DECISION

The Prudential Insurance Company of America v. Koch Basin LLC

Claim Number:  FA0301000143706

PARTIES

Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”). Respondent is Koch Basin LLC, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <prudentialvegas.com>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 30, 2003; the Forum received a hard copy of the Complaint on January 31, 2003.

On January 30, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <prudentialvegas.com> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 31, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2003 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@prudentialvegas.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 February 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 makes the following assertions:

1. Respondent’s <prudentialvegas.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark.

2. Respondent does not have any rights or legitimate interests in the <prudentialvegas.com> domain name.

3. Respondent registered and used the <prudentialvegas.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, The Prudential Insurance Company of America, has used the PRUDENTIAL mark for over 125 years in connection with its insurance, securities, investment and real estate services. Complainant holds over 100 U.S. Patent and Trademark Office (“USPTO”) registrations for the PRUDENTIAL mark, many of which are incontestable pursuant to 15 U.S.C. § 1065.[1] More specifically, Complainant holds USPTO Reg. No. 693,628 for the PRUDENTIAL mark registered on February 23, 1960.

Complainant’s PRUDENTIAL trademark is the subject of trademark registrations in over 50 countries.

Complainant and its affiliated companies operate numerous websites that use the PRUDENTIAL mark as an integral component of the second-level domain, including, inter alia: <prudential.com>, <prudentialsecurities.com>, <prudential-bache.com, <prudential.co.kr> and <prudential.co.jp>. Each year, Complainant expends millions of dollars advertising and promoting its services offered under the PRUDENTIAL mark.

Complainant has developed a tremendous amount of goodwill in the PRUDENTIAL mark as a result of its long and continuous use of the mark to describe its financial, real estate, insurance and related services.

Respondent, Koch Basin LLC, registered the <prudentialvegas.com> domain name on April 10, 2000. Complainant’s investigation of Respondent’s use of the domain name indicates that the subject domain name resolves to a website displaying various commercial advertisements and services, including real estate services. Respondent’s website provides links to various informational and commercial websites that are unrelated to Complainant or its services (e.g., <drugstore.com> and <ab-workout.com>). Complainant’s research reveals that Respondent’s website provides links to competing real estate brokerage services such as <homeadvisor.com>, <realtyonline.net> and <cyberhomes.com>. Respondent is not affiliated with Complainant, and has not been licensed or otherwise authorized to make use of the PRUDENTIAL mark.

Respondent’s website refers to a real estate agent affiliated with a franchisee of Complainant and provides the agent’s relevant contact information. However, this agent is not the registrant of the domain name.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 PRUDENTIAL mark through its registration with the USPTO, and subsequent continuous use of the mark in commerce to identify its financial, real estate and insurance products and related services.

Respondent’s <prudentialvegas.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and deviates only with the addition of the geographic term “vegas.” The addition of a geographic term does not create distinguishing characteristics and Complainant’s mark remains the dominant element of the domain name; thus, Respondent’s domain name is rendered confusingly similar to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark).

Additionally, generic top-level domains (such as “.com”) fail to add any distinct characteristics to a domain name and are inconsequential when conducting an analysis under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

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

Rights or Legitimate Interests

Respondent failed to contest Complainant’s assertions; therefore, all reasonable inferences made by Complainant are regarded as true. Once Complainant asserts that Respondent does not have any rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to provide credible evidence that supports its claim of validity in the domain name. Because Respondent did not submit evidence substantiating its claim in the <prudentialvegas.com> domain name, Respondent has failed to advance any set of circumstances that would support its rights in the domain name. See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Uncontested evidence submitted by Complainant indicates that Respondent’s domain name resolves to a website that displays various commercial links, including links that resolve to Complainant’s competitors in the real estate industry. Respondent’s use of Complainant’s famous mark to attract Internet users to websites and products unrelated or in competition with Complainant fails to establish rights in the domain name. Such infringing use of <prudentialvegas.com> does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks).

No evidence or circumstances before the Panel suggest Respondent is commonly known by the domain name, or the “prudentialvegas” second-level domain. Respondent is not affiliated with Complainant or the PRUDENTIAL mark. Although Respondent has posted contact information for an agent who is part of Complainant’s network, this act alone does not confer a right to Respondent to use the PRUDENTIAL mark. The <prudentialvegas.com> domain name resolves to a website that posts content with no apparent connection to Complainant’s PRUDENTIAL mark, besides the portion of the website dedicated to competing services. Because of the aforementioned circumstances and Complainant’s longstanding use of the PRUDENTIAL mark for over a century, the Panel presumes that Respondent cannot establish rights in the domain name under Policy ¶ 4(c)(ii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on website that would justify use of the word NOKIA within the domain name).

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

Registration and Use in Bad Faith

Respondent registered the domain name in bad faith because it had knowledge of Complainant’s rights in the PRUDENTIAL mark prior to registration. The famous nature of Complainant’s PRUDENTIAL mark and the numerous USPTO registrations on the Principal Register raise the inference that Respondent was aware of Complainant’s mark. Respondent’s subsequent registration of <prudentialvegas.com>, despite having knowledge of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Jeff Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Respondent’s bad faith use of the disputed domain name is articulated under Policy ¶ 4(b)(iv). Complainant has provided the Panel with unrefuted evidence that indicates the <prudentialvegas.com> domain name resolves to a website that displays numerous commercial products and links, including links to real estate competitors of Complainant. Given the fame of the PRUDENTIAL mark, especially in the real estate industry, reasonable Internet users are induced into believing that there is a connection between Complainant, the PRUDENTIAL mark and Respondent’s commercial website. Respondent is intentionally attempting to attract Internet users to its website, for commercial gain, via unauthorized use of Complainant’s mark. Therefore, Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

Judge Harold Kalina (Ret.), Panelist

Dated:  March 4, 2003

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