DECISION

The Prudential Insurance Company of America v. Prudential Mortgage Loans

Claim Number: FA0201000103880

PARTIES

The Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”) represented by Sue J. Nam.  The Respondent is Prudential Mortgage Loans, Monterey Park, CA (“Respondent”) Jaime Garcia.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <prudentialloans.com>, registered with Register.com.

PANEL

The undersigned 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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 17, 2002; the Forum received a hard copy of the Complaint on January 18, 2002.

On January 25, 2002, Register.com confirmed by e-mail to the Forum that the domain name <prudentialloans.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 18, 2002 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@prudentialloans.com by e-mail.

A timely Response was received and determined to be complete on February 18, 2002.

Complainant’s Additional Response was submitted on February 20, 2002 and was filed within the time provided for additional submissions. 

On March 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is The Prudential Insurance Company of America of Newark, New Jersey.

For over 125 years, Complainant has used its well-known PRUDENTIAL name and mark in connection with a wide variety of insurance, securities, investment, financial, real estate and relocation services throughout the United States and the world.

The PRUDENTIAL trademark is the subject of trademark registrations in over 50 countries, including the United States.  In the United States, Prudential owns over 100 U.S. trademark registrations for its PRUDENTIAL and PRUDENTIAL combination marks. 

Prudential and affiliated companies operate numerous web sites around the world, which use the famous Prudential Marks, including <prudential.com>; <prudentialsecurities.com>; <prudential-bache.com>; <prudential.co.kr>; <prudential.co.jp>;<prudentialbradesco.com.br>.  Each year Prudential spends millions of dollars advertising and promoting its services marketed under the Prudential Marks on its web sites and through its other forms of advertising and marketing.

Prudential has achieved a tremendous amount of goodwill as a result of its long and continuous use of its well-known Prudential Marks.

The Prudential Marks are well established in connection with mortgage related services.  Prudential provides home equity loans and commercial mortgage loans, provides assistance with mortgage calculations, and operates the subsidiaries Prudential Mortgage Capital and Prudential Funding, LLC.

On January 19, 2000, Respondent registered the domain name <prudentialloans.com>.

Respondent is not affiliated with Prudential, and is has not been licensed or otherwise authorized to use the Prudential Marks.  Respondent’s website offers directly competing loan services, and offers, among other information, links to mortgage calculators, loan programs, and interest rates, the same information offered on Prudential’s sites.

On December 6, 2001, Prudential sent to Respondent a letter objecting to Respondent’s use of the Prudential mark in Respondent’s business name and domain name.  Prudential followed up with another letter to Respondent.  Neither letter was returned as undeliverable.

The Domain Name incorporates Prudential’s well-known PRUDENTIAL mark in conjunction with the term “loans,” a generic term highly associated with Prudential’s business and customer bases.  As such, it is confusingly similar to Prudential’s famous family of Prudential Marks.

The registration by Respondent of a domain name that incorporates the famous Prudential Marks without a legitimate interest in the “Prudential” name is evidence of bad faith.

Given the fame of the Prudential marks, especially in the business that are the subject of Respondent’s services and website, a reasonable Internet user cannot but be lead to believe that there is a connections between Prudential and Respondent.  Respondent is attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent’s website and services.

B. Respondent

Respondent is Prudential Mortgage Loans/Jaime A. Garcia of Monterey Park, California.

Respondent has been operating a business since 1997 under the name Prudential Mortgage Loans.  Respondent has a Monterey Park Business License in the name Prudential Mortgage Loans since 1999.

“Complainant has not met the conditions in accordance to the rules for Uniform Domain Name Dispute Policy in that the domain names are somewhat similar, there is a limited amount of variations possible in the English Language in relation to domain name registrations.”  “Clearly in our website it depicts that Prudential Mortgage Loans an EFG Corporation.  Nowhere in our business, nor our website, does it make any indication or representation that we are part of The Prudential Insurance of America.  Nowhere in our website does it state that we are part of the Prudential Insurance of America.  We are not trying to represent ourselves as The Prudential Insurance of America.”

Respondent has been operating since 1997.  Respondent has rights under the name Prudential Mortgage Loans.

Complainant has not provided evidence that Respondent registered the domain name in bad faith. “Most consumers would probably not know that Complainant does residential mortgage loans.  Respondent does residential mortgage loans, only.” 

C. Additional Submissions

Complainant filed Complainant’s Additional Response that argues that Respondent does not provide any explanation as to why it chose a name in 1997 that directly incorporates Complainant’s famous name and mark.  Respondent could not have been unaware of Complainant’s real estate and mortgage services, given Complainant’s long term and extensive use of its marks in these areas.  Even a cursory search on the Internet or of trademark registrations would have revealed Complainant’s use of the marks in connection with these services.  The only plausible explanation of Respondent’s use of the name “Prudential Mortgage Loans” and the domain name <prudentialloans.com> is to intentionally trade upon the fame of Prudential’s marks.  Respondent’s contentions do not deal with initial interest confusion that is inevitable from Respondent’s actions.  There is no disclaimer on Respondent’s web page.

FINDINGS

1. Complainant is The Prudential Insurance Company of America.

2. The nature of Respondent’s business organization is not made clear in the pleadings.  Respondent’s web site carries a notation that Prudential Mortgage Loans is an “EFG Corporation.”  Respondent does not contend that Prudential Mortgage Loans is, in fact, a corporation.  Respondent refers to himself in the pleadings as “Jaime Garcia dba Prudential Mortgage Loans.”  The inference is made that Prudential Mortgage Loans is a trade name registered in 1997.

3. Prudential Mortgage Loans/Jaime Garcia registered the domain name, <prudentialloans.com> on January 19, 2000.

4. Complainant has used its well-known PRUDENTIAL name and mark in connection with a wide variety of services including insurance, real estate and financial offerings.

5. Complainant owns trademark registrations in the United States and other countries for the mark, PRUDENTIAL, and PRUDENTIAL in combination with other words.  Complainant owns over one hundred such marks, including “Prudential Investments”,  “Prudential Real Estate Investors”, “The Prudential Home Mortgage Company”, “Prudential Home Mortgage Program”, “Prudential Home Equity”, and “The Prudential Realty Group” among other marks incorporating the word Prudential with other words.

6. All of Complainant’s trademark registrations pre-date Respondent’s registration of the domain name <prudentialloans.com>.

7. Complainant does not own a trademark for the word combination, prudentialloans.

8. The domain name <prudentialloans.com> is confusingly similar to Complainant’s trademarks.

9. Complainant has rights and legitimate interests in the term prudentialloans.

10. Respondent has no rights and interests in the term prudentialloans.

11. Respondent registered the domain name in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “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 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.

Identical and/or Confusingly Similar

Complainant has rights in the name “Prudential” based upon the numerous trademark registrations in the United States.  The domain name <prudentialloans.com> is confusingly similar to Complainant’s mark because it incorporates the entirety of Complainant’s PRUDENTIAL mark and adds the generic term “loans.”  The addition of a generic term to a famous mark is not enough to create a distinct mark capable of overcoming a claim of confusing similarity.  see Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001); see also Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000), which found that the domain name <casinoyahoo.com> is confusingly similar to Complainant’s mark, Yahoo. see also L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000), holding that the addition of the generic word “shop” to a famous mark does not lessen confusing similarity.

Complainant prevails on this issue.

Rights or Legitimate Interests

Complainant shows that it has not authorized or licensed Respondent to use the PRUDENTIAL mark.  No contention is made by either party that Respondent is the owner of any trade or service mark that is identical to the domain name.  Complainant contends that it has exclusive right to use the mark PRUDENTIAL.  As result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate rights and legitimate interests in the domain name. see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).

Respondent may demonstrate his rights and legitimate interests by any of the methods set out in Paragraph 4(c) of the Policy.  Respondent’s sole contention is that he has used the name Prudential Mortgage Loans in the operation of his business since the year 1997 and has owned a business license in that name since 1999.  The question to be decided is whether Respondent’s use of the name Prudential Mortgage Loans satisfies the requirement of Paragraph 4(c)(ii), which states that when a respondent can show that he has been commonly known by the domain name, even if he has acquired no trademark or service mark rights, he has shown legitimate rights or interests.  Respondent admits in the pleadings that he was well aware of the fame of the PRUDENTIAL mark at the time that he began to use Prudential Mortgage Loans. His explanation is that though the domain name and Complainant’s mark are “somewhat similar” he believes that he could use Prudential Mortgage Loans because “Nowhere in our business propaganda or website, does it make any indication or representation that we are part of The Prudential Insurance of America…we clearly are not trying to represent ourselves as The Prudential Insurance of America.”  That representation is not sufficient to make a case under Paragraph 4(c)(ii).  When Complainant became aware that Respondent was using the name Prudential Mortgage Loans, it sent a cease and desist letter requiring Respondent to stop using Prudential Mortgage Loans on the ground that the use thereof was a violation of Complainant’s trademark rights.  A respondent cannot be known by the famous trademark of another for the purposes set out in Paragraph 4(c)(ii). see Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000), which found no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a name containing the distinct and famous NIKE trademark.  The application of that reasoning to this case shows that a party, other than Complainant, would have to make an extraordinary presentation to prove that he could be legitimately commonly known as PRUDENTIAL either alone or in combination with the word “loans” for the purposes set out in Paragraph 4(c)(ii). see The Prudential Insurance Company of America v. Mr. Ng Hoong Yew, FA 101535 (Nat. Arb. Forum Dec. 27, 2001), holding that consumers around the world associate the Complainant’s marks with Prudential and its affiliated companies. see The Prudential Insurance Company of America v. Stonybrook Investments, Ltd., FA 100182 (Nat. Arb. Forum Nov. 15, 2001), holding that the public has come to associate Prudential exclusively with Complainant.  Respondent made no such showing.  It must be noted that this Panel does not and cannot decide whether Respondent can continue doing business under the name Prudential Mortgage Loans.  That is a matter to be decided in a court of competent jurisdiction.  This Panel decides only that Respondent has not proved that he has been commonly known by the domain name under the requirements set out in Paragraph 4(c)(ii) of the Policy.

Respondent cannot satisfy the requirement of Paragraph 4(c)(i) since the use of a domain name confusingly similar to Complainant’s mark and the offering of services similar to Complainant’s services is not a bona fide offering of services. see Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001); Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001).

No contention is made that Respondent’s site is noncommercial.  Paragraph 4(c)(iii) is inapplicable to this case.

Respondent has no rights or legitimate interests in the domain name <prudentialloans.com>.

Registration and Use in Bad Faith

Complainant contends that Respondent by using the domain name <prudentialloans.com> is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.  If that is shown, such circumstances present evidence of registration and use in bad faith. see Paragraph 4(b)(iv) of the Policy.

Respondent admits actual notice of Complainant’s trademark at the time he registered the domain name. Respondent concedes that: “The Prudential Insurance Company has been around for decades as an insurance company.  The Prudential Insurance Company of America is well known in the Insurance Industry.”  The famous nature of Complainant’s mark and Respondent’s actual knowledge of Complainant’s mark raises the inference that Respondent acted in bad faith in registering <prudentialloans.com>.  Evidence of bad faith includes actual or constructive knowledge of commonly known marks at the time of registration.  see Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000); Victoria’s Secret et al v. Hardin, FA 96694 (Nat. Arb. Forum Mar. 31, 2001).   Respondent offers no explanation for choosing to use Complainant’s mark in the domain name.  There is no evidence from which to infer that the domain name was selected in any manner other than in bad faith since it entirely incorporates the Complainant’s famous mark. see Dr. Karl Albrecht v. Eric Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000).

There can be no doubt that there will be a likelihood of initial interest confusion by Internet users as to the source, sponsorship, affiliation or endorsement of the web site.  An Internet user encountering the web site at <prudentialloans.com> is likely to associate the site with Complainant.  Initial interest confusion is a factor to consider on the issue of bad faith. see Foyles Ltd v. Foyle’s Books Ltd, D2000-1544 (WIPO Jan. 13, 2001).  This is particularly important when both Complainant and Respondent provide similar services, such as providing home equity loans, mortgage calculators, calculators on affordability, and information about relocation services and insurance.  A reasonable Internet user cannot help but to be led to believe that there is a connection between Complainant and Respondent. see Sony Kabushiki Kaisha v. Inja Kil, D2000-1409 (WIPO Dec. 9, 2000).  The fact that the Internet user ultimately discovers that a site is not that of Complainant, or that Respondent disclaims any association with Complainant does not cure the fault. See Estee Lauder Inc. v. esteelauder.com and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000).

It must be inferred, under the facts and circumstances of this case, that Respondent was fully aware of this likelihood of confusion at the time the domain name <prudentialloans.com> was registered.  That knowledge supplies the intentional element necessary to establish violation of Paragraph 4(b)(iv).

Sufficient proof has been advanced by Complainant, which joined with the reasonable inferences to be drawn from the facts and circumstances of this case, lead to the conclusion that the domain name in question was registered and used in bad faith.

DECISION

                  It is the finding of this Panel that the domain name, <prudentialloans.com>, now registered to Respondent, Prudential Mortgage Loans/Jaime Garcia, be transferred to Complainant, The Prudential Insurance Company of America.

Tyrus R. Atkinson, Jr., Panelist
Dated: March 20, 2002

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