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WIPO-UDRP Entscheid
D2009-1561

Fallnummer
D2009-1561
Kläger
The Prudential Assurance Company Limited
Beklagter
Prudential Securities Limited
Entscheider
Smith, Warwick
Status
Geschlossen
Entscheidung
Transfer
Entscheidungsdatum
19.01.2010

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Prudential Assurance Company Limited v. Prudential Securities Limited

Case No. D2009-1561

1. The Parties

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

The Respondent is Prudential Securities Limited of Abuja, Nigeria.

2. The Domain Names and Registrar

The disputed domain names <prudential-securities.biz> and <prudential-securities.net> (collectively “the Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 19, 2009. On November 20, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the Domain Names. On November 24, 2009 and November 25, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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 Domain Names. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”). As the Domain Name <prudential-securities.biz> had been dated to expire prior to the filing of the Complaint, the Center informed the Complainant thereof. The Complainant thereafter took the necessary actions and on December 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed that the Domain Name <prudential-securities.biz> had been renewed and locked.

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 December 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 22, 2009.

The Center appointed Warwick Smith as the sole panelist in this matter on January 5, 2010. 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.

In the absence of a Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.

4. Factual Background

The Complainant

The following is taken from the uncontested statements in the Complaint.

The Complainant is a wholly-owned subsidiary of Prudential plc, a United Kingdom Corporation which is a worldwide leader in the provision of financial and insurance products. The Prudential Group boasts 21 million customers, policy holders, and unit holders worldwide.

The Complainant is the registered proprietor of United Kingdom and Community Trademark registrations of the mark PRUDENTIAL. The United Kingdom registration, in international class 36, has been in force since June 27, 1995. The Community registration, in international classes 35, 36 and 42, has been in effect since December 16, 1999.

The Respondent and the Domain Names

The Domain Names were both registered on September 19, 2008. Neither of them currently resolves to an active website.

The Complainant became aware of the Domain Name <prudential-securities.biz> in September 2009, when the use of that Domain Name was brought to the Complainant's attention by the recipient of a scam email dated August 28, 2009 (“the August 28 email”), which appeared to be fraudulent. The August 28 email, headed “PRUDENTIAL SECURITIES Safety Deposit and Trust Company”, was purportedly sent by Mrs. V. Sadler of the “Customer Service Unit.” at “Prudential Securities”. It claimed that a consignment box containing over USD 5 million in bank notes, addressed to the recipient, had been broken in transit, and that the sender could not be located. The August 28 email stated that the money would be deposited in a bank for the recipient, as “Prudential Securities does not safe keep Bank Notes”. A short video clip of the supposed money was attached to the August 28 email.

The sender of the August 28 email provided an address which, save for the addition of the words “Northern Rock House”, is the Complainant's exact address (down to the precise postcode). The August 28 email also quoted Prudential plc's company registration number at the bottom of the email, and provided a United Kingdom telephone number at which the recipient could obtain further clarification from a Mr. R.J. Boyd. It contained a 2008 United Kingdom copyright claim at the foot of the email, followed by the words “Prudential plc”.

After the Complainant had been alerted to the August 28 email, its checks revealed the registration of the Domain Name <prudential-securities.net>.

The Complainant produced several online articles in which various fraudulent schemes implemented by email are explained. One such fraudulent scheme is known as a “419” scam (named after the relevant provision of the Nigerian Penal Code under which perpetrators of such fraudulent schemes are prosecuted). This kind of scam is also known as “Advance Fee Fraud”. The common element of 419 scams is that the victim is induced to send cash or other items of value to the perpetrator, against the perpetrator's promise that the victim will receive a much larger sum of money later if he or she co-operates. A number of variations on this general theme are by now well-known around the world (e.g. the scam involving the sending of fraudulent emails advising the recipients that they have won lottery prizes, but must remit various fees to the sender of the email before the prizes can be claimed).

One such article comprised an extract dated October 1, 2009 from the website operated by the Computer Crime Research Center at “www.crime-research.org” (“the Crime Research website”). This extract contained postings from individual Internet users warning of various email scams, and it contained specific warnings relating to an entity called “Prudential Securities”, having the same address as that which appeared on the August 28 email. A copy of one email from “Prudential Securities”, dated April 6, 2009, was reproduced on the Crime Research website. It was in similar terms to the August 28 email: there was a “consignment” which was to be delivered to the recipient, but certain details of the recipient were required in order to allow the sender to “verify” the recipient's particulars before the consignment could be handed over. The purported sender of the April 6, 2009 email was Mrs. V. Sadler. A second “Prudential Securities” email, dated May 2, 2009, was also reproduced on the Crime Research website. Again, there was a “consignment” which could not be delivered to the recipient immediately. In this instance, the recipient was urged to wire the sum of GBP 2,857 to the sender of the email, in order to procure a “comprehensive Diplomatic Insurance Bond” in the United Kingdom, in order to protect the safe passage of the claimed consignment. Again, the purported sender was Mrs. V. Sadler of “Prudential Securities”. The email claimed that a Mr. R.J. Boyd, apparently a colleague of Mrs. Sadler, had been trying to telephone the addressee of the email.

One of the “Prudential Securities” scam emails which was reproduced on the Crime Research website was sent from the email address “customerservice@prudential-securities.net”.

Both Domain Names were originally registered in the name of a proxy service, PrivacyProtect.org. Prior to filing the Complaint, the Complainant requested from the proxy service details of the underlying registrant of the Domain Names. The Complainant alleged abusive registration by the Respondent, and invoked the proxy service's disclosure policy, which applies in such cases. The Respondent's details were then provided to the Complainant and included by it in the Complaint.

The Complainant has carried out various searches to ascertain if the Respondent has any trademark rights in the name “Prudential”. The Complainant provided details of the searches undertaken, which included searches of the Community and International registers, as well as the national registers of some 29 individual countries. The searches revealed that the Respondent had no trademark rights in the term “Prudential” in the jurisdictions searched.

“Prudential Securities Limited” is the name of a company within the Complainant's group, but the Respondent has no connection with that company, the Complainant, or Prudential plc.

The Complainant's researches revealed that there is another company called Prudential Securities Limited, registered in Ghana. It is a wholly-owned subsidiary of Prudential Bank Limited, a genuine bank in Ghana, and it appears to be unrelated to the Complainant, Prudential plc, or the Respondent. The Complainant's researches did not disclose any company in Nigeria called Prudential Securities Limited.

The Respondent's email address which was used to register the Domain Name <prudential-securities.net> had also been used by a historical registrant of the domain name <churchillinsurance.biz>. The Complaint asserted that Churchill Insurance is a well known insurance company in the United Kingdom.

5. Parties' Contentions

A. Complainant

The Complainant contends:

1. The Domain Names reflect the Complainant's PRUDENTIAL name in its entirety, and that is sufficient to establish identity or confusing similarity (citing Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525). Incorporating a trademark in its entirety in a disputed domain name, even followed by a common term, can be sufficient to establish confusing similarity (citing PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/ka EMS), WIPO Case No. D2003-0696). The addition in the Domain Names of the generic word “securities” is not sufficient to prevent confusion with the Complainant's mark (citing The Prudential Assurance Company Limited v. Osaro Godwin, WIPO Case No. D2005-0934, Prudential Assurance Company Limited v. Moshin Khan, WIPO Case No. D2006-0426, and The Prudential Assurance Company Limited v. Minda Post, WIPO Case No. D2008-0977). The addition of the hyphens in the Domain Names is insufficient to avoid confusion (citing InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075), and the “.biz” and “.net” suffixes are not taken into account in considering confusing similarity.

2. The Respondent has no rights or legitimate interests in respect of the Domain Names, having regard to the following:

(i) The Respondent has no relevant trade mark rights in the name “Prudential”.

(ii) The Respondent has never been authorized by the Complainant to use any of its trademarks.

(iii) Prudential Securities Limited is the name of a company within the Complainant's group, but the Respondent is not affiliated in any way with that company, nor with the Complainant or its parent company.

(iv) The Complainant cannot rely on the circumstances set out in paragraph 4(c)(i) of the Policy in order to demonstrate rights or legitimate interests in the Domain Names. The Domain Names do not currently resolve towards an active website, and there is nothing to suggest that the Respondent is demonstrably prepared to use the Domain Names in connection with a bona fide offering of goods and services.

(v) The Respondent cannot assert that it is commonly known by the Domain Names, so as to be entitled to claim a right or legitimate interest under paragraph 4(c)(ii) of the Policy. There is no company named Prudential Securities Limited in Nigeria. The Respondent chose to associate himself with the name Prudential Securities Limited to create further confusion in the minds of victims of the Respondent's fraudulent schemes, who might check the WhoIs record for the domain names which had been used to send them their emails.

(vi) The Respondent cannot assert that it is making a legitimate non-commercial or fair use of the Domain Names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the Complainant's trademarks. On the contrary, the Respondent registered the Domain Names for the sole purpose of deceiving individuals and defrauding them of money by means of a 419 scam.

3. The Domain Names were registered and are being used in bad faith, having regard to the following:

(i) The term “Prudential” is highly distinctive. It would be inconceivable for the Respondent to have been unaware of the Complainant and its PRUDENTIAL mark at the time the Domain Names were registered. Indeed, the quotation of the Complainant's parent's company registration number in the August 28 email demonstrates that the Respondent was well aware of the Complainant's group.

(ii) The use of a domain name to conduct a “419” scam has been held to constitute a bad faith use of that domain name, as it includes criminal activities and may divert Internet users and damage the Complainant's reputation and disrupt its business (citing Confédération Nationale du Crédit Mutuel v. Crédit Mutuele Bank Sénégal, WIPO Case No. D2007-1331). Similarly, phishing attempts and “419” scams were held to provide sufficient proof of the respondent's bad faith in The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014. The panel in that case also relied on the fictitious contact details provided by the respondent as a further indicator of the respondent's bad faith.

(iii) The use of the Domain Names in the email addresses “customerservice@prudential-securities.biz” and “customerservice@prudential-securities.net”.

(iv) The fact that the Respondent's email address used in the registration of the Domain Name <prudential-securities.net> had also been used to register the domain name <churchillinsurance.biz>, a well-known insurance company in the United Kingdom.

(v) The Respondent's original use of the proxy service, PrivacyProtect.org, in order to mask the WhoIs details for the Domain Names and so hinder the Complainant in its efforts to curtail the Respondent's fraudulent behaviour.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. What the Complainant must prove under the Policy - General

Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

Paragraph 15(a) of the Rules requires the 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”.

Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.

B. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has proved this part of the Complaint.

The Complainant has proved that it is the registered proprietor of the mark PRUDENTIAL in the United Kingdom and in the European Community, and the Panel is satisfied that both Domain Names are confusingly similar to that mark.

First, the Complainant's PRUDENTIAL mark has been included in its entirety in both Domain Names, and the Panel accepts the Complainant's submission that that circumstance points to a finding of confusing similarity. Secondly, the word “securities” is a common term which does not change the overall impression of the Domain Names as being domain names likely to be connected to the Complainant.

The present case is little different (on the “identical or confusingly similar” issue) from the situation in The Prudential Insurance Company Limited v. Moshin Khan (supra), where the at-issue domain name was <prudentialmortgages.com>. The panel in that case noted that all the respondent had done was add to the complainant's PRUDENTIAL mark the generic term “mortgages” which was a term descriptive of some of the services provided by the Complainant and for which the mark was registered. So in this case, the evidence shows that the Complainant's PRUDENTIAL mark is registered in the United Kingdom for services which clearly would or could involve the taking of “securities” (the registration in international class 36 covers, among other services, “mortgage, banking, investment management, trustee and financial advisory services”, and “financing services for the securing of funds”). The fact that one of the Complainant's sister companies is called Prudential Securities Limited, removes any room for doubt – those familiar with the Complainant group (which is widely known throughout the world) would naturally assume that the Domain Names must be connected with the Complainant's group.

The inclusion of hyphens in the Domain Names does nothing to alleviate the confusing similarity, and the “.biz” and “.net” suffixes are not taken into account in the comparison. (The Prudential Insurance Company Limited v. Moshin Khan (supra), is an example of the application of the latter principle, which is now universally accepted by panels deciding cases under the Policy).

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or

(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:

“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.

In this case, the Complainant has not authorized the Respondent to use the Complainant's PRUDENTIAL mark, whether in a domain name or otherwise. The Respondent does not appear to be making any active use of the Domain Names, whether in connection with some bona fide offering of goods or services or by some legitimate non-commercial or fair use, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's PRUDENTIAL mark. Accordingly, there is no basis in the evidence for any right or legitimate interest under subparagraphs (i) or (iii) of paragraph 4(c) of the Policy.

The Panel notes that the registrant company appearing in the WhoIs particulars for both of the Domain Names, is “Prudential Securities Limited”. But the Complainant's uncontested evidence is that no such company exists in Nigeria, where the registrant of the Domain Names appears to be located, and that the only “Prudential Securities Limited” in the United Kingdom is a sister company of the Complainant. The Complainant's researches have unearthed the existence of a company called Prudential Securities Limited in Ghana, but there is nothing to suggest that that entity has any connection with the Respondent in this case. In short, the only proved use of the name “Prudential Securities Limited” by the Respondent, is the use of that name in the August 28 email and in other similar emails. For reasons set out in the next part of this decision, that use appears to have been fraudulent − the Respondent has effectively masqueraded as a subsidiary or operating division of the Complainant's group. Such a use could never form a basis for a claim to a right or legitimate interest, and there is no other proved use of the name “Prudential Securities” by the Respondent which might have formed the basis for a “commonly known by” defense under paragraph 4(c)(ii) of the Policy.

Those matters are, in combination, sufficient to establish a prima facie case of “no rights or legitimate interests” in the Domain Names. The evidentiary onus in this part of the Complaint therefore shifts to the Respondent. The Respondent has failed to file any Response, and has therefore not discharged that evidentiary onus.

The Complainant therefore succeeds on this part of its Complaint.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [a respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or

(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.

The Complainant has also proved this part of the Complaint. The August 28 email, sent from the email address “customerservice@prudential-securities.biz”, makes it clear beyond doubt that the author was well aware of the Complainant's group. Not only does the email use the Complainant's physical address (with the addition of the fictional “Northern Rock House”), it also lists the Prudential plc registered company number and includes a purported copyright claim by Prudential plc. The Respondent was clearly aware of the Complainant's group, and it deliberately set out in the August 28 email to create the false impression that it was part of that group. The email dated April 6, 2009 relating to “insurance bond processing” (reproduced on the Crime Research website) which was sent from an email address at the Domain Name <prudential-securities.net>, similarly used the Complainant's address (also with the addition of the words “Northern Rock House”).

Both the August 28 email and the April 6, 2009 email reproduced on the Crime Research website, purport to have been authored by Mrs. V. Sadler, and the August 28 email and the email of May 2, 2009 reproduced on the Crime Research website both refer to a Mr. R.J. Boyd as a further contact at “Prudential Securities”. It is clear from those facts that the Domain Names have both been used, by the same person or persons, to provide email addresses from which the Respondent has sent fictitious emails. The Panel cannot imagine any reason why the Respondent would have sent emails in which it effectively impersonated a member of the Complainant's group, other than to perpetrate some fraudulent scheme or schemes. The August 28 email, with its improbable references to a “consignment” comprised of USD 5 million in bank notes, and an untraceable sender, is fairly typical of the sort of approach to a victim which is made in the early stages of a 419-type scam. In the absence of any denial from the Respondent, the Panel accepts the Complainant's submission that the most likely reason for the Respondent registering the Domain Names and using them to send fictitious emails, is that the Respondent was attempting to obtain bank account details or other personal information from the recipients of the emails, with a view to committing a “419” scam or other similar fraud.

It goes without saying that a Domain Name which has been acquired and used for the purpose of perpetrating a fraud, has been acquired and used in bad faith. If authorities are needed for that proposition, the Panel is content to rely on the Confédération Nationale du Crédit Mutuel v. Crédit Mutuele Bank Sénégal (supra), and The Prudential Assurance Company Limited v. Domain Place, domainplace (supra) cases, which were cited by the Complainant.

For completeness, the Panel notes that he is satisfied that, although different individuals and addresses are listed in the “Registrant” sections of the WhoIs particulars for the Domain Names, the Domain Names are in fact owned and controlled by the same entity or group, and are appropriately dealt with in a single administrative proceeding. The Domain Names were registered with the same registrar on the same day, and both registrations list the apparently fictitious “Prudential Securities Limited” as registrant company (immediately above the names of the (different) individuals and (different) addresses in the Abuja Capital Territory of Nigeria). The registrants' email addresses for the Domain Names are identical, apart from the addition of an extra “s” to “prudentialtrusts” in one of them, and “Mrs. V. Sadler” and “Mr. R.J. Boyd” are both named in apparently fraudulent emails sent from email addresses at each of the Domain Names.

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 Names <prudential-securities.biz> and <prudential-securities.net> be transferred to the Complainant.

Warwick Smith
Sole Panelist

Dated: January 19, 2010