Insurance giant fails in porn site domain challenge

In Prudential Insurance Company of America v QuickNet Communications, National Arbitration Forum panellist James Carmody has refused to transfer 'prudentialmotors.com' to the complainant because the US company failed to show that the domain name - which diverts web users to a pornographic site - is confusingly similar to its PRUDENTIAL service mark.

Upon discovering that Tim Bach of QuickNet Communications had registered 'prudentialmotors.com' to serve as a link to porn site 'bignaturals.com', Prudential Insurance sent a cease and desist email. However, the email was returned as undeliverable. Further, QuickNet filed no response to the complaint. Thus, Carmody based his decision on Prudential's undisputed representations pursuant to Paragraph 5(e) of the Uniform Domain Name Dispute Resolution Policy (UDRP) Rules.

Carmody's decision centred on Paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy - that is, whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Although Carmody found that Prudential is the registered owner of the PRUDENTIAL mark in relation to insurance and financial services, he found that the domain name at issue - incorporating the PRUDENTIAL mark with the addition of the word 'motors' - has no apparent connection to Prudential or the insurance and financial services industry.

In refusing to order the transfer of the domain name, Carmody cited Donald J Trump and Trump Hotels & Casino Resorts, Inc v olegevtushenko, finding that if the complainant makes an initial interest confusion argument, it is on the basis that the public would expect that the complainant's mark would be readily associated with the domain name in question. In the case at hand, Carmody determined that use of 'prudentialmotors.com' does not suggest that Prudential is the source, origin or sponsor of QuickNet's website. He also relied upon Bank of America Corp v Fluxxx Inc for the proposition that, where the disputed domain name has a tenuous relationship to the complainant's mark, the complainant must provide proof of actual confusion. Prudential had failed to provide such proof.

Peter W Choe, Gowling Lafleur Henderson LLP, Toronto

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