World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Prudential Insurance Company of America v. Mubadal PR America, C Patel

Case No. D2010-1889

1. The Parties

Complainant is The Prudential Insurance Company of America of Newark, New Jersey, United States of America, represented by Partridge IP Law P.C., United States of America.

The Respondent is Mubadal PR America of Nanda, NA, India.

2. The Domain Name and Registrar

The disputed domain name <mubadalapramerica.com> (the “Domain Name”) is registered with Netfirms, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to Netfirms, Inc. a request for registrar verification in connection with the disputed domain name. On November 8, 2010, Netfirms, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2010, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 2, 2010.

The Center verified that the Complaint together with the amendment to 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”).

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 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2010.

The Center appointed Thomas D. Halket as the sole panelist in this matter on January 12, 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.

The Panel notes that based on a WhoIs record, dated October 20, 2010, the previous registrant of record for the Domain Name appears to have been an entity located in the United States of America. Sometime between said date and the filing of Complaint, however, the Domain Name was transferred to the current Respondent. For the purposes of this proceeding, the Panel finds ‘Mubadal PR America, C Patel’ to be the appropriate Respondent.

4. Factual Background

Complainant in this administrative proceeding is The Prudential Insurance Company of America, parent corporation of Prudential Investment Management, Inc., which operates in markets outside of the Americas, Japan, the Republic of Korea, and Taiwan, Provence of China under the trade name PRAMERICA. Complainant, its subsidiary and affiliated corporations have used its PRAMERICA name and mark in connection with a wide variety of insurance, securities, investment, financial, and real estate and relocation services throughout the world for many years and prior to the acts of Respondent at issue here. The PRAMERICA trademark is the subject of trademark registrations in over 100 countries. In or about June 2010, Complainant and Mubadala Development Company launched a joint venture company, Mubadala Pramerica Real Estate Investors Limited, to raise capital from investors to fund and invest in real estate projects in Abu Dhabi and other global markets. According to the WhoIs record, the Domain Name was registered by Respondent on July 14, 2010.

5. Parties’ Contentions

A. Complainant

Complainant alleges:

(a) The Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) The Domain Name was registered and is being used by Respondent in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Domain Name incorporates the entirety of Complainant's PRAMERICA mark and only adds the name "Mubdala" to it. "Mubdala" is part of the trade name, and perhaps the trademark, of the Mubadala Development Company, Complainant’s joint venture partner. The fact that the Domain Name contains two marks owned by different entities does not negate the confusing similarity between the Domain Name and either of those marks. See, e.g., Pfizer, Inc. v. Martin Marketing WIPO Case No. D2002-0793. Therefore, the Domain Name is confusingly similar to a mark owned by Complainant.

B. Rights or Legitimate Interests

Complainant has alleged that (i) Respondent is not affiliated or related to Complainant in any way, nor is

Respondent licensed by Complainant or otherwise authorized to use the PRAMERICA Marks, (ii) Respondent is not generally known by the Domain Name, and has not acquired any trademark or service mark rights in that name or mark and (iii) Respondent uses the Domain Name not for the sale of goods or services, but only in connection with a website that contains links to other websites, some of which offer services of Complainant's competitors. Respondent has not contested these supported allegations. The Panel, accordingly, takes them as proven.

Respondent's use of the Domain Name to attract Internet users to a website containing links to businesses and products that compete with Complainant is not a legitimate use of the Domain Name. See National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. Zuccarini, WIPO Case No. D2002-1011. Therefore, Respondent does not have any rights or a legitimate interest in the Domain Name.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy bad faith can be shown by circumstances indicating Respondent deliberately used the Domain Name for commercial gain to divert Internet users based on a likelihood of confusion with Complainant's mark. Complainant’s undisputed allegations which the Panel has taken as proven establish that Respondent has used the Domain Name to set up a website which at least in part directs users of the site to competitors of Complainant. Accordingly, such conduct is evidence that, and the Panel therefore finds that, Respondent registered and used the Domain Name in bad faith.

D. Remedy

Because the Domain Name also incorporates another trademark, namely MUDADALA, the Panel would normally be inclined just to order its cancellation. The Panel, however, is concerned that cancellation would leave both trademark owners exposed to the possibility that another third party might seek to register the Domain Name and thus require one or the other of them to file another proceeding. The record in this proceeding supports this concern.

The Panel does note that Complainant has acknowledged the dual ownership nature of the Domain Name and requested that the Domain Name be transferred to it “in good faith and [that it] will forfeit its interest in the contested domain names if the other represented mark is infringed following the transfer of the domain name registration to Complainant.” (See Complaint p. 14.) The Panel understands this representation by Complainant to be the equivalent of an agreement by Complainant that, if the Domain Name is transferred to it, it will not use it without the express permission of the Mubadala Development Company. Thus, the Panel could protect both trademark owners by conditioning its award in accord with this representation. Unfortunately, the Panel does not have the power to do so under the Policy and the Rules.

Nevertheless, because Complainant and the Mubadala Development Company are joint venture partners and in light of and in reliance on Complainant’s express representations, the Panel believes that transfer is an appropriate remedy here.

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 name, <mubadalapramerica.com>, be transferred to the Complainant.

Thomas D. Halket
Sole Panelist
Dated: January 22, 2011

 

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