Prudentialmotors.com

The timeline behind prudentialmotors.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION The Prudential Insurance Company of America v. QuickNet Communications a/k/a Tim Bach Claim Number: FA0302000146242 PARTIES Complainant is The Prudential Insurance Company of America, Newark, NJ (“Complainant”). Respondent is QuickNet Communications a/k/a Tim Bach, New London, CT (“Respondent”). REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <prudentialmotors.com>, registered with Enom, 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. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2003; the Forum received a hard copy of the Complaint on February 21, 2003. On February 24, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <prudentialmotors.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 25, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 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@prudentialmotors.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 March 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 <prudentialmotors.com> domain name is confusingly similar to Complainant’s PRUDENTIAL mark. 2. Respondent does not have any rights or legitimate interests in the <prudentialmotors.com> domain name. 3. Respondent registered and used the <prudentialmotors.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 to denote the wide variety of insurance, securities, investment, financial and real estate services it has offered for over 125 years. Complainant has registered the valuable PRUDENTIAL trademark in over 50 countries, including the United States. In the U.S. alone, Complainant owns over 100 trademark registrations for the PRUDENTIAL mark and PRUDENTIAL combination marks. The earliest United States trademark registration for the PRUDENTIAL mark, as provided in the Complaint, is February 23, 1960. Complainant conducts a significant amount of business on the Internet at numerous websites that reach a worldwide audience. Some of the websites that Complainant operates include the following: <prudential.com>, <prudentialpreferred.com>, <prudentialsecurities.com>, <prudential-bache.com>, <prudential.co.kr>, <prudential.co.jp> and <prudentialbradesco.com.br>. All of these websites reflect Complainant’s PRUDENTIAL mark, as the mark is an invaluable source identifier. Complainant annually spends millions of dollars advertising and promoting its services offered under the PRUDENTIAL mark on its websites and through alternative advertising and marketing. Due to Complainant’s longstanding use of the PRUDENTIAL mark, consumers and those in financial and insurance industries associate the PRUDENTIAL mark with Complainant’s services and affiliated companies. Further, Complainant notes that the “PRUDENTIAL mark is recognized by millions of people around the world as a symbol of financial strength, quality, and trust.” Respondent registered the <prudentialmotors.com> domain name on June 30, 2002. Complainant learned of the domain name registration by Respondent on or about July 23, 2002, and immediately sent Respondent an e-mail at the address identified on the WHOIS registration record, notifying Respondent that the domain name would be monitored for improper use. On February 13, 2003, Complainant learned that Respondent actively used the <prudentialmotors.com> domain name to link to a pornographic website, specifically <bignaturals.com>. Complainant attempted to send an email to the same address it previously used for correspondence, ordering Respondent to cease and desist, but the email was returned as undeliverable. The <prudentialmotors.com> domain name currently diverts Internet traffic to the adult website. 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 proof of substantial use in the insurance and financial industry and trademark registration with the U.S. Patent and Trademark Office. The <prudentialmotors.com> domain name at issue incorporates the PRUDENTIAL mark with the addition of the word “motors.” Taken together “prudentialmotors,” the second level domain, has no apparent connection to Complainant or the insurance and financial industry. Cf. Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business). The domain name conjures up a relationship with the automotive industry, rather than Complainant’s PRUDENTIAL services. Cf. The Prudential Ins. Co. of Am. v. Irvine, FA 95768 (Nat. Arb. Forum Nov. 6, 2000) cited by Complainant and holding that <prudentialonline.com> was sufficiently similar to the PRUDENTIAL mark to cause public confusion. See, also, Donald J. Trump and Trump Hotels & Casino Resorts, Inc. v olegevtushenko a/k/a Oleg Evtushenko, FA 101509 (Nat. Arb. Forum Dec. 11, 2001) (finding that if Complainant is really making an initial interest confusion argument, it would have to be suggesting that the public would be expecting that its distinguished moniker and service mark TRUMP would be readily associated with <porntumps.com>). The domain name at issue does not suggest that the Complainant is the source, origin or sponsor of Respondent’s website. The Complainant lacks any proof of actual confusion, which is required when a domain name has such a tenuous relationship to the mark. See Bank of Am. Corp. v. Fluxxx, Inc., FA 103809 (Nat. Arb. Forum Feb. 18, 2002) (finding that Complainant failed to prove “confusing similarity” under Policy ¶ 4(a)(i) because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name <nationsbanking.com>). Complainant failed to allege any consumer confusion that would prove the <prudentialmotors.com> domain name’s “confusingly similar” status. Simply stated, “[t]he domain name at issue does not suggest that the Complainant is the source, origin or sponsor of Respondent’s website.” Id. Thus, the Panel concludes that Complainant has not satisfied its burden of proof under Policy ¶ 4(a)(i). The Panel concludes that no further analysis of the Policy need be undertaken because Complainant failed to satisfy Policy ¶ 4(a)(i). See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary). DECISION Having failed to establish the elements required under ICANN Policy, the Panel concludes that relief shall be DENIED. James A. Carmody, Esq., Panelist Dated: March 27, 2003 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.