DECISION

The Prudential Insurance Company of America v. Fidelity Funding Group

Claim Number: FA0112000102725

PARTIES

Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”) represented by Sue J. Nam.  Respondent is Fidelity Funding Group, Dallas, TX (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prudentialfundingmortgage.com>, registered with DomainPeople, 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 4, 2001; the Forum received a hard copy of the Complaint on December 4, 2001.

On December12, 2001, DomainPeople, Inc. confirmed by e-mail to the Forum that the domain name <prudentialfundingmortgage.com> is registered with DomainPeople, Inc. and that Respondent is the current registrant of the name.  DomainPeople, Inc. has verified that Respondent is bound by the DomainPeople, 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 December 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 2, 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@prudentialfundingmortgage.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 January 22, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The disputed domain name <prudentialfundingmortgage.com> is confusingly similar to the PRUDENTIAL combination of marks, in which the Complainant holds rights.

Respondent has failed to establish his rights or legitimate interests in respect of the disputed domain name.

By using a confusingly similar mark in connection with a business similar to that of the Complainant, the Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

No Response received.

FINDINGS

Complainant registered the PRUDENTIAL trademark on the Principal Register of the United States Patent and Trademark Office on February 23, 1960 as Registration No. 693,628 and has continuously used the mark in connection with a wide variety of insurance, securities, investment, financial and real estate services for 125 years.  Complainant has established its mark in connection with mortgage related services and operates the subsidiaries Prudential Mortgage Capital and Prudential Funding, LLC.   Complainants also hold registered trademarks for THE PRUDENTIAL HOME MORTGAGE COMPANY and PRUDENTIAL HOME MORTGAGE PROGRAM.  The Complainant also uses its mark in the following domain names: <www.prudential.com>, <www.prudentialsecurities.com>, <www.prudential-bache.com>, <www.prudential.co.kr>, <www.prudential.co.jp>, <www.prudentialbradesco.com.br>.

Respondent is not affiliated with Prudential and has not been licensed or otherwise authorized to use the Prudential Marks.  The Respondent registered the disputed domain name on July 30, 2000 and has used the domain, advertising “a wide variety of mortgage products.”  The Complainant has been unsuccessful in an attempt to transmit a cease and desist letter to the Respondent.  Despite using domain name registration records, a letter was returned to the Complainant while an attempt to fax was thwarted due to a disconnected phone number and e-mail was returned as undeliverable.

 

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 sufficiently established its rights in the PRUDENTIAL family of marks through registration with the U.S. Patent and Trademark Office.

The disputed domain name is confusingly similar to Complainant’s mark, as it incorporates the registered trademark of the Complainant in conjunction with “funding mortgage.”  See The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) (finding that the domain name is identical to Complainant’s PRUDENTIAL ONLINE trademark…also the root of the domain name, namely the word "Prudential," is identical to Complainant’s mark…thus, the domain name in its entirety is confusingly similar to the Complainant’s family of marks);  see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).

Further, since the Complainant and Respondent are in similar industries the domain name and trademark are considered even more confusingly similar.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding, as a result the Panel may presume that Respondent has no rights or legitimate interests in 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).

Respondent’s use of the domain name to advertise competing services is an illegitimate use and not a bona fide offering of services.  Therefore, the Respondent does not satisfy either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).  See The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of the disputed domain names is confusingly similar to Complainant’s mark.  Respondent’s use of the domain names to sell competing goods was an illegitimate use and not a bona fide offering of goods); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

There also is no evidence that the Respondent is commonly known as “Prudential Funding Mortgage,” therefore, the Respondent does not satisfy Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

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

Registration and Use in Bad Faith

The Respondent’s use of the Complainant’s trademark to promote the Respondent’s similar commercial services is evidence that the Respondent is intentionally using the domain name for personal gain by creating a likelihood of confusion and therefore, represents bad faith use as set forth in Policy ¶ 4(b)(iv).  See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks).  

Further, the factors for bad faith under Policy ¶ 4(b) are not exclusive, therefore other factors than those listed in the policy of bad faith can meet the requirement set forth under Policy ¶ 4(a)(iii).  See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”).  An additional factor that can be weighed to determine whether the Respondent acted in bad faith is how responsible the Respondent is in maintaining its domain name registration information.  Since the Respondent has taken deliberate steps to become transparent once the dispute arose over its domain name, the Respondent is considered to be acting in bad faith.  See Sud-Chemie AG v. tonsil.com, D2000-0376 (WIPO July 3, 2000) (finding that when the Respondent fails to provide accurate contact information, the Respondent is acting in bad faith); see also Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO April 10, 2000) (finding bad faith when the Respondent takes deliberate steps to ensure that communication cannot take place).

Therefore, 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 be hereby granted.

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

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: January 23, 2002

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