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The Prudential Insurance Company of
America v. Rich Arzaga Marketing Company
Claim Number: FA0203000106104
PARTIES
Complainant
is The Prudential Insurance Company of
America, Newark, NJ ("Complainant") represented by Sue J. Nam. Respondent is Rich Arzaga
Marketing Company, San Ramon, CA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mypruweb.com>,
<mypruweb.net>, and <pruweb.net>, registered with Network Solutions, Inc.
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.
Rodney
C. Kyle as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum ("the Forum")
electronically on March 25, 2002; the
Forum informs the Panel that the Forum
received a hard copy of the Complaint on March 25, 2002, but its Forum date
stamp is March
26, 2002.
On
March 28, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain names <mypruweb.com>,
<mypruweb.net>, and <pruweb.net> are registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the domain
names. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. 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 28, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
April 17, 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@mypruweb.com, postmaster@mypruweb.net, and
postmaster@pruweb.net by e-mail.
A
timely Response was received and determined to be complete on April 17, 2002
but did not include exhibits, which were received on
April 22, 2002.
Additional
Submissions were received in accordance with the Forum's Supplemental Rule 7 on
April 22, 2002 from the Complainant and
on April 26, 2002 from the Respondent.
On April 29, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Rodney C. Kyle as
Panelist.
RELIEF SOUGHT
Complainant
requests that the registrations of the domain names at issue be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
Complainant makes three main contentions in its Complaint. Those contentions
are that with respect to each of the domain names
at issue
(1)
the domain name registered by the Respondent is 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.
More
particularly, the Complaint includes
(1)
as to the first of those three main contentions:
(i)
(a) having contended in paragraphs 1 and 2 as
to using the name and mark "PRUDENTIAL" and to owning trademark
registrations
"in over 50 countries, including … over 100 U.S. trademark
registrations" (Exhibit 1 being contended as listing marks that
consist of
"PRUDENTIAL" or that comprise "PRUDENTIAL" plus other
subject-matter, together with copies of certificates
of registration thereof),
in paragraph 3 of the Complaint the Complainant contends that "[the
Complainant] owns an extensive
family of 'Pru' formative marks (hereinafter
referred to as 'Pru Marks'), which it has registered or filed for registration
with
the U.S. Patent and Trademark Office",
(b) in paragraph 3 of the Complaint, that
"the public and the media often refer to Prudential as 'Pru'",
(c) in paragraph 4 of the Complaint, that
"[the Complainant has used the] Pru Marks in numerous domain names
throughout the world",
(d) in paragraph 5 of the Complaint
(seemingly in view of the facts alleged in paragraph 3, and perhaps paragraph
4, of the Complaint),
that "consumers and the trade have come to associate
'Pru' exclusively with Complainant",
in
paragraph 6 of the Complaint (seemingly in view of the facts alleged in
paragraphs 3, 4, and 5 of the Complaint), that the Complainant
"has
achieved a tremendous amount of goodwill as a result of its long and continuous
use of its well-known … Pru Marks, and
they are recognized by millions of
people around the world as a symbol of financial strength, quality, and
trust",
(e) in paragraph 7 of the Complaint, that the
Respondent "is identified in the Whois records as the registrant of the
domain names
at issue" and
(f) in paragraph 12 of the Complaint, that
the domain names at issue "all incorporate Prudential’s well-known PRU
mark in conjunction
with the generic terms 'my' and/or 'web.' As such, they are confusingly similar to
Prudential’s famous PRU mark, satisfying the first element of the ICANN test. Indeed, it has been held that the addition
of such generic terms as 'my' has 'the effect of focusing the reader’s
attention on the
Complainant’s trademark' and therefore results in a likelihood
of confusion. Sony Corporation v. Sin, Eonmok, Case No. D2000-1007 (WIPO Nov. 16,
2000) (finding 'mysony.com' confusingly similar to Sony’s famous mark). See
also, Oracle Corporation v. Internet Nexus Inc., FA 96336 (Nat. Arb.
Forum Feb. 5, 2001) ('Given the prevalence of "my[trademark].com"
domain names on the Web, the Respondent’s
use of the Complainant’s famous mark
ORACLE in myoracle.com would strongly indicate a connection with the
Complainant')" and
(ii)
that each of the following Complaint Annexes contains evidence that is
rationally probative of the proposition
stated herewith:
(a) Exhibit 2, as to the "Pru" aspects
of "(1)(i)(a)" of this list,
(b) Exhibit 3, as to "(1)(i)(b)" of
this list,
(c)
Exhibit 4, as to "(1)(i)(c)" of this list and
(d) Exhibit 5, as to "(1)(i)(e)" of
this list;
(2)
as to the second of those three main contentions:
(i)
in paragraph 8 of the Complaint, that
the "Respondent is not affiliated
with
Prudential, and has not been licensed or otherwise authorized to use the 'Pru'
name" and
(ii) in
paragraph 13 of the Complaint, that the "Respondent has no rights or
legitimate commercial interest in the [domain names at
issue] and has no
legitimate interest with respect to the Prudential Marks or Pru Marks";
and
(3)
as to the third of those three main contentions:
(i)
(a) in paragraph 9 of the Complaint, that on
"March 5, 2002, Prudential’s counsel sent to Respondent a letter objecting
to Respondent’s
use of [the Complainant's] Pru Mark in [the domain names at
issue]",
(b) in paragraph 10 of the Complaint, that on
"March 20, 2002, Prudential’s counsel followed up with a telephone call to
Mr. Rich
Arzaga. Mr. Arzaga
acknowledged receiving the letter of March 5, and asked what compensation
Prudential would offer for the [domain names
at issue]. Counsel responded that Prudential would
reimburse the cost of registration and transfer, whereupon Mr. Arzaga indicated
that that
amount was not sufficient and declined to transfer the [domain names
at issue].",
(c) in paragraphs 15 and 16 of the Complaint,
that "In view of the
widespread use and advertising by
Prudential and its affiliates of the Prudential Marks and the Pru Marks, there
can be no doubt that
these trademarks are well known to the consuming public
and the trade. See The Prudential Insurance Company of America v. Garzotto, FA
95917 (Nat. Arb. Forum, December 9, 2000) ('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.') ¶ As such, even the
mere registration
by Respondent of a domain name that incorporates the famous PRU mark, without a
legitimate interest in the "Prudential"
and "Pru" name, is
evidence of bad faith. See Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000)
(evidence of bad faith includes actual or constructive knowledge of commonly
known mark
at the time of registration); 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 the complainant’s famous
mark); Victoria’s Secret et al v. Hardin,
FA 96694 (Nat. Arb. Forum May 31, 2001) (in light of the notoriety of the
complainants' famous marks, the respondent had actual
or constructive knowledge
of the BODY BY VICTORIA marks at the time she registered the disputed domain
name and such knowledge constitutes
bad faith).",
(d) in paragraph 17 of the Complaint, that
"there can be no question that Respondent is knowingly attempting to trade
off the fame
of Prudential’s famous PRU mark.
Respondent has not only registered three domain names that directly
incorporate PRU, but uses at least one of them in connection with
a website
that displays Prudential’s famous Rock Logo in connection with a real estate
sign. The site states:
Welcome to the construction page of
www.mypruweb.com. This site will become an important source of training, tools,
and ideals for
real estate professionals.
The estimated launch date is Summer 2001. If you have ideas or suggestions, please submit them to the email
address below.
The only email address provided is
'mypruweb@aol.com.'"
(e)
in paragraph 18 of the Complaint, that the "overall effect of this
web page
is to give the impression that it is
sponsored or affiliated with Prudential.
Given the fame of the Prudential marks, especially in the real estate
business that is the subject of Respondent’s website, a reasonable
Internet
user cannot but be lead to believe that there is a connection between
Prudential and Respondent. See Sony
Kabushiki Kaisha v. Inja, Kil, D 2000-1409 (WIPO Dec. 9, 2000) (finding bad
faith and use where it is 'inconceivable that the respondent could make any
active
use of the disputed domain names without creating a false impression of
association with the Complainant'); The
Prudential Insurance Company of America v. Prudential Mortgage Loans, FA
103880 (Nat. Arb. Forum March 20, 2002) (based on fame of Prudential’s mark and
the overlap in the parties’ services, holding
that 'reasonable Internet user
cannot help but to be led to believe that there is a connection between
Complainant and Respondent'
and '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'). Respondent clearly is attempting to attract,
for commercial gain, Internet users to its domain names by creating a
likelihood of confusion
as to the source, sponsorship, affiliation or
endorsement of Respondent’s website and services." and
(f) in paragraph 19 of the Complaint, that the
"Respondent’s bad faith is
further demonstrated by its seeking
compensation in excess of its registration and transfer costs. See
The Prudential Insurance Company of America v. Douglas Irvine, FA 95768
(Nat. Arb. Forum, November 6, 2000); see
also World Wrestling Fed.
Entertainment, Inc. v. Boxman, D00990001 (WIPO, Jan. 14, 2000) (finding the
Respondent used the domain name in bad faith because he sought the sale of the
domain
name in excess of any out of pocket costs)." and
(ii)
that each of the following Complaint Annexes contains evidence that is
rationally probative of the proposition
stated herewith:
(a) Exhibit 6, as to "(3)(i)(a)" of
this list and
(b) Exhibit 7 (contended as being a print out
of the web site dated 21 March 2002) and Exhibit 8 (being a copy of the United
States trademark
registration certificate 1,616,000 of the Complaint's Rock
Logo), as to
"(3)(i)(d)" of this list.
B.
Respondent
The
Respondent contends, in its Response, against various aspects of the
Complaint's three main contentions.
More
particularly, the Response includes
(1)
as to the first of the Complaint's three main contentions:
(i)
(a) in paragraphs 1 and 2 of the Response,
that the domain names in issue "are in no way similar to the PRUDENTIAL
name and mark",
and, in paragraph 12 of the Response, that the
"Complainant has not shown that the [domain names at issue] are identical
to
or confusingly similar to any of Complainant's marks" and more
particularly that the domain names at issue "are not identical
to any mark
used or registered by Complainant" in that the "Complainant has
provided no evidence that it has used or registered
'mypruweb.com,'
'mypruweb.net,' or 'pruweb.net,' or any words or terms even close to"
them,
(b) in paragraph 3 (and to some extent
paragraph 5) of the Response, that the "Respondent is unaware of any
federal trademark registration
for the mark PRU except by a company that is not
Complainant", and, in paragraph 12 of the Response, that
"Complainant's
alleged mark PRU is not registered and is not
famous",
(c) in paragraph 3 (and to some extent paragraph 5) of the Response,
that "[t]here are numerous other examples of 'Pru' formative
marks that
are also not owned by Complainant", and, in paragraph 12 of the Response,
that "another company has registered
the PRU mark and hundreds of other
entities are using it. The [domain
names at issue] are no more confusingly similar or identical to Complainant's
marks than any of the hundreds of other
domain names that are registered with
'pru' in them and that are not owned by Complainant. In addition, it is highly
unlikely that
anyone wanting to find the Prudential Insurance Company of
America or one of its affiliates would enter the domain name mypruweb.com,
mypruweb.net or pruweb.net.",
(d) in paragraph 4 of the Response, that
"none of the domain names with websites mentioned by Complainant have the
terms 'my' or
'web' in them",
(e) in paragraph 4 (and to some extent
paragraph 5) of the Response, that "In addition to Complainant's use of
the letters 'pru,'
hundreds of other entities that have registered and are
using domain names containing the letters 'pru,'",
(f) in paragraphs 6 and 8 of the Response,
that "Prudential may have achieved a tremendous amount of goodwill as a
result of its
use of the Prudential Marks" but that the "Respondent
is not using the 'pru' mark by itself" and that the domain names
at issue
"are significantly different" and "intended to indicate that
[they do] not belong to Complainant",
(g) in paragraph 9 of the Response, seemingly
that the Respondent received the letter referred to in "(3)(i)(a)" of
the above
list, but that the use by the Respondent is merely "the
legitimate use of the letters 'pru'" and
(h) in paragraph 10 of the Response,
seemingly that the Respondent had the conversation referred to in
"(3)(i)(b)" of the above
list, but that "because Respondent was
still working on the design for his web site and it was not up and running yet,
Respondent
offered to transfer [the domain names at issue]to Complainant for
their fair market value" and that, in that conversation, the
Respondent
referred to the domain names at issue as being his "legitimate" domain
names and
(ii)
that each of the following exhibits submitted by the Respondent contains
evidence that is rationally probative of
the proposition stated herewith:
(a) exhibit A, as to "(1)(i)(b)" of
this list,
(b)
exhibit B,
as to "(1)(i)(c)" of this list and
(c)
exhibits C
and D, as to "(1)(i)(e)" of this list;
(2) as to the second of the Complaint's three
main contentions: in paragraph 13 of the Response, that "Respondent
obtained his real
estate agent's license several years ago. Last year, the license was upgraded to a
broker's license. In the Spring of
2001, Respondent decided to expand his real estate business into several
areas. One of the areas into which
Respondent intended to expand was providing training for real estate
agents. After researching various real
estate companies, Respondent determined that agents who worked for Prudential
franchisees across the
country could benefit from his services. Thus, Respondent decided to target
independent sales agents who were associated with independent franchisees of
Complainant or one
of its affiliates.
There are many thousands of such independent real estate agents who use
the Prudential name themselves, although they are not employees,
or even
independent contractors, of Complainant or its affiliates, and who Respondent
believes may be interested in Respondent's
services. Thus, Respondent has a legitimate interest in the [domain names
at issue]."; and
(3) as to the third of the Complaint's three
main contentions: in paragraphs 14 - 16, 17 - 18, and 19 of the Response, that
"Respondent
did not register the [domain names at issue] in bad
faith. While Respondent believed that
the [domain names at issue] were not confusingly similar to Complainant's
marks, Respondent thought
real estate agents who use the Prudential name and
were looking for training may be attracted to the mypruweb domain name or
pruweb
domain name. This was done in a
good faith intent to develop business that would benefit these independent
sales agents. Although in this case any
alleged use of Complainant's mark is extremely limited (three letters in domain
names of 8 or 6 letters),
in other cases where the marks are much more obvious,
such use was found to be acceptable, e.g., mercedesshop.com (WIPO Case No.
D2001-0160); draw-tite.com (WIPO Case No. D2000-0017); samfrancis.com (WIPO
Case No. D2000-0673); cromalin.com (WIPO Case No. D2000-0130);
ICQPlus.com
(WIPO Case No. D2001-0003) and catparts.com (NAF Case No. FA-95497). ¶
Respondent was not aware that it may not be proper
to use the Rock of Gibraltar
picture on Respondent's web site.
Respondent will remove the picture from the web site. In addition, Respondent will post a notice
on the web site associated with the [domain names at issue] stating that the
web site is
not sponsored by or affiliated with Complainant or any of its
subsidiary companies. ¶ It is not bad faith to offer, upon being contacted
by a
third party, to transfer a domain name for more than the registration and
transfer costs, as discussed in ['(1)(i)(h)' of this
list]."
C.
Additional Submissions
Complainant's
The
Complainant's Additional Submissions are three-fold.
First, in
response to the Response's contentions of the domain names at issue not being
confusingly similar to PRU and of PRU not
being famous (seemingly as made in
"(1)(i)(a)", "(1)(i)(b)", "(1)(i)(c)", and
"(3)" of the
above-listed items from the Response), the Complainant
contends that "This argument flies in the face of Respondent's concession
that the PRU incorporated into the [domain names at issue] is specifically a
reference to Prudential. Clearly,
Respondent was aware of the strong association between PRU and Prudential
before he registered that name and was attempting
to capitalize on that very
association." (The concession
appears to be made in "(2)" and "(3)" of the above-listed
items from the Response.) The Complainant
then proceeds to basically repeat the
second half of "(1)(i)(g)" of the above-listed items from the
Complaint.
Second, in
response to the Response's contentions of intent to place a notice of
disclaimer on the web sites associated with the domain
names at issue
(seemingly as made in "(3)" of the above-listed items from the
Response), the Complainant contends that
"Even the addition of a
conspicuous disclaimer of affiliation is not sufficient to dispel
confusion. See Madonna Ciccone p/k/a
Madonna v. Dan Parisi and 'Madonna.com,' D2000-0847 (WIPO Oct. 12, 2000)
('Respondent's use of a disclaimer
on its web site is insufficient to avoid a
finding of bad faith. First, the
disclaimer may be ignored or misunderstood by Internet Users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent's actions. Such confusion is a basis for finding a
violation of Complainant's rights.'); The Prudential Insurance Company of
America v. Prudential
Mortgage Loans, FA 103880 (Nat. Arb. Forum March 20,
2002) ('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 also Estee Lauder,
Inc. v.
estelauder.com, estelauder.net and Jeff Hanna, D2000-0869 (WIPO Sept. 25, 2000)
(awarding domain name to the complainant
despite disclaimers). Upon seeing the [domain names at issue],
Internet users will believe, at a minimum in the first instance, that
Respondent's services
are sponsored, affiliated or approved by Prudential, when
they are not."
Third, in
response to the Response's contentions regarding Policy paragraphs 4(a)(ii) and
4(a)(iii) (seemingly made in "(2)"
and "(3)"of the
above-listed items from the Response), the Complainant contends that "With
respect to the second and
third ICANN factor, Respondent's submission bolsters
the finding that Respondent has no legitimate interests in the [domain names
at
issue] and that Respondent registered and is using the [domain names at issue]
in bad faith. Respondent does not and
cannot claim that he is affiliated with Prudential or that he or his business
is legitimately known as 'Pru.'
Nor can Respondent claim that the [domain names
at issue] are descriptive of his business.
Unlike the registrants of the domain names 'mercedesshop.com,'
'drawtite.com,' 'sanfrancis.com,' 'cromalin.com,' 'ICQPlus.com' and
'catparts.com,'
Respondent is not offering Prudential-branded goods and does not have a
legitimate, nominative need to refer to Prudential.
Instead, Respondent intends
to provide training for real estate agents and chose the [domain names at
issue] because he 'thought
real estate agents who use the Prudential name and
were looking for training may be attracted to the mypruweb domain name or
pruweb
domain name.' Respondent thus
readily admits that his use of Prudential's PRU mark is for the purposes of
attracting Internet users who are familiar
with Prudential's famous mark.
Respondent's efforts to trade off of Prudential's fame as a means of creating
traffic to his website
is precisely the type of bad faith conduct that the
ICANN proceeding was designed to address.
See Madonna Ciccone p/k/a Madonna v. Dan Parisi and 'Madonna.com,'
D2000-0847 (WIPO Oct. 12, 2000) (domain name awarded to Complainant,
finding
intent to trade off name and reputation of the Complainant in operating a
domain name that incorporated the Complainant's
name). In short, Respondent should not be
permitted to use Prudential's fame and goodwill as a means to an instant
customer base."
Respondent's
The
Respondent's Additional Submissions are three-fold. Generally, they are
basically as to the "hundreds" of other instances
referred to in
"(1)(i)(c)" and "(1)(i)(e)" of the above-listed items from
the Response. The Respondent basically
repeats that aspect of those items, adds
(along the lines of "(2)" and "(3)" of the above-listed
items from the
Response) that the "hundreds of domain names" include
"domain names referring to real estate and used by [thousands
of]
independent sales agents who do not work for Complainant", and adds three
sets of statements that relate to either or both
of those contended
"hundreds" of realty domain names and those contended
"thousands" of realty sales agents.
First,
seemingly contending against confusing similarity (as contended in the
"First" branch of the Complainant's three-fold
Additional
Submissions), the Respondent contends that "Respondent's domain names
are no more confusingly similar than these
other domain names. The SONY
and ORACLE cases are easily distinguished as the Panel relied on the very
unique, strong marks in those
cases, the use of the same mark by the company,
and the fact that the domain name only added the 'my.'"
Second,
seemingly contending against confusing similarity and its relationship to a
disclaimer on a web site (as contended in the
"Second" branch of the
Complainant's three-fold Additional Submissions), the Respondent contends that:
Furthermore,
the tens of thousands of independent real estate sales agents that are
associated with franchisees of Complainant, or
Complainant's affiliated
companies, will not be confused by Respondent's use of the domain names.
Given the hundreds of domain names
with "PRU" in them, any
association with Complainant will not be assumed and certainly would be made
clear with a disclaimer.
There was no bad faith in registering or using
the domain names.
Third,
seemingly contending against applicability of Policy paragraphs 4(a)(ii) and
4(a)(iii) (as contended in the "Third"
branch of the Complainant's
three-fold Additional Submissions), the Respondent contends that:
Complainant's
new allegations regarding the second and third ICANN factors are
untenable. Complainant argues that it is legitimate
to market to Mercedes
owners, or Caterpillar owners, BUT it is not acceptable to market to the tens
of thousands of independent real
estate sales agents who are associated with
Prudential franchisees. This is a vast market (perhaps larger than the
market of individuals
needing "cat [caterpillar] parts"), and a
legitimate market for Respondent to attempt to reach with his
services.
FINDINGS
1.
The Panel finds the exhibits submitted by
the Respondent are to not be part of the Panel's substantive basis for deciding
the complaint.
2.
The Panel finds each party's Additional Submissions are to be part of the Panel's substantive basis for deciding the Complaint
but that the exhibits submitted by the
Respondent are to not thereby become part of the Panel's substantive basis for
deciding the Complaint.
3.
The Panel finds that, with respect to each of the domain names at issue, it has
been proven in this proceeding that within Policy
paragraph 4(a)
(i) the domain name registered by the
Respondent is confusingly similar to a trademark or service mark in which the
Complainant has rights;
(ii)
the Respondent has no rights or legitimate interests in respect of the domain
name; and
(iii) the domain name has been registered
and is being used in bad faith.
DISCUSSION
GENERAL
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."
There are both procedural and substantive aspects to
this case.
PROCEDURAL ASPECTS
The two main procedural aspects of this case are as to
the above-mentioned (i) exhibits submitted by the Respondent; and (ii)
Additional
Submissions.
Exhibits Submitted by the Respondent
Rule 5 includes the following:
(a) Within twenty (20) days of the date of commencement
of the administrative proceeding the Respondent shall submit a response to
the
Provider.
(b) The response
shall …
(ix) Annex any documentary or other evidence upon which
the Respondent relies, together with a schedule indexing such documents.
Rules 5(a) and 5(b)(ix) apply to this case. The
Respondent complied with Rule 5(a) only to the extent of pleadings and
arguments,
and not as to Rule 5(b)(ix) "documentary or other evidence upon
which the Respondent relies".
In view of the immediately preceding paragraph hereof,
Rule 14 applies to that aspect of this case. Rule 14 is as follows:
(a)
In the event that a Party, in the absence of exceptional circumstances,
does not comply with any of the time periods established by
these Rules or the
Panel, the Panel shall proceed to a decision on the complaint.
(b)
If a Party, in the absence of exceptional circumstances, does not comply
with any provision of, or requirement under, these Rules
or any request from
the Panel, the Panel shall draw such inferences therefrom as it considers
appropriate.
As a result, and in view of Rule 15(a), the Panel did
not consider substantive aspects of the above-mentioned exhibits submitted by
the Respondent. (The Panel's decision to not consider substantive aspects of
those exhibits is additionally supported by the discussion
in the sentence that
begins with "Third" in the last paragraph of the discussion
below under the heading of "Additional Submissions".)
Additional Submissions
Paragraph 1 of the Policy is that
Proceedings under Paragraph 4 of this Policy will be
conducted according to the Rules for Uniform Domain Name Dispute Resolution
Policy
(the "Rules of Procedure"), which are available at
www.icann.org/udrp/udrp-rules-24oct99.htm, and the selected
administrative-dispute-resolution
service provider's supplemental rules.
and Rule 8 includes that
All communications between a Party and the Panel or the
Provider shall be made to a case administrator appointed by the Provider in
the
manner prescribed in the Provider's Supplemental Rules.
Supplemental Rule 8 is such a supplemental rule and is
as follows: "The Complaint, Response, and additional written statements
and documents provided in Paragraph 12 of the Rules and Paragraph 7 of these
Supplemental Rules constitute the complete record to
be considered by the
Panel." Supplemental Rule 8 applies to this case. (Rule 12 is as follows:
"In addition to the complaint
and the response, the Panel may request, in
its sole discretion, further statements or documents from either of the
Parties."
Rule 12 does not apply to this case.)
As a result of Supplemental Rule 8 applying to this
case, the Panel has considered Supplemental Rule 7 which is as follows:
a. A party may submit additional written statements and
documents to the Forum and the opposing party(s) within five (5) calendar
days
after the date the Response was submitted or the last date the Response was due
to be submitted to the Forum, whichever occurs
first.
b. Each submission
must:
i. be timely
received by the Forum;
ii. be accompanied
by an additional submission fee of $250;
iii. include proof of service of these submissions upon
the opposing party(s);
iv. be submitted in
either hard copy or electronic form.
c. The opposing party may respond, in hard copy or
electronic form, to an additional submission filed in accordance with
Supplemental
Rule 7(a); such response must be submitted to the Forum and the
opposing party(s) within five (5) calendar days after the date the
additional
submission was submitted.
d. Additional submissions and responses to additional
submissions may not amend the original Complaint or Response.
Supplemental Rule 7 applies to this case and appears to
have been complied with by each
party's Additional Submissions, so each party's Additional Submissions are to be part of the Panel's substantive basis for deciding
the complaint. There are three aspects to that finding, the third of which
is a
caveat as to the Respondent's Additional Submissions. First, both the
Complainant's and the Respondent's Additional Submissions appear to comply with
Supplemental Rules 7(a), 7(b), and 7(c).
Second, the Complainant's
Additional Submissions repeat some of what is in the original Complaint (which
repetition appears to be permissible),
and by responding to the Response rather
than attempting to amend the original Complaint they also comply with
Supplemental Rule
7(d). Third, the Respondent's Additional Submissions
repeat some of what is in the original Response (which repetition appears to be
permissible),
but they also implicitly refer to the exhibits submitted by the
Respondent (which exhibits were not received until April 22, 2002
which was the
deadline for, and was the date of, the Complainant's Additional Submissions);
if the Panel were to consider those exhibits
as thereby becoming part of the
Panel's substantive basis for deciding the complaint then that would amount to
allowing the Respondent
to use the Respondent's Additional Submissions to amend
the original Response so as to include those exhibits (and, even worse, would
amount to allowing the Respondent to do so without, it seems, the Complainant
having had the opportunity to address those exhibits
in the Complainant's
Additional Submissions), so the Respondent's Additional Submissions would not
comply with Supplemental Rule
7(d). As a result of those three aspects, and in
view of Rule 15(a), the Panel therefore found (i) the Complainant's Additional
Submissions
to be part of the substantive basis for deciding the complaint; and
(ii) the Respondent's Additional Submissions to be part of the
substantive
basis for deciding the complaint but only as pleadings (and arguments)
unsupported by the exhibits submitted by the Respondent.
SUBSTANTIVE
ASPECTS
IN GENERAL
Paragraph
4(a) of the Policy requires that each of the following three elements must be
proven for an order to issue that a domain
name 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.
In
view especially of Rule 15(a) and the above discussion under the heading of
"Procedural Aspects", the Panel notes three
rules and principles of law that it deems applicable to
ascertaining whether each of those three elements have been proven. First,
that
Both
[dispositive] and evidential facts must, under the law, be ascertained in some one or more of four possible modes: 1. By
judicial admission (what is not disputed); 2. By judicial notice, or knowledge
(what is known or easily knowable); 3. By judicial perception (what is
ascertained directly through the senses; cf. "real evidence");
4. By
judicial inference (what is ascertained by reasoning from facts already
ascertained by one or more of the four methods here
outlined).[1]
Second, especially as to mode "3",
that Rule 10(d) provides that "The Panel shall determine the
admissibility, relevance,
materiality and weight of the evidence." Third,
as to construing and applying Rule 10(d), especially as to whether mode
"1" rather than mode "3" applies: a
complainant’s pleading
of fact that is not disputed (or, phrased differently, not "put in
issue") by a respondent against
whom it is contended, is an admission by
that respondent, so evidence tendered as being rationally probative of (i.e. as
being "relevant
to") establishing that fact becomes immaterial, and
hence inadmissible, as to establishing that fact.[2]
Identical or Confusingly
Similar
In
view of each party's contentions, and the above-noted three rules and principles of law, the Panel
makes two findings as to each of the domain names at issue.
First,
for the purposes of this proceeding (i) the Respondent does not dispute, and
therefore admits, that the domain name at issue
is "[the Respondent's]
domain name" within the meaning of the Policy section 4(a)(i) expression
"[the Respondent’s]
domain name is identical or confusingly similar to a
trademark or service mark in which the [C]omplainant has rights"; and (ii)
in relation to establishing the fact that the domain name at issue is the
Respondent's domain name, the evidence contained in Complaint
Exhibit 5 is
immaterial and hence inadmissible.
Second,
as for whether the domain name at issue is or is not within the meaning of the
Policy section 4(a)(i) expression "identical
or confusingly similar to a
trademark or service mark in which the [C]omplainant has rights", the
issue between the Complainant
and the Respondent is whether, and to what
extent, through use (such as to the point of being famous) or registration
of "PRU" as a trademark or
service mark (or as a formative[3]
part of one or more trademarks or service marks), such "rights"[4]
exist and are owned by the Complainant, and, if they do exist and are owned by
the Complainant, then whether the domain name is identical
or confusingly
similar thereto.
In
relation to establishing those facts in issue, evidence contained in each of
Complaint Exhibits 2, 3, and 4 is therefore material.
Complaint
Exhibits 2, 3, and 4 indicate three things.
First,
Exhibit 2 indicates, (i) by what appears to be a list by the Complainant, that
the Complainant has registrations for the mark
consisting of "PRU" in
Korea (58806), Japan (2000-83487), Mexico (649080), and Tunisia (EE990399);
(ii) by a copy of what
appears to be an e-mailed official filing receipt, that
on 2 January 2001 the Complainant filed on-line an application (78/041,385)
in
the United States Trademark Office under section 1(a) of the applicable Act for
registration of "PRU" based on use since
1 January 2000 in
association with "Insurance and financial services, namely, insurance
underwriting, administration and agency
services in the fields of casualty,
disability …; real estate brokerage, leasing and management services; and real
estate investment
services."; (iii) by a copy of a covering letter and of
an affidavit (each dated "July 31, 2001" and made on behalf
of the
Complainant, and which seem to have been intended to be faxed to the United
Stares Trademark Office on 31 July 2001 in support
of application 78/041,385),
that as stated in the affidavit expressly made as a declaration under 37 C.F.R.
§2.20 and 37 C.F.R. §2.71(d)
and expressly providing that "these
statements are made with the knowledge that willful false statements and the
like are punishable
by fine or imprisonment, or both, under Section 1001 of the
United States Code, and that such willful false statements may jeopardize
the
validity of the application and any resulting registration" the date of
first use claimed in the application as originally
filed should be amended from
1 January 2000 because instead "the mark [PRU] sought to be registered [by
the Complainant] was
first used [by the Complainant] at least as early as
January 1968, and was first used [by the Complainant]in interstate commerce
at
least as early as January 1968"; and (iv) by part of the above-mentioned
list by the Complainant, that the Complainant owns
various registrations (and
applications for registrations) of trademarks that include "PRU"
along with other letters, including
United States registrations 1343273 for
PRUNET, 1298024 for PRUFLEX, 1310397 for PRU-MED, 1481897 for PRU-MATIC,
1559250 for PRU-REVIEW,
and 1916259 for PRU MONEYMINDER.
Second,
Exhibit 3 indicates, by copies of thirteen on-line articles from 2002 (dated 4
and 5 March; and 1, 14, and 27 February) and
2001 (dated 1 and 22 October; 29
September; and 13 and 27 August) that third parties (such as the New York Stock
Exchange, as the
ticker for denoting the Complainant; a named securities
analyst, quoted by the author of an on-line article; and at least six named
authors of on-line articles for six different investment or business magazines)
have referred to the Complainant or its affiliates
as "PRU" (by the
New York Stock Exchange) or "Pru" (by the analyst and authors).
Third,
Exhibit 4 indicates, by copies of printouts from web sites, that web sites
expressly authorized by or through the Complainant
incorporate the
"PRU" mark in their respective domain names, the printouts being
(dated 5 November 2001) from <prubank.com>,
<prufn.com>,
<pru.com.tw>, <pru.co.jp>, and <prufa.com> and (dated 21
March 2002) from <prumerica.com>.
The
above-mentioned, and other, aspects of Exhibit 2 warrant three sets of
comments.
The
first set of comments as to Exhibit 2 is mainly as to registrations of
trademarks or service marks of solely "PRU".
The Exhibit 2 list is a
contention which is certified by the Complainant (in view of the second
paragraph of section 11 that spans
from page 3 to page 4 of the introductory
part of the Complaint), but it is not made under oath or as a solemn or
statutory declaration,
and, more particularly, Exhibit 2 does not contain any
copies of certificates of registration (or of register extracts) of any of
the
above-mentioned four contended registrations consisting of "PRU".
Moreover, to the extent that judicial notice can
be and has been applied by the
Panel to those four contended registrations consisting of "PRU", the
Panel does not find
that said registrations exist. That is not to say, however,
that those registrations do not exist, but rather that in this proceeding
it
has not been ascertained that they exist.
The
second set of comments as to Exhibit 2 is mainly as to applications for
registrations of trademarks or service marks consisting
of "PRU". The
Panel finds the Exhibit 2 copy of the filing receipt of the 78/041,385
application proves that said application
was filed in the United States
Trademark Office for registration solely of "PRU" in association with
the services quoted
above from the filing receipt of that application. The
Panel takes judicial notice, through the Panel's knowledge in this field
generally
and through the United States Trademark Office on-line form for
filing an application for trademark registration, that in filing
that
application the individual acting on behalf of the Complainant made the
following declaration as part of that application:
The undersigned, being hereby warned that willful false
statements and the like so made are punishable by fine or imprisonment, or
both, under 18
U.S.C. §1001, and that such willful false statements may
jeopardize the validity of the application or any resulting registration,
declares that he/she is properly
authorized to execute this application on behalf of the applicant; he/she believes the applicant to be the
owner of the trademark/service mark sought to be registered, or, if the
application is being filed under 15 U.S.C. §1051(b), he/she believes applicant
to be entitled to use such mark in commerce;
to the best of his/her knowledge and belief no other person, firm,
corporation, or association has the right to use the mark in commerce,
either
in the identical form thereof or in such near resemblance thereto as to be
likely, when used on or in connection with the
goods/services of such other
person, to cause confusion, or to cause mistake, or to deceive; and that all
statements made of his/her
own knowledge are true; and that all statements made
on information and belief are believed to be true.
(Emphasis
added.) (However, there is no indication, either in Exhibit 2 or to the extent
that judicial notice can be and has been
applied by the Panel through the
United States Trademark Office on-line database, that either of the 31 July
2001 letter or affidavit
were ever actually sent to, let alone received by, the
United States Trademark Office or, if received by the United States Trademark
Office, that the claimed date of first use was ever amended.) In view especially
of the 18 U.S.C. §1001 declaration quoted above
in this paragraph, the Panel
finds that the filing receipt of the 78/041,385 application is rationally
probative of, admissible regarding,
and to be accorded substantial weight
concerning, the Complainant's having Policy paragraph 4(a)(i)
"rights" in the trademark
or service mark "PRU" for, and
based on, use in association with "Insurance and financial services,
namely, insurance
underwriting, administration and agency services in the
fields of casualty, disability …; real estate brokerage, leasing and management
services; and real estate investment services."
The
third set of comments as to Exhibit 2 is mainly as to registrations of
trademarks or service marks for "PRU" plus other
letters. There is no
indication in Exhibit 2 or, by judicial notice to the extent that judicial
notice can be and has been applied
by the Panel such as through the United
States Trademark Office on-line database, that there has been a disclaimer of
other than
"PRU" in any of the trademark registrations therein listed
as including "PRU" plus other letters; though the
Panel recognizes
that the absence of such a disclaimer is not definitive of the matter, such a
disclaimer might have tended towards
indicating that "PRU" was distinctive
to the Complainant but that what had been disclaimed was not. (For example, the
PRUDENTIAL
INVESTMENTS certificate in Exhibit 1 contains a disclaimer of
"INVESTMENTS" whereas the PRU MONEYMINDER certificate in
Exhibit 2
does not contain a disclaimer of "MONEYMINDER", although, having said
that, the expression "MONEYMINDER"
does seem to have some
distinctiveness through apparently being a coined word.) On the other hand, two
further points should be,
and have been, considered by the Panel. One point is
that there is the Complainant's above-mentioned contention of United States
registration 1343273 for "PRUNET"; by judicial notice, to the extent
that judicial notice can be and has been applied by
the Panel through the
United States Trademark Office on-line database, the Panel finds that the
registration is for the services
of "providing and administering prepaid
health insurance services", which appears to overlap with the services
listed in
the Complainant's application 78/041,385. The other point is (i) that
Trademark Rule 2.36, 37 C.F.R. §2.36, provides that "Prior
registrations
of the same or similar marks owned by
the applicant should be identified in the application.";[5]
and (ii) that the United States Trademark Office on-line database file for the
Complainant's United States Trademark Office application
78/041,385, of which
on-line file the Panel takes judicial notice, includes under the heading of
"Prior Registrations"
some registrations listed in Exhibit 2: 1343273
(for PRUNET), 1298024 (for PRUFLEX which is listed in that database as being
for
"Underwriting Annuity Plans to Fund Individual Retirement Annuities
and Other Qualified Programs"), 1310397 (for PRU-MED
which is listed in
that database as being for "Health Care Insurance Underwriting Services"),
1481897 (for PRU-MATIC which
is listed in that database as being for "life
and health insurance payment administration services"), 1559250 (for
PRU-REVIEW
which is listed in that database as being for "insurance
underwriting services for all lines of commercial and personal property
and
casualty insurance, namely, motor vehicle insurance, homeowner's insurance,
renter's insurance, watercraft insurance, personal
catastrophe liability
insurance, accident, sickness, health and disability insurance, all lines of
property and casualty reinsurance"),
and 1916259 (for PRU MONEYMINDER
which is listed in that database as being for "electronic funds transfer,
namely automatically
deducting funds from, and crediting funds to the bank
accounts of users of the service"). In view especially of the two
immediately
preceding sentences of this paragraph, the Panel finds that the
Complainant owns the registrations of formative "PRU" trademarks
or
service marks (for "PRU" plus other letters) mentioned therein and
that said registrations are to be accorded substantial
weight concerning the
Complainant's having Policy paragraph 4(a)(i) "rights" in the
trademark or service mark "PRU"
for, and based on, use in association
with "Insurance and financial services, namely, insurance underwriting,
administration
and agency services in the fields of casualty, disability …;
real estate brokerage, leasing and management services; and real estate
investment services."
As
for Exhibit 3, the copies of the on-line articles therein do not appear to be
evidence of registration or use of
"PRU" as a trademark or service mark, per se, but, as to the sub-issue of fame, some aspects of them are
admissible and of some weight. On the one hand, in some of the articles
the
article authors relate that the New York Stock Exchange uses "PRU" as
the ticker for denoting the Complainant, but
that does not appear (in this
proceeding at least) to either be evidence of use of "PRU" as a
trademark or service mark
or to be evidence of use that is by or on behalf of
the Complainant and which would enure to the benefit of the Complainant as
trademark
or service mark use; the references do not seem to be relevant and
therefore are inadmissible. On the other hand, assuming said trademark
or
service mark exists (and the two immediately preceding paragraphs of these
reasons for decision favor that assumption), then two
points follow. First,
that the named securities analyst is quoted by an article author as referring
to the Complainant or its affiliates
as "Pru" is rationally probative
of, admissible regarding, and to be accorded at least some weight concerning,
whether
that trademark or service mark is famous; although hearsay in that it
is evidence, by an intermediary (i.e. the article author),
of an extrajudicial testimonial
assertion (by the securities analyst), where the assertor (i.e. the securities
analyst) does not
give evidence in this proceeding, the exception for business
records appears to be applicable to it.[6]
Second, that at least six authors of articles for six different investment or
business magazines have themselves referred to the
Complainant or its
affiliates as "Pru" is rationally probative of, admissible regarding,
and to be accorded at least some
weight concerning, whether that trademark or
service mark is famous. In view of the foregoing paragraph, the Panel finds the
"PRU"
trademark or service mark is famous.
As
for Exhibit 4, it is unclear to the Panel whether the copies of the website
printouts therein are evidence of use of
"PRU" as a trademark or service mark, per se, or of fame of said mark. In any event, in view of the last
sentence of each of the immediately preceding three paragraphs hereof,
those
aspects of Complaint have been proven without Exhibit 4.
As
for whether any or all of the domain names at issue are identical or
confusingly similar to said mark, they all incorporate said
mark in conjunction
with either or both of the generic terms "my" or "web" and
it has been held that the addition
of such generic terms as "my" has
"the effect of focusing the reader’s attention on the Complainant’s
trademark"
and therefore results in a likelihood of confusion. (See for
example Infospace.com, Inc. v. Delighters, Inc., D2000-0068 (WIPO May
1, 2000) finding that the domain name <myinfospace.com> was confusingly
similar to that complainant’s
INFOSPACE mark; and NIIT Ltd. v. Parthasarathy
Venkatram, D2000-0497 (WIPO Aug. 4, 2000) finding that the "domain
name 'myniit.com,' which incorporates the word NIIT as a prominent
part
thereof, is confusingly similar to the Complainant’s trade name and trademark
NIIT".) Likewise the addition of the generic
term "web", which
like "net" is a generic on-line word, does not detract from the
confusing similarity with the
Complainant’s PRU mark. (See for example Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001) finding that the
addition of the generic word "Net" to Complainant’s ICQ mark, made
the
<neticq.com> domain name confusingly similar to that complainant’s
mark.)
In view of all of the above, as to each
of the domain names at issue the Complainant's contentions are entirely
persuasive over the
Respondent's on this point and the Panel finds the domain
name registered by the Respondent is identical or confusingly similar to
a
trademark or service mark in which the Complainant has rights. The Panel
therefore finds Policy paragraph 4(a)(i) is proven.
Rights or Legitimate Interests
By Policy paragraph 4(c), in respect of
each of the domain names at issue:
Any of the following circumstances, in
particular but without limitation, if found by the Panel to be proved based on
its evaluation
of all evidence presented, shall demonstrate [the Respondent's]
rights or legitimate interests to the domain name for purposes of
[Policy
paragraph] 4(a)(ii):
(i)
before any notice to [the
Respondent] of the dispute, [the 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
(ii) [the Respondent] (as an
individual, business, or other organization)
[has] been commonly known by the domain
name, even if [the Respondent]
has acquired no trademark or service
mark rights; or
(iii)
[the Respondent is] making a legitimate noncommercial or fair use of the
domain name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at
issue.
The
Complainant's contentions are entirely persuasive over the Respondent's on this
point. The Respondent’s use of the domain names
at issue to direct Internet
users to a web site that competes with the Complainant cannot be deemed a bona
fide offering of goods
or services pursuant to Policy paragraph 4(c)(i) or a
legitimate noncommercial or fair use pursuant to Policy paragraph 4(c)(iii).
(See for example Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO
Apr. 9, 2001) finding no rights or legitimate interests where the respondent
generated commercial gain by intentionally
and misleadingly diverting users
away from that complainant's site to a competing web site; and Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) finding that use of
a mark to sell complainant’s perfume, as well as other brands of perfume, was
not a bona fide use.) Further, the Complainant contends that Respondent is not
affiliated with Prudential, and has not been licensed
or otherwise authorized
to use the “Pru” mark; and there is not even a contention in this case that
Respondent is commonly known
by any of the domain names pursuant to Policy
paragraph 4(c)(ii). (See for example Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
finding that a respondent did not have rights or legitimate interests in a
domain name
when Respondent is not known by the mark; and Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or
legitimate interest where the respondent was not commonly known by the mark
and
never applied for a license or permission from Complainant to use the
trademark.) No aspect of Policy paragraph
4(c), whether enumerated in the main body of Policy paragraph 4(c) or
implied by the preamble of Policy paragraph 4(c), avails the
Respondent in this
case.
In view of all of the above, as to each
of the domain names at issue the Panel finds the Respondent has no rights or
legitimate interests
in respect of the domain name. The Panel therefore finds
Policy paragraph 4(a)(ii) is proven.
Registration and Use in Bad Faith
By Policy paragraph 4(b), in respect of
each domain name at issue,
For the purposes of [Policy paragraph]
4(a)(iii), the following circumstances, in particular but without limitation,
if found by the
Panel to be present, shall be evidence of the registration and
use of a domain name in bad faith:
(i) circumstances indicating that [the Respondent
has] registered or [the Respondent has] acquired the domain name primarily for
the purpose
of selling, renting, or otherwise transferring the domain name
registration to the [C]omplainant who is the owner of the trademark
or service
mark or to a competitor of [the Complainant], for valuable consideration in
excess of [the Respondent's] documented out-of-pocket
costs directly related to
the domain name; or
(ii)
[the
Respondent has] registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the
mark in a corresponding domain
name, provided that [the Respondent has] engaged in a pattern of such conduct;
or
(iii) [the Respondent has] registered the
domain name primarily for the purpose of disrupting the business of a
competitor; or
(iv) by using the domain name, [the Respondent
has] intentionally attempted to attract, for commercial gain, Internet users to
[the Respondent's]
web site or other on-line location, by creating a likelihood
of confusion with the [C]omplainant's mark as to the source, sponsorship,
affiliation, or endorsement of [the Respondent's] web site or location or of a
product or service on [the Respondent's] web site
or location.
As
to the Policy paragraph 4(b) preamble, the mere registration by the Respondent
of domain names that incorporate the famous PRU
mark, without a legitimate
interest in "Prudential" or "Pru", is evidence of bad
faith. (See for example Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002)
finding that "[w]here an alleged infringer chooses a mark he knows to be
similar to another, one can
infer an intent to confuse".)
As
to Policy paragraph 4(b)(i), the occurrence and significance of the Exhibit 6
letter and of the subsequent telephone communications
are exactly as contended
by the Complainant, such that Policy paragraph 4(b)(i) avails the Complainant
in this case.
As
to Policy paragraphs 4(b)(ii) and (iii), the Respondent’s registration and use
of the three domain names demonstrates a pattern
of behavior calculated to
disrupt the Complainant’s business and prevent it from registering domain names
that reflect its marks.
(See for example YAHOO! Inc. v. Syrynx, Inc. & Hamilton,
D2000-1675 (WIPO Jan. 30, 2001) finding a bad faith pattern pursuant to Policy
paragraph 4(b)(ii) in that respondent's registration
of two domain names
incorporating that complainant's YAHOO! mark.)
As
to Policy paragraph 4(b)(iv), the occurrence and significance of the Exhibit 7
web site and the Exhibit 8 trademark registration
certificate are exactly as
contended by the Complainant. The Respondent has registered and used the domain
names at issue for commercial
gain by taking advantage of the fame and notoriety
of Complainant’s marks. In so doing, the Respondent has created likelihood of
Internet user confusion as to the affiliation or sponsorship of its web sites.
Such behavior demonstrates bad faith registration
and use pursuant to Policy
paragraph 4(b)(iv). (See for example State
Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000)
finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe
on that complainant’s goodwill and attract
internet users to that respondent’s web site.)
In view of all of the above, as to each
of the domain names at issue the Panel finds the domain name has been
registered and is being
used in bad faith. The Panel therefore finds Policy
paragraph 4(a)(iii) is proven.
DECISION
The registration of each of the domain
names at issue is to be transferred to Complainant.
Rodney C. Kyle, Panelist
Dated: May 13, 2002
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