National Arbitration Forum

DECISION

The Prudential Insurance Company of America v. Prudential Realty-Bahamas

Claim Number: FA0411000362346

PARTIES

Complainant is The Prudential Insurance Company of America (“Complainant”), represented by Sue J. Nam of The Prudential Insurance Company of America, 751 Broad Street, 21st Floor, Mail Stop NJ-01-21-05, Newark, NJ 07102-3777.  Respondent is Prudential Realty-Bahamas (“Respondent”), represented by G. Gregory Hilton of T. Langton Hilton & Co., Hilton's Court, Shirley Street, P.O. Box N3706, Nassau, Bahamas.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <prudentialrealtybahamas.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 10, 2004.

On November 10, 2004, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the domain name <prudentialrealtybahamas.com> is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 November 11, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 1, 2004 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@prudentialrealtybahamas.com by e-mail.

A timely Response was received in hard copy only on December 1, 2004, but apparently resubmitted as an additional submission on December 7, 2004.  It has been considered. 

On December 2, 2004, Complainant filed an additional submission.

On December 16, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed P. Jay Hines as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant has used its PRUDENTIAL name and mark for over 125 years in connection with insurance, securities, investment, financial and real estate services throughout the United States and the world.  The PRUDENTIAL mark is registered in over 50 countries, including more than 100 Federal trademark registrations for PRUDENTIAL and PRUDENTIAL combination marks in the United States, several of which are comprised in part of the words “Real Estate” or “Realty.” 

Complainant also owns a trademark registration for the mark PRUDENTIAL in the Bahamas. 

Complainant operates several web sites, such as <www.prudential.com>, <www.prudentialrealestate.com>, and <www.prudentialproperties.com>.  Complainant spends millions of dollars for advertising and promotion of its services under the PRUDENTIAL mark on its web sites and in other forms of advertising and marketing.  Complainant claims that its house mark is recognized by millions of people around the world as a symbol of financial strength, quality and trust. 

Respondent is not affiliated with Complainant.  It has not been licensed or otherwise authorized to use the PRUDENTIAL name and mark.  After learning that Respondent registered the domain name <prudentialrealtybahamas.com>, Complainant sent a cease and desist letter on November 9, 2004 by e-mail to the address identified in the domain name registration records.  The e-mail was returned undelivered.  Complainant also attempted to telephone Respondent at the number identified in the domain name registration records.  A recording advised that the number is not in service.  Respondent’s web site actively promotes the sale of real estate in the Bahamas. 

Complainant contends that the subject domain name is confusingly similar to its PRUDENTIAL mark because it combines the identical mark with the generic term “realty,” which is strongly associated with Complainant’s real estate business, and the geographic term “Bahamas.”  Complainant contends that Respondent can have no rights or legitimate interest because it is attempting to mislead consumers by giving them the impression that Respondent is somehow associated with Complainant.  Finally, Complainant contends that Respondent has attempted to trade off the fame of Complainant’s mark to mislead consumers.  Complainant also notes that Respondent also displayed Complainant’s Rock Logo on its web site.

B. Respondent

Respondent is an unincorporated association dealing exclusively with real estate sales and services solely in the Bahamas.  Respondent’s sole claim is that Complainant, not being a Bahamian citizen or Bahamian company, cannot legally operate a real estate business in the Bahamas.  Respondent supports this claim with excerpts from the relevant statutes.  Respondent claims that thus there can be no conflict. 

Respondent acknowledges that the Rock Logo of Complainant is “unique to the Complainant” and has ceased all use. 

C. Additional Submissions

Complainant asserts that Respondent has not refuted Complainant’s allegations that it is deliberately misleading the public into believing that Respondent is affiliated with Complainant. 

FINDINGS AND DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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

The addition of a generic or descriptive term to a mark in which the Complainant has rights will not alleviate the likelihood of confusion.  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); 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).  Given the fact that Complainant has established rights with respect to real estate services, the addition of the term “realty” supports rather than detracts from the confusing similarity.  Similarly, the addition of the geographic term “Bahamas” does not negate the confusing similarity.  Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name net2phone-europe.com is confusingly similar to the Complainant’s mark); VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VeriSign mark and the domain names verisignindia.com and verisignindia.net).   The instant situation is distinguishable from Prudential Ins. Co. of Am. v. QuickNet Communications, FA 146242 (Nat. Arb. Forum Mar. 27, 2003) because the domain name prudentialmotors.com had no apparent connection to Complainant and its services. 

Rights or Legitimate Interests

Respondent has not come forward with affirmative evidence that it is commonly known as Prudential Realty-Bahamas.  RMO, Inc. v. Burberage, FA 96949 (Nat. Arb. Forum May 16, 2001; G. D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion). 

The lack of a physical presence by Complainant in Respondent’s geographical area does not leave Respondent free to appropriate Complainant’s mark for competitive services.  The Internet does not have geographical borders and Respondent’s use of the disputed domain name that trades on Complainant’s well-known mark cannot be a bona fide offering of goods and services pursuant to Policy Paragraph 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy Paragraph 4(c)(iii).  Vapor Blast Mfg. Co. v. R&S Tech, Inc. FA 96577 (Nat. Arb. Forum Feb. 27, 2001). 

Registration and Use in Bad Faith

The Panelist finds that Respondent is trading on the reputation of Complainant and that Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.  S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum March 26, 2001).  It does not matter that Complainant may not operate in the Bahamas since potential customers are able to access Respondent’s web site from anywhere.   

Given the international renown of Complainant and its numerous registrations, Respondent had actual or constructive knowledge of Complainant’s rights prior to registering and using its domain name.  This also indicates bad faith pursuant to Policy Paragraph 4(b)(iii) Digi International v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000). 

Respondent’s use of a domain name that is confusingly similar to Complainant’s well-known family of marks to attract Internet users to Respondent’s web site for commercial gain is evidence of bad faith registration and use pursuant to Policy Paragraph 4(b)(iv).  Further, Respondent’s initial adoption of Complainant’s well-known Rock Logo supports this determination.  H-D Michigan, Inc. v. Peterson’s Auto, FA 135608 (Nat. Arb. Forum Jan. 8, 2003); Luck’s Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with Complainant’s marks).

DECISION

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

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

P. Jay Hines Panelist
Dated: December 22, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1541.html