
to proceed with the registration of the domain name following the notice of
the
IP Claim filed by Complainant, his wife was not in the employ of Prudential
California Realty. Neither was Respondent at that
time, nor is he now, employed
by the owner of Prudential California Realty to create a web site for the
owner.
Respondent’s Additional Submissions
Respondent alleges that the date of notification that an
IP Claim had been filed by Complainant was 6 months before the closure of
Prudential California Realty’s office and when his wife had her own Prudential
California Realty web site. Using Complainant’s own
argument, it stands to
reason, therefore, that if notification was, in fact, received 6 months
earlier, before the closure, bad faith
could not have occurred.
Respondent
contends the argument that an other business legally operating under the same
mark in another country should be deprived
of their rights is absurd.
Respondent
contends the stand-alone word PRUDENTIAL, with the remainder of the company
name, merely means the act of being prudent.
As such, any business, could
legally operate under a name containing the word PRUDENTIAL without infringing
on the rights of Prudential
Assurance Limited of the UK.
Respondent
acknowledges that Complainant has a right to apply for and use the
".biz" TLD as does any other entity legally
entitled to operate under
the chosen name.
Respondent
still submits that the Panel should conclude that the internet public it is
commissioned to protect will be more likely
to confuse Complainant’s Prudential
Assurance Company UK with Prudential Insurance Company of America, than it will
be to confuse
a Prudential California Realty Office with Prudential Insurance
Company.
Respondent contends that the name was applied for
initially for his wife’s Prudential California Realty web site and that he has the right to obtain a domain name on
behalf of his client since it is a standard function for a web site designer.
Respondent
alleges that in his letter, the owner of Prudential California Realty states
that his intention is to improve his health
to a point that he can open the
business. His rights are not abridged by the temporary suspension of the web
site due to his illness.
Respondent
contends it applied for <prudentialrealty.biz> to avoid this action,
however the application was unsuccessful.
Respondent
contends Complainant could have and still can apply for
<prudentialassurance.biz>, which is still available.
Respondent
contends he has presented evidence of demonstrable preparations to use the
domain name in connection with a bona fide offering
of services.
Having reviewed the evidence submitted
by the parties and their written representations, the Panel makes the following
findings:
h Complainant
does have (some) rights in the mark PRUDENTIAL that it registered in different
countries (exhibits 4, 5, 6, 7, 8, 9, 10
and 11). Complainant has satisfied the
Panel that in addition to its registered rights, Complainant and its affiliates
have substantial
goodwill in the mark PRUDENTIAL. The evidence submitted by
Complainant shows Complainant sustained presence on the Internet through
various web sites (exhibit 14).
h The
Panel finds that although Complainant has rights in the mark PRUDENTIAL, it
does not have exclusive and universal rights having
admitted that it does not
own any PRUDENTIAL trademark status in the United States given another entity,
Prudential Insurance Company
of America, owns the PRUDENTIAL mark in the United
States of America. As well, Complainant has admitted that Prudential California
Realty owns rights and legitimate use of the name PRUDENTIAL.
h The Panel finds
that Respondent's initial web site preparation does indicate reasonable
demonstrable preparations by Respondent to
use the disputed domain name in
connection with a bona fide offering of services, as Respondent prepared a web
site for his wife
in which
she offered her business and services under
the name Prudential California
Realty, featuring its corporate logo together with the PRUDENTIAL trademark.
h The
Panel finds that Complainant has not satisfied its burden to show that
Respondent acted in bad faith in registering the domain
name <prudential.biz>.
Introduction
Paragraph
15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(i)
the domain name is identical to a trademark or
service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(iii)
the domain name has been registered or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these
STOP proceedings, the Panel
may exercise its discretion to rely on relevant UDRP precedent where applicable
and has done so.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service
mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which
a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining
that a disputed
domain name is not identical to the mark in which the Complainant asserts
rights.
On this first issue, the Panel finds that
Complainant does have rights in the mark PRUDENTIAL which is identical to the
disputed domain
name; In any event, Respondent
has not disputed this issue. Based on the
evidence submitted, it can be said that Complainant has some goodwill in the
mark PRUDENTIAL,
however it has failed to show that its exclusivity for the
mark should naturally extend beyond the countries in which it
has registered the mark. More
importantly, Complainant admits that in the United States of America the
PRUDENTIAL mark is owned by
the Prudential Insurance Company of America, which
is not affiliated to it and admits that Prudential California Realty owns the
rights and legitimate use of the name PRUDENTIAL.
The Panel can rely on any of the
following circumstances, but without limitation, to find that Respondent has
rights or legitimate
interests in the domain name :
(i)
Respondent
is the owner or beneficiary of a trade or service mark that is identical to the
domain name; or;
(ii)
Before
any notice to Respondent of the dispute, Respondent's use of, or demonstrable
preparations to use, the domain name or a name
corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(iii)
Respondent
(as an individual, business or other organization) has been commonly known by
the domain name, even if it has acquired
no trademark or service mark rights.
(STOP Policy ¶¶ 4(c)(i) -
(iii).)
In the case at hand, it is
undisputed that Respondent was hired by the owner of Prudential California
Realty to create a web site
and has engaged in preparations to use the web
site. Respondent has submitted evidence to that effect at exhibit H.
The Panel has given little
weight to the temporary setback of the owner of Prudential California Realty.
It is not because the web
site is on hold due to illness that it is not
intended to be in use. The owner has manifested, in the letter dated May 21,
2002 (exhibit
E) his intentions to return to business once his health allows
him to. There is certainly some evidence of preparations to use now
and most
importantly there is evidence of an intention to use prior to the challenge by
Complainant.
Although Panels have held that
registration of an infringing domain name in order to opportunistically trade
on the goodwill of the
Complainant's mark does not constitute a bona fide
offering of goods and services, nothing shows in the case at hand of such
wrongful
intention by Respondent. Both parties offer services that are
different and users are not likely to conclude to an affiliation between
Complainant and Respondent's website.
The Panel refers to the
decision in Twentieth Century Fox Film Corp. v. Benstein, FA 102962
(Nat. Arb. Forum Feb. 27, 2002), where it was decided that registering a domain
name without evidentiary support of use
or preparations for use was
insufficient to establish that Respondent had rights or interests in respect to
the domain name at issue.
There must be demonstrable preparations to use the
domain name in connection with a bona fide offering of services.
A
contrario, in the
present case given the above findings as to the demonstrable preparations, the
Panel is of the view that the Complainant
has not discharged its burden of
proving that Respondent has no right or legitimate interest in the disputed
domain name and Respondent
has satisfied the Panel that it has rights or
legitimate interests in the disputed domain name.
Having
found in favor of Respondent on the previous count, this element does not
necessarily need to be examined. However, given the
nature of this Complaint,
the Panel chose to deal with it.
To
prove bad faith under the STOP Policy, a Complainant only needs to prove either registration or use of the domain name in bad faith, not both as the UDRP
requires. STOP Policy 4(b) is otherwise very similar to UDRP 4(b). Complainant
may demonstrate Respondent's bad faith by showing that Respondent registered
the domain name for the purpose of preventing Complainant
from registering
domain names that reflect its mark. While under the STOP Policy there is no
pattern of conduct requirements, the
simple allegation is not enough to
conclude automatically to bad faith, particularly that in this case:
i)
Complainant
did not show that there was competition between itself and the Respondent;
ii) While Complainant has (some) trademark
rights for PRUDENTIAL in association with the wares and services it offers and
produces, it
does not enjoy exclusive rights nor can the mark be said to be
inherently distinctive. Furthermore, it has failed to adduce evidence
which
would justify extending trade-mark protection beyond the services and
territories it already covers. In other words Complainant
does not enjoy the
universality of rights to benefit of a deemed intention of Respondent to adopt
in bad faith.
Last but not least, the Panel
accepts the submission by Respondent that nothing would prevent Complainant
from having <prudentialassurance.biz>
(or a variant thereof) as a domain
name.
As mentioned by this Panel in Kalamazoo
Sec. Print v. Thralow, FA 112430 (Nat. Arb. Forum June 27, 2002):
"While Panel acknowledges that the word "competitor" has been
broadly
interpreted both under STOP Policy and UDRP to encompass claims by
entities that might not traditionally be viewed as competing,
in the case at
hand, there is no evidence that Respondent registered the domain name primarily
to prevent Complainant of so doing
or for the purpose of disrupting the
business of a competitor."
In the circumstances of this case,
Complainant has failed to satisfy its burden to prove that Respondent acted in
bad faith in registering
<prudential.biz>.
For all of the above, Complainant has
failed to meet its burden that the domain name had been registered or was being
used in bad
faith by Respondent.
The
Respondent has asked for a declaration by the Panel that the Complaint was
brought in bad faith and constitutes an abuse of the
administrative
proceeding.
A
claim of Reverse Domain Name Hijacking by Complainant must meet a heavy burden
of proof by Respondent: there must be evidence that
the Complaint was brought
in bad faith. See Teranet Land Info. Servs. Inc. v. Verio, Inc.,
D2000-1123 (WIPO Jan. 25, 2001) and Church in Houston v. Moran,
D2001-0683 (WIPO Aug. 2, 2002) noting that a finding of reverse domain name
hijacking requires bad faith on Complainant's part;
bad faith was not proven in
these decisions because Complainant did not know and should not have known that
one of the three elements
in the Policy 4(a) was absent. The Panel adopts the
finding in Credit Suisse Group o/b/o Bank Leu AG v. Leu Enters. Unlimited,
FA 102972 (Nat. Arb. Forum Feb. 23, 2002) where "the Panel considered the
Complaint to have been misconceived rather than brought
in bad faith".
Additionally,
the argument brought forward by Respondent concerning the Prudential Insurance Company
of America cannot be relied upon
as no one can use the name of another to plead
its own case.
For the foregoing reasons, the Panel concludes that :
-
The domain name
registered by the Respondent is identical to the trademark to which the
Complainant has rights;
-
The Respondent has
rights or legitimate interest in respect of the domain name; but
-
The domain name
has not been registered by the Respondent in bad faith.
The Complainant having failed to meet its
burden on two of the three elements, which need to be proven cumulatively under
the STOP
Policy, accordingly, the Panel
dismisses the Complaint. No
further challenges against this domain name shall be permitted under the
STOP Policy.
Jacques A. Léger Q.C,
Panelist
Dated: July 8, 2002
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