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The Prudential Assurance Company Limited v. Osaro Godwin [2005] GENDND 1759 (25 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Prudential Assurance Company Limited v. Osaro Godwin

Case No. D2005-0934

1. The Parties

The Complainant is The Prudential Assurance Company Limited, domiciled in the United Kingdom of Great Britain and Northern Ireland, represented by Lovells, France.

The Respondent is Osaro Godwin, domiciled in India.

2. The Domain Name and Registrar

The disputed domain name <prudentialbankplc.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2005. On September 2, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 2, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 27, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2005.

The Center appointed Prof. Keita Sato as the sole panelist in this matter on October 11, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is The Prudential Assurance Company Limited registered in England and Wales, a wholly-owned subsidiary of Prudential plc. The parent company named Prudential plc was founded in the United Kingdom over one hundred fifty years ago, and is also registered in England and Wales. The Complainant owns registration of the PRUDENTIAL trademark for class 36, including banking in the United Kingdom, and in CTM for classes 35, 36 and 42, including financial service. It operates the website at “www.prudential.co.uk”.

The Respondent registered the domain name <prudentialbankplc.com> on November 8, 2004.

The Complainant recently became aware of Respondent’s use of the email address “philipbroadley@prudentialbankplc.com”. Philip Broadley is currently the Group Finance Director of Prudential plc, and had no knowledge that his name was being used in connection with the email address “philipbroadley@prudentialbankplc.com”. The Complainant seeks the transfer of the disputed Domain Name.

5. Parties’ Contentions

A. Complainant

In its Complaint, the Complainant argues that the Respondent is linked to the fraud in question in the front section, and alleges that the Domain Name is confusingly similar to the trademark PRUDENTIAL owned by the Complainant, as the disputed Domain Name reproduced the mark in its entirety and the generic words “bank”, “plc” and the prefix “.com” are affixed. The Complainant contends that many Internet users would think that the website associated with the Domain Name (and the corresponding email addresses) is in some way connected with the Complainant.

The Complainant further alleges that the Respondent has no rights or legitimate interests in the Domain Name, since the Respondent has no trademark registrations in the USA, Canada, France and other 18 major developed countries, and that the Respondent has never been authorized by the Complainant to use any of its trade marks. Moreover, the Complainant argues that the Respondent’s use of the Domain Name cannot be considered to be in connection with a bona fide offering of goods or services because the Respondent operates a webpage in connection with the Domain Name at issue.

The Complainant also alleges that the Respondent registered the Domain Name at issue in bad faith, since it is inconceivable that the India-based or UK-based Respondent was unaware of the Complainant’s rights before his registration of the Domain Name. And the Respondent used the Domain Name at issue in bad faith since it sends many emails with the email address “phillipbroadley@prudentialbankplc.com”. In addition, the Complainant alleges that the Respondent used the Domain Name in bad faith, because the WHOIS details of the Respondent are false, and that the Respondent is linked to the registration of three other domain names which could potentially be used to commit financial fraud in Nigeria.

For all these reasons, the Complainant requests the Panel to issue a decision ordering that the Domain Name <prudentialbankplc.com> be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complaint to succeed, the Panel must, under paragraph 4(a) of the Policy, be satisfied:

i) that 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

ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name at issue is confusingly similar to a service mark in which the Complainant has rights. As stated above, the Complainant has registered the PRUDENTIAL mark in the United Kingdom for the class which covers banking or financial services. When Internet users see the Domain Name <prudentialbankplc.com>, the word “prudential” is immediately recognizable as the dominant part of the domain name. This dominant part of the domain name is identical to the PRUDENTIAL trademark in which the Complainant has rights. The postfix “plc” used after a British company name indicates that the company is a public limited company, a type of limited company whose shares may be offered for sale to the public. The designation “plc” was introduced in the United Kingdom by the Companies Act 1980, and Internet users will easily recognize that “plc” is a generic abbreviation which indicates a company type (See, Shell International Petroleum Company Limited v. Alfred Donovan, WIPO Case No. D2005-0538). Since the disputed Domain Name consists of the word “prudential” and the generic word “bank”, which relates to the services offered by the Complainant under the trademark PRUDENTIAL, followed by “plc”, the Panel finds that the domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

On the second question of whether the Respondent has rights or legitimate interests in respect of the domain name, the Panel finds that the Respondent has no such rights or legitimate interests. It has become frequently accepted by UDRP panels that the burden of proof on this second element shifts to the respondent once a complainant has established a prima facie showing that none of the three circumstances found in paragraph 4(c) of the Policy applies (See, Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, Chanel, Inc v. Estco Technology Group, WIPO Case No. D2000-0413, The Sportsman’s Guide, Inc v. Vipercom, WIPO Case No. D2003-0145). In this case, the Complainant provided evidence of its research results showing that there are no trademark registrations or records for PRUDENTIAL BANK. In addition, the silence of the Respondent may be an indication that he has no rights or legitimate interests in respect of the disputed domain name, as many prior UDRP panels have accepted (See, Edgar Rice Burroughs, Inc v. Adtel Communications, WIPO Case No. D2000-0115, Singapore Airlines limited v. European Travel Network, WIPO Case No. D2000-0641, Bayerische Motoren Weke AG v. Null, WIPO Case No. D2002-0937).

Therefore, the Panel finds that the second requirement of paragraph 4(a) of the Policy is made out.

C. Registered and Used in Bad Faith

The third and last of the requirements found in paragraph 4(a) of the Policy is that the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent 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 its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

There are a number of factors which indicate that the domain name was registered and used in bad faith. The Respondent has used the domain name to send emails from the email address “phillipbroadley@prudentialbankplc.com”. As previously established, Phillip Broadley is the Group Finance Director of Prudential plc, the Complainant’s parent company. The email address was established through the Respondent’s registration and use of the Domain Name. Also, the Respondent operates a website in connection with the disputed Domain Name which is “under construction”. The website of the Respondent has been “under construction” since the registration of the domain name. The Panel considers that even a website that is “under construction” can be an indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source of the website (See, Bancolombia S.A. v. Elpidia Finance Corporation, WIPO Case No. D2000-0545).

A further indication of the Respondent’s bad faith is that the WHOIS details, including his address and telephone number, that he provided to the Registrar are false. The use of false contact information in the Respondent’s initial registration application is evidence that the Respondent registered the domain name in bad faith (See, Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849, and its citing cases). In this case, the actual Indian address given for the Respondent is incorrect. Also, it is highly improbable that the Respondent was unaware of the Complainant’s rights before his registration of the disputed Domain Name, because the PRUDENTIAL mark is well-known in the United Kingdom, and the Respondent appears to have some connection with the United Kingdom as he had previously provided in an email a British mobile telephone number as a contact detail.

Even though none of the circumstances present in this case falls squarely under the elements listed in paragraph 4(b) of the Policy, the Panel finds that all supported facts taken together demonstrate that the disputed Domain Name was registered and is being used in bad faith.

Therefore, the third requirement of paragraph 4(a) of the Policy is also made out.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <prudentialbankplc.com> be transferred to the Complainant.

Prof. Keita SATO
Sole Panelist

Date: October 25, 2005