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http://www.demys.net/news/2003/04/10_pr.htm
10th April, 2003
Insurance giant The Prudential Insurance Company of America has lost a domain dispute under the UDRP after they failed to show that prudentialmotors.com - which diverted web users to a pornographic site - was confusingly similar to their Prudential trade marks.
The domain was registered by Connecticut-based QuickNet Communications in June 2002 and learning of its registration the Complainants wrote to QuickNet notifying them that the domain name would be monitored for improper use. However, by February 2003, Prudential Insurance noticed the domain was being used to forward web traffic to a pornographic web site. Obviously concerned at the change of use they wrote to the registrant again demanding that he cease and desist using the domain. However that email was returned as undeliverable and the matter was referred to the National Arbitration Forum.
As regular readers will know, the UDRP is made of three rounds, the first of which is the trade mark round. The Complainant must show that they have a trade mark (or equivalent) which is the same or confusingly similar to the domain in question. Typically this round is the easiest for the Complainant to win, however this was not the case here as the Panellist decided that there was not a strong enough link between the Prudential mark and the domain:
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 ââ¬Åprudentialmotors,ââ¬Â the second level domain, has no apparent connection to Complainant or the insurance and financial industry.
Therefore the complaint was knocked out in the first round and the registrant - who did not put in a response - will keep the domain name.
The decision does not state whether the Complainant advised the Panellist that Prudential Insurance are a major provider of auto insurance in addition to their other services and therefore that the addition of "motors" to the end of their mark might confuse Internet users, who these days are increasingly using the Internet to get motor insurance quotations. However, had such a submission been made one would have expected the Panellist to mention and deal with it specifically.
This decision therefore again highlights the importance of making a comprehensive submission - or a response - in domain dispute proceedings. A large and established trade mark portfolio can never be taken as an automatic passport to success under the UDRP.
Time may soon be running out for the registrant, however, assuming his site continues to show pornographic images. As Demys recently reported (see: If you can't do the time, don't register the domain), attempts are being made in the USA to criminalise the pointing of innocent-sounding domain names to pornographic websites such as the one in the present case. Perhaps if the current Bill becomes law, the Complainant will simply be able to tip off the authorities in order to bring the site down.
10th April, 2003
Insurance giant The Prudential Insurance Company of America has lost a domain dispute under the UDRP after they failed to show that prudentialmotors.com - which diverted web users to a pornographic site - was confusingly similar to their Prudential trade marks.
The domain was registered by Connecticut-based QuickNet Communications in June 2002 and learning of its registration the Complainants wrote to QuickNet notifying them that the domain name would be monitored for improper use. However, by February 2003, Prudential Insurance noticed the domain was being used to forward web traffic to a pornographic web site. Obviously concerned at the change of use they wrote to the registrant again demanding that he cease and desist using the domain. However that email was returned as undeliverable and the matter was referred to the National Arbitration Forum.
As regular readers will know, the UDRP is made of three rounds, the first of which is the trade mark round. The Complainant must show that they have a trade mark (or equivalent) which is the same or confusingly similar to the domain in question. Typically this round is the easiest for the Complainant to win, however this was not the case here as the Panellist decided that there was not a strong enough link between the Prudential mark and the domain:
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 ââ¬Åprudentialmotors,ââ¬Â the second level domain, has no apparent connection to Complainant or the insurance and financial industry.
Therefore the complaint was knocked out in the first round and the registrant - who did not put in a response - will keep the domain name.
The decision does not state whether the Complainant advised the Panellist that Prudential Insurance are a major provider of auto insurance in addition to their other services and therefore that the addition of "motors" to the end of their mark might confuse Internet users, who these days are increasingly using the Internet to get motor insurance quotations. However, had such a submission been made one would have expected the Panellist to mention and deal with it specifically.
This decision therefore again highlights the importance of making a comprehensive submission - or a response - in domain dispute proceedings. A large and established trade mark portfolio can never be taken as an automatic passport to success under the UDRP.
Time may soon be running out for the registrant, however, assuming his site continues to show pornographic images. As Demys recently reported (see: If you can't do the time, don't register the domain), attempts are being made in the USA to criminalise the pointing of innocent-sounding domain names to pornographic websites such as the one in the present case. Perhaps if the current Bill becomes law, the Complainant will simply be able to tip off the authorities in order to bring the site down.
