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Prudential Assurance Company Limited v. Moshin Khan
Case No. D2006-0426
1. The Parties
The Complainant is Prudential Assurance Company Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Lovells, France.
The Respondent is Moshin Khan, London, United Kingdom of Great Britain and
2. The Domain Name and Registrar
The disputed domain name <prudentialmortgages.com> (the “Domain
Name”) is registered with Easyspace (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 4, 2006. On April 5, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 7, 2006, the Registrar 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 April 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2006.
The Center appointed Tony Willoughby as the sole panelist
in this matter on May 5, 2006. 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,
4. Factual Background
The Complainant together with its parent company, Prudential plc, is a household name in the United Kingdom, very well-known under and by reference to the name, Prudential, in the field of financial services (including mortgages). The Complainant is the proprietor of several service mark registrations of the word PRUDENTIAL including United Kingdom registration number 2025359 dated June 27, 1995, for financial services (including mortgage services) in class 36.
The Domain Name was registered on October 29, 2004, in the name of Freestart plc, an Internet services and website development company. The Complainant asserts that the registration was undertaken by Freestart plc on behalf of its customer(s), Abbey Ishaq and/or Jaime Patel, the company director and secretary respectively of a company called Prudential Mortgages Limited, which was incorporated on March 17, 2005. This assertion has not been challenged by the Respondent and the Panel accepts it as fact.
Following correspondence between the Complainant’s solicitors and variously Abbey Ishaq, Jaime Patel, Prudential Mortgages Limited and Freestart plc, the Domain Name was transferred into the name of the Respondent (January 5, 2006) and the Respondent was appointed company secretary of Prudential Mortgages Limited (June 29, 2006). For completeness it should be noted that according to Freestart plc the Respondent became the ‘legal owner’ of the Domain Name on September 16, 2005.
On April 15, 2005, Domain Name was pointing to a page indicating that the corresponding website was under construction. By December 15, 2005 the Domain Name was pointing to a website entitled “Search a Mortgage”.
On January 9, 2006, the Complainant sent the Respondent a cease and desist letter, but the Respondent did not respond.
As at the date of the Complaint
the Domain Name was no longer pointing to an active website.
5. Parties’ Contentions
The essence of the Complainant’s contentions is that the Domain Name was originally registered on behalf of (and/or was subsequently acquired by) the Respondent with full knowledge of the Complainant’s rights in respect of the mark, PRUDENTIAL, in relation to financial services in general and mortgages in particular with a view to trading on the back of the Complainant’s reputation and goodwill in the name.
The Complainant contends that the Domain Name is confusingly similar to a trade mark or service mark in which it has rights, namely the mark, PRUDENTIAL.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant points to the facts and matters set out in paragraph 4(c) of the Policy and contends that none of them is applicable to this case.
The Complainant further contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy on the basis that the Respondent has been using the Domain Name, intending to attract, for commercial gain, Internet users to his “Search a Mortgage” web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or of a product or service on his web site.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
A. Identical or Confusingly Similar
Apart from the generic domain suffix, which may be ignored for this purpose, the Domain Name comprises the Complainant’s registered trade mark, PRUDENTIAL, and the generic term ‘mortgages’, which is a term descriptive of some of the services provided by the Complainant and for which the mark is registered. The Panel has no hesitation in finding that the Domain Name is confusingly similar to the Complainant’s trade mark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy the Complainant is required to prove that the Respondent has no rights or legitimate interests in respect of the Domain Name. Paragraph 4(c) of the Policy, which is addressed to respondents, identifies what respondents can prove to demonstrate their rights or legitimate interests to a domain name for the purposes of paragraph 4(a)(ii) of the Policy.
It is for the Complainant to demonstrate a prima facie case and if the Complainant is successful in establishing a prima facie case (i.e. a case to answer), it is for the Respondent to answer that case.
The Panel is in no doubt that the Complainant has done enough to establish a prima facie case. The Complainant’s searches through several registries have uncovered no trade mark registrations in the name of the Respondent. The Domain Name is not the name of the Respondent. The principal element of the Domain Name is the Complainant’s trade mark (very well-known in the United Kingdom) and the Complainant has not granted the Respondent any licence to use that trade mark whether as part of a domain name or for any other purpose.
The only indication as to the Respondent’s motives is the fact that in December 2005, after ownership of the Domain Name is said to have been transferred to the Respondent (although the formal transfer only took place the following month), the Domain Name was connected to a website, the opening page of which was entitled “Search a Mortgage”. The site offered mortgage services: “In addition to our strong reputation in traditional residential agency services, we offer a comprehensive range of additional property services including property management, professional and financial services, mortgages, valuations and consultancy.”
On the face of it, therefore, as alleged by the Complainant, it seems very probable that the Respondent registered the Domain Name with a view to attracting visitors (intending to reach a site of the Complainant) to the Respondent’s website and presumably for commercial gain.
The Respondent has failed to produce an effective answer to the Complainant’s prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered the Domain Name with knowledge of the Complainant’s trade mark and intending that Internet users trying to reach the Complainant should be diverted to the Respondent’s website connected to the Domain Name.
The Respondent does not challenge this allegation, which fits such facts as are available (see above). Given the fame of the Complainant and its trade mark in the financial services field in the United Kingdom, the very field in which the Respondent operates, the Panel finds it inconceivable that the Respondent did not select the Domain Name with the Complainant and its trade mark firmly in mind and with a view to trading off the back of the Complainant’s reputation and goodwill.
The fact that recently the Respondent has disconnected the Domain Name from the site does not save him. The disconnection was simply in response to the Complainant’s complaint (as set out in its cease and desist letter). If cessation of use in response to a cease and desist letter were sufficient to defeat a complaint under the Policy, the Policy would be rendered nugatory.
The Panel finds that the Respondent registered the Domain Name in bad faith
and is using it in bad faith within the meaning of paragraphs 4(a)(iii) and
4(b)(iv) of the Policy.
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, <prudentialmortgages.com>, be transferred to the Complainant
Dated: May 10, 2006