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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Prudential Assurance Company Limited v. Minda Post

Case No. D2008-0977

 

1. The Parties

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

The Respondent is Minda Post, Pearland, Texas, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <prudentialtrust.biz> is registered with Wild West Domains, Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2008. On June 30, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain name. On June 30, 2008 Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2008.

Email contact by the Center elicited an email response from the Respondent disclaiming any knowledge of the disputed domain name. The Respondent did not submit any Response except, as noted below in a series of informal emails provided to the Center. Accordingly, the Center notified the Respondent’s default on July 24, 2008.

The Center appointed Derek M. Minus as the sole panelist in this matter on August 7, 2008. 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 a wholly-owned subsidiary of Prudential plc, a company registered in England and Wales under the number 1397169 (both companies together with their
subsidiaries and associated companies are referred to collectively herein as “Prudential”). Prudential is an international retail financial services group and a worldwide leader in the provision of financial and insurance products and services, including trusts. It was founded in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”) over 150 years ago and today has a presence in Europe, Asia and the United States of America with over 21 million customers worldwide and 80,000 agents. At the end of December 2007, assets under Prudential’s management totalled Ј214 billion. Around 7 million of Prudential’s customers are based in the United Kingdom. In the United Kingdom, Europe, and Asia, Prudential extensively uses the PRUDENTIAL brand which has been trade marked.

The Complainant owns numerous domain names which incorporate the PRUDENTIAL trade mark, including: <prudential.co.uk>, <prudential.eu>, <prudential.fr>, <prudential.com.hk>, <prudential.co.id >, <prudential.co.za>, and <prudential.co.sg >.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that:

(a) The domain name <prudentialtrust.biz> is confusingly similar to a trademark or service mark in which the Complainant has rights.

(b) The Respondent has no rights or legitimate interests in respect of the domain name.

(c) The domain name was registered and is being used in bad faith.

B. Respondent

The Respondent did not file a Response. The Respondent’s only reply to the Complainant’s contentions was a series of emails which stated, inter alia:

on July 3, 2008: “Stop sending me spam”;

on July 16, 2008: “I have been sent 2 packets regarding case #D2008-0977. I have no idea what this is regarding and I believe it is in error. I have never heard of prudentialtrust.biz or the Complainant, Laurence Pountey Hill. Please advise the necessary parties to refrain from sending me any further correspondence. If necessary I will seek legal council”;

on July 21, 2008: “Thank you for writing me back. As I stated in my prior email, I have no clue what this is about or who you are”.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving, on the balance of probabilities, each of the following three elements:

(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant holds rights;

(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 by the Respondent.

As the Respondent did not file a Response or otherwise reply to the Complainant’s contentions, except as noted above, the Panel shall decide the complaint on the basis of the Complainant’s submissions and such inferences that can be reasonably drawn from the failure to submit a Response as the Panel considers applicable (Rules, paragraph 14(b)).

A. Identical or Confusingly Similar

The Complainant submits that the disputed domain name, <prudentialtrust.biz>, is confusingly similar to the Complainant’s PRUDENTIAL trade marks.

The Panel accepts that the Complainant is the owner of the trade mark rights in the mark PRUDENTIAL. It holds UK Trade Mark No. 2025359 registered on June 27, 1995 in class 36 for insurance and unit trust services and Community Trade Mark no. 000158600 registered on December 16, 1999 in classes 35, 36 and 42 for accounting services, financial management, unit trust, investment, computer software and computer management services.

The Complainant’s trade marks for PRUDENTIAL have acquired renown so that they benefit from the protection afforded to well-known trade marks under Article 6bis of the Paris Convention which the United Kingdom and the United States of America have been members of respectively since July 7, 1884 and May 30 1887.

Earlier decisions have found that the incorporation of a trade mark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered trademark (see Janus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201). It was also decided by the panel in Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, that “when a domain name wholly incorporates a complainant’s registered trade mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy”.

Here the disputed domain name <prudentialtrust.biz> incorporates the Complainant’s PRUDENTIAL trademark but adds the generic word “trust”, and the top level “.biz” identifier at the end. It has been held that a domain name consisting of the complainant’s trademark and ending with the “.com” gTLD is confusingly similar to the complainant’s trademark (see Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650). Merely adding the (in this context) generic word “trust”, and the top-level gTLD “.biz” at the end, would similarly not be sufficient to create a distinct domain name, and does not distinguish the disputed domain name from the Complainant’s trademark (see Arthur Guinness Son & Co. (Dublin) Ltd. v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 and The Nasdaq Stock Market, Inc. v. Jon Steinsson, WIPO Case No. D2002-0571 which deals specifically with the TLD .biz).

The Complainant also submits that incorporating a trade mark in its entirety followed by a common term can be sufficient to establish that a domain name is identical or confusingly similar to a trade mark. In PepsiCo, Inc v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, where the panel stated: “All of the contested domain names fully incorporate the trademark ‘PEPSI,’ which is a distinctive mark. The mere addition of common terms such as ‘sports’, ‘basketball’, ‘soccer’, ‘volleyball’, ‘rugby’ and the like to the ‘PEPSI’ mark, does not change the overall impression of the designations as being [ ] domain names connected to the Complainant.” Over 70 domain names all containing the distinctive mark PEPSI and an appended generic term were therefore transferred to the complainant.

The Panel finds that the domain name <prudentialtrust.biz> is confusingly similar to the Complainant’s registered trademark in which the Complainant has rights, as neither the addition of the contextually generic word “trust” nor the gTLD “.biz” nor both together, is sufficient to prevent such confusion with the Complainant’s registered trade mark, from occurring.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name (i) use of, or demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been known by the domain name; and (iii) legitimate noncommercial or fair use of a domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s trademark .

The Complainant contends that the Respondent has no rights or legitimate interests in the domain name <prudentialtrust.biz> because the Complainant has not agreed or consented to the Respondent’s use of, or registration of the disputed domain name. The Complainant and the Respondent are not affiliated with each other in any way.

There is no evidence that the Respondent is commonly known by the domain name. A preliminary search by the Complainant has revealed that the Respondent has no Community or International trade mark rights in the name PRUDENTIAL. Also, the Panel notes that the registration of the Complainant’s trademark predates by over 10 years the registration of the disputed domain name by the Respondent which occurred only recently..

There is no evidence that 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 complainant’s trademark. On the contrary the Complainant has provided evidence that the disputed domain name has been used in an “advance fee fraud” or so called “Nigerian 419 scheme”, named after the section number of the Nigerian Criminal Code dealing with fraud. The information that the Complainant provides is not simply generic, but concerns an actual case where an individual has contacted the Complainant in May 2008 to seek confirmation regarding the delivery of a consignment of money he was supposed to receive. This individual had already been conned into paying various fees to a number of people who he had been in contact with, all of whom he believed to work for the Complainant on the basis of email communications connected to the disputed domain name.

The Panel notes that the Respondent has elected not to answer this charge by failing to provide a Response. The Panel finds that the Complainant has therefore made a prima facie case of the Respondent’s lack of rights to or legitimate interests in the disputed domain name. The Respondent has not provided evidence of circumstances illustrated by paragraph 4(c) of the Policy, or any other circumstances evidencing any rights to or legitimate interests in the domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy.

The Complainant submits that the Respondent’s conduct falls within paragraph 4(b)(iv) of the Policy, which provides that:

(iv) by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

According to the Complainant’s submission, there appears to be evidence that not only has the Respondent registered and used the disputed domain name in bad faith, but that is has actively used it in the perpetration of an actual fraudulent transaction known as a “419 scam”. The Complainant argues that this is criminal activity, evidenced in at least three different actions taken by the Respondent.

First, the Complainant has provided evidence that the disputed domain name resolved to the Respondent’s holding page displaying the message: “Welcome to a Brinkster Member’s site! Currently this site is under construction. Please check back later”. Brinkster Communications Corporation is a company offering domain name registrations, web hosting, and email services, and appears to host the website found at “www.prudentialtrust.biz.” Any use (or even non use) of the domain name inevitably conflicts with Complainant’s trade marks and creates a likelihood of confusion with the Complainant’s trade marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other linked website or location to provide financial, trust products and services (see Ente Autonomo Fiera Internazionale di Milano v. b.o.n.d. srl, WIPO Case No. D2004-0791 where use of a domain name confusingly similar to a widely-known registered trademark held to be not for a bona fide business or commercial purpose).

Second, fraudsters used the Respondent’s domain name to send emails that supplied the information used to convince the victim that they were genuinely associated with the Complainant. The emails that were sent used the names of two companies, Prudential Trust plc and Prudential Trustee plc, which have been found not to exist. Additionally, the Complainant has provided documentation that the senders of these emails used the Complainant’s trade marks, the term PRUDENTIAL and Prudential’s real address all without authorization.

Third, fraudsters quoted the company registration number of the Complainant’s parent company at the bottom of their email communications, as: “Registered
Number: 1397169: Authorised and regulated by the Financial Services Authority {FSA} United Kingdom.Copyright © 2008, PRUDENTIAL TRUSTEE PLC. All rights reserved.”

Evidence of bad faith registration is shown when registration of a domain name occurs in order to utilize another’s widely-known reputation by attracting Internet users to the registrant’s website, for commercial gain, see Sociйtй Air France v. Patrick Ory, WIPO Case No. D2003-0628.

In Confйdйration Nationale du Crйdit Mutuel v. Crйdit Mutuele Bank Sйnйgal, WIPO Case No. D2007-1331, the complainant provided evidence that the disputed domain name had at some stage been used in connection with a “419 scam”. The Panel found that that such use of the domain name “constitutes bad faith as it includes criminal activities and may divert internet users, damage the Complainant’s reputation and disrupt its business”.

Accordingly, the Panel finds from the circumstances enumerated above, that the Respondent registered and is using the disputed domain name in an attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Further the use of the domain name to engage in fraudulent activities constitutes evidence of bad faith registration and use of a domain name for purposes of paragraph 4(a)(iii).

It is therefore established that the Complainant has made out each of the three elements that it is required to prove.

 

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 <prudentialtrust.biz> be transferred to the Complainant.

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Derek M. Minus
Sole Panelist

Date: September 18, 2008