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 Domain Place, domainplace of São Tomé and Príncipe.
The disputed domain name <prudentialserv.com> (the Domain Name) is registered with eNom, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2009. On July 29, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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. 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 was set to expire on August 31, 2009, the Center requested the Registrar on August 13, 2009 to confirm that the Domain Name was placed under registrar lock and asked whether any action of the parties was required to keep the Domain Name under registrar lock. On the same day the Registrar confirmed that the Domain Name was placed under registrar lock and further indicated that the Complainant had the option to renew the Domain Name to prevent deletion. On August 14, 2009 the Center informed the parties of the communication from the Registrar. On August 18, 2009 the Complainant indicated that the registration of the Domain Name had been renewed.
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 August 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 26, 2009.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on September 3, 2009. 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.
The Complainant is a wholly owned subsidiary of Prudential plc, which is listed on both the London Stock Exchange and the New York Stock Exchange. Both companies are registered in England and Wales. Prudential is a financial services group based in the United Kingdom, with substantial operations in Asia and the United States of America as well. Collectively, the Prudential group has tens of thousands of employees and more than 21 million customers. The group operates several websites, including a principal corporate website at “www.prudential.co.uk”.
The Complaint is grounded on two PRUDENTIAL trademarks registered to the Complainant and evidently used by the group: United Kingdom Trade Mark No. 2025359 (registered June 28, 1996) and European Union Community Trade Mark (CTM) No. 158600 (registered December 16, 1999). The record in this proceeding includes public filings, articles, and media reports indicating that the PRUDENTIAL mark has been in use since the 19th Century and is of international renown.
According to the Registrar's WhoIs database, the Domain Name was created on August 31, 2007 and is currently registered in the name of the Respondent, which does not nominally appear to be an individual or a legal entity. The Respondent's postal address is nonsensical; it is shown as “South”, in the city of “Spain”, in the independent African nation of São Tomé and Príncipe. The Panel agrees with an earlier UDRP panel, dealing with what appears to be the same registrant, that the Respondent has not accurately identified itself:
“The Respondent has not identified itself as either an individual or other legal identity. The address ‘South' in the city ‘Spain' in Sao Tome and Principe appears to have been invented and is incomplete. The telephone number 677.00123456 has the international code number ‘677' for the Solomon Islands and the obvious numerical sequence strongly suggests that this is an invented number. The email contact address ‘email@example.com' also appears to be fictitious as MAILER-DAEMON reported that this user did not have a yahoo.com account.” BHP Billiton Innovation Pty Ltd. v. Domain Place, WIPO Case No. D2007-0244.
The same dubious contact information appears in the registration of the Domain Name at issue in the current proceeding, with the same fictitious telephone number and email address. The panel in BHP Billiton, supra, pointed to this evasive conduct as evidence supporting its conclusion that the respondent had registered and used in bad faith a domain name confusingly similar to marks used by a large multinational corporate group headquartered in Australia.
The Domain Name does not currently resolve to an active website. However, the Complainant furnished a screen shot of the website associated with the Domain Name on July 28, 2009. The landing page, presented in English, was headed “Prudential Offshore Services”. Clicking on the “Enter” button took the site visitor to a sign-on screen asking “our valued customers” to enter “your username and password we provided you”. This has the appearance of a “phishing” scam designed to mislead actual Prudential customers into divulging their online credentials, possibly in furtherance of a fraud scheme.1
The Complainant states that it became aware of the Domain Name in June 2009 while investigating online fraud complaints. The Complaint attaches a copy of an email written in poor English, ostensibly by a widow in Ghana. The writer claimed that the recipient (an individual in Ecuador) could share in some USD 12 million held in her late husband's fund at “Prudential Offshore Services” in England, if only the recipient would first open an account with “Prudential Services”. In another e-mail the reader was requested by, what appeared to be, an account manager of the Complainant to open an account with “Prudential Services” by completing an application form and wiring an “activation fee” of GBP 5500. The attached application form displayed the PRUDENTIAL mark and logo, but the wire instructions were not to a Prudential bank account. The email address of the supposed employee of “Prudential Offshore Services” was in the domain name <prudentialserv.co.uk>, which had the appearance of being the UK version of the “.com” Domain Name at issue in this proceeding.
The Prudential group does not include an affiliate or department known as “Prudential Offshore Services”, and no company by that name is registered in the United Kingdom. Conducting a Google search on this name, the Complainant found that the first search result was a link to the website associated with the Domain Name.
Other search results on “Prudential Offshore Services”, or on the name and contact details shown in the WhoIs record for the Domain Name, link to reports of online fraud schemes characterized as “advance fee fraud”, “419 scams”, or “Nigerian” or “West African” fraud schemes. (The appellation “419 scams” is derived from Article 419 of the Nigerian Criminal Code, “Obtaining property by false pretences”, under which such frauds have been prosecuted.)2 One such report attached to the Complaint lists “Prudential Offshore Services” as a name used in “419 scams”. Artists Against 419 (“http://db.aa419.org”) names the Respondent, with the same contact details found in the WhoIs record for the Domain Name, in its database of “fake” banks, lotteries, and websites. An online database of “eBay Hijacker Email Addresses” (published at “www.nekkidtruth.blogspot.com”) also lists the Respondent's e-mail address in connection with eBay scams.
The Complainant reported the suspected phishing and 419 scams to law enforcement and bank officials and initiated the current UDRP proceeding. Since then, while there has been no Response from the Respondent, it appears that the website associated with the Domain Name has been deactivated.
The Complainant argues that the Domain Name is confusingly similar to its registered and well-known PRUDENTIAL mark and that there is no evidence that the Respondent has any rights or legitimate interests in using a confusingly similar Domain Name. To the contrary, the Complainant points to evidence that the Domain Name has been used in bad faith, in connection with fraudulent schemes and in an effort to mislead Internet users for financial gain.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the Domain Name, the Complainant must demonstrate each of the following:
(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 and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
The Complainant indisputably holds registered PRUDENTIAL trademarks. The Domain Name incorporates this mark in its entirety and adds only the letters “serv”. This does not avoid confusing similarity with the mark, especially since those letters are often used as an abbreviation for “service” or “services” and therefore appear relevant to a financial services company. Indeed, the website formerly associated with the Domain Name was headed “Prudential Offshore Services”.
The Panel concludes that the Domain Name is confusingly similar to the PRUDENTIAL mark for purposes of this element of the Complaint.
The Complainant asserts, and the Respondent does not deny, that the Complainant has not authorized the Respondent's use of a domain name that is confusingly similar to the Complainant's PRUDENTIAL mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of other circumstances in which the Respondent could demonstrate rights or legitimate interests in the Domain Name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence in the record, or from a perusal of the website formerly associated with the Domain Name, that the Respondent has been known by a name corresponding to the Domain Name or has relevant trademark rights. The Complainant reported a search for such a UK trademark, CTM, or International Trade Mark, with negative results. Rather, it appears that the Respondent has employed the Complainant's marks in furtherance of fraud schemes – hardly a legitimate interest.
Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing, as it has in this case. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. The Respondent has not done so, and the Panel therefore concludes that the Complainant has established the second element of the Complaint.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
The Complainant cites paragraphs 4(b)(ii) and (iv). Although there is evidence of a pattern of abusive or fraudulent conduct by the Respondent, the Panel would not conclude on this record that the Respondent registered the Domain Name to prevent the Complainant from reflecting its mark in a corresponding domain name. The Complainant uses several domain names that reflect the PRUDENTIAL mark and does not claim a “PRUDENTIAL SERV” or “PRUDENTIAL SERVICES” mark. The Respondent is neither a competitor of the Complainant nor necessarily a classic cybersquatter seizing the most logical domain name based on a famous mark. Thus, paragraph 4(b)(ii) is not squarely implicated.
It does appear on this record, however, that the Respondent has employed the Domain Name and the related, fictitious company name “Prudential Offshore Services” in connection with phishing attempts and 419 scams. The PRUDENTIAL mark is well known and long established in financial services, particularly in England. The Respondent clearly took advantage of this by setting up a website purporting to be operated by the non-existent “Prudential Offshore Services” and instructing individuals by email to transfer funds and set up accounts with this supposedly English-based financial services company.
The Respondent did not rely on a confusingly similar domain name simply to attract to its commercial website Internet users seeking the Complainant's website, which is the more common context in which paragraph 4(b)(iv) has been applied. The Respondent's use of the Domain Name was actually more sinister. The Domain Name did not resolve to a website with competing commercial offers but rather to a sign-on page evidently designed to capture the usernames and passwords of Prudential customers. Moreover, the Respondent's 419 scam emails included messages concerning the fictitious “Prudential Offshore Services”. The website associated with the Domain Name was headed “Prudential Offshore Services” and appears to have been created at least partly to lend credence to the email references to such a company.
This conduct, while not the usual context for applying paragraph 4(b)(iv), meets its literal conditions. The Respondent created a likelihood of confusion with the Complainant's PRUDENTIAL mark through several related activities (the confusingly similar Domain Name and mislabeled website, emails, application forms displaying the PRUDENTIAL mark and logo), thereby attracting Internet users to the Respondent's website under false pretenses, apparently for pecuniary gain.
In any event, the list of circumstances indicating bad faith as found in paragraph 4(b) is expressly non-exclusive. The Panel finds that the unrefuted evidence of fraudulent activity (phishing attempts and 419 scams) related to the Domain Name provide ample evidence of bad faith registration and use. The Panel also concludes, as did the panel in BHP Billiton, supra, that this Respondent's patently fictitious contact details are another indication of bad faith.
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, <prudentialserv.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: September 16, 2009
1 See, e.g., the Wikipedia article on “Phishing” at “www.wikipedia.org”.
2 See, e.g., the Wikipedia article on “Advance-fee fraud” at “www.wikipedia.org”. In some cases reported in the media, individuals responding to 419 scams have been physically assaulted or murdered when they attempted to collect promised funds or recover fees they had advanced.