DECISION

The Prudential Insurance Company of America v. TPB Financial a/k/a B. Evans

Claim Number: FA0203000105218

PARTIES

Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”) represented by Sue J. Nam.  Respondent is TPB Financial a/k/a B. Evans, Henrietta, NH (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <prumericaprivatebank.com>, registered with Network Solutions.

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.

 James P. Buchele, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 28, 2002; the Forum received a hard copy of the Complaint on March 1, 2002.

On March 5, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <prumericaprivatebank.com> is registered with Network Solutions and that 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 Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On March 11, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 1, 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@prumericaprivatebank.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 April 5, 2002, pursuant to Complainant’s request to have the dispute decided by a single-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 Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <prumericaprivatebank.com> is confusingly similar to Complainant’s PRUMERICA marks.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith, and has demonstrated a pattern of bad faith domain name registration.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant has provided insurance, securities, investment, financial, and real estate services throughout the United States and the world for over 125 years.  Complainant holds registered marks in PRUMERICA and in the stylized PRUMERICA and rock logo in at least 46 countries, and has expended significant sums of money to promote its services under the PRUMERICA marks through its websites and other forms of advertising and marketing.

Respondent registered the disputed domain name <prumericaprivatebank.com> on January 18, 2002, just one day after Complainant announced that it had acquired the Geneva Branch of Standard Chartered Grindlays Bank Limited, an action that would expand its private banking activities.

Complainant issued Respondent a cease-and-desist letter, to which Respondent replied by offering to sell the disputed domain name to Complainant for $900 and specifically noting that it would cost Complainant more to legally enforce its rights than to simply succumb to its attempted extortion.

Respondent has previously registered at least one domain name that infringed upon Complainant’s PRUMERICA marks, for which Complainant successfully obtained relief through an administrative proceeding such as this one.  Complainant has provided prior Panel decisions that have recognized this Respondent as having engaged in a bad faith pattern of cybersquatting.  See e.g. Prudential Ins. Co. of Am. v. SFXB a/k/a B. Evans, FA 99671 (Nat. Arb. Forum Oct. 12, 2001).

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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; and

(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 established rights in the PRUMERICA mark through registration with various countries’ trademark registrars.  It is unimportant that Respondent lives in the United States, in which Complainant has not provided evidence of trademark registration for the mark at issue.  Policy ¶ 4(a)(i) only requires that Complainant demonstrate rights in some jurisdiction.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates.  It is sufficient that a Complainant can demonstrate a mark in some jurisdiction); accord see Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

The disputed domain name is confusingly similar to Complainant’s PRUMERICA marks, as it merely adds a term that describes Complainant’s business and a generic top-level domain name “.com” to the mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has satisfactorily established its rights to and interests in the PRUMERICA marks.  Because Respondent has not submitted a Response in this matter, the Panel may presume that it holds no such rights or interests in respect to the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Further, through its offer to sell the disputed domain name to Complainant, Respondent has indicated that it likely has no interests with respect to the name.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).

Complainant asserts that Respondent has made no use of the disputed domain name whatsoever, and that it consequently cannot be deemed to have made any bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).  In the absence of a contrary claim by Respondent, the Panel will accept Complainant’s assertion as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

There is no evidence to suggest Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as TPB Financial a/k/a B. Evans.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Complainant has demonstrated that Respondent is engaged in or has engaged in a pattern of behavior intended to prevent Complainant from registering domain names that correspond to its well-known marks.  This typifies bad faith within the meaning of Policy ¶ 4(b)(ii).  See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark).

Respondent has further demonstrated bad faith pursuant to Policy ¶ 4(b)(i) by attempting to extort $900 from Complainant, an amount in excess of its out-of-pocket costs.  See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding the Respondent’s failure to use the domain name in any context other than to offer it for sale to Complainant amounted to a use of the domain name in bad faith); see also Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

Accordingly, it is Ordered that the <prumericaprivatebank.com> domain name be transferred from Respondent to Complainant.

 James P. Buchele, Panelist

Dated:  April 8, 2002

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