ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION The Prudential Insurance Company of America v. pgim, pigm Case No. D2023-4782 1. The Parties The Complainant is The Prudential Insurance Company of America, United States of America ("United States"), represented by Ballard Spahr, LLP, United States. The Respondent is pgim, pigm, India. 2. The Domain Name and Registrar The disputed domain name is registered with Alibaba.com Singapore E-Commerce Private Limited (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 17, 2023. On November 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2023, the Registrar 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 20, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 21, 2023. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 19, 2023. page 2 The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 27, 2023. 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. 4. Factual Background The Complainant is one of the global leaders in providing access to investing, insurance, and retirement security. In 2016, the Complainant rebranded its investment management business as PGIM. The Complainant owns a large portfolio of PGIM trademarks, including the Indian Trademark Registration No. 2905497, registered on February 19, 2015. The disputed domain name was registered by the Respondent on September 6, 2023, and at the time of the filing of the Complaint, it resolved to an online login webpage similar to the Complainant's official client access. When registering the disputed domain name, the Respondent identified himself as "pgim, pigm", from India. The Panel accessed the disputed domain name on January 8, 2024, which resolved to a website containing reproductions of the Complainant's PGIM trademark together with content related to asset management, asking Internet users to provide their bank account information. 5. Parties' Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that: - The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The disputed domain name would be identical to the Complainant's registered trademark PGIM, except for the additional of the term "global". The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.8, provides that when a domain name encompasses the dominant portion of a complainant's trademark, the addition of generic terms and a generic Top-Level Domain ("gTLD") does not distinguish the disputed domain name. The Respondent is using the disputed domain name to impersonate the Complainant in an effort to defraud consumers. - The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the name or nickname "pgim" or "global pgim", or any name containing the Complainant's PGIM mark. The Respondent has provided false contact information to the Registrar. The Complainant has strong rights in the PGIM mark, which enjoys a high level of recognition. The Complainant's rights in the PGIM mark predate the Respondent's registration of the disputed domain name. Additionally, the Complainant has not authorized the Respondent to use and register its service mark, or to seek the registration of any domain name incorporating the said mark. The Respondent also has no rights or legitimate interests in the PGIM mark because the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. UDRP panels have consistently held that when a domain name resolves to a webpage impersonating the complainant, the respondents cannot have a legitimate interest in the disputed domain name and such use of the disputed domain name cannot evidence a bona fide right or use of that domain name. page 3 - The disputed domain name was registered and is being used in bad faith. Because the disputed domain name is identical to the Complainant's well-known PGIM mark, it is inconceivable that the Respondent was unaware of the Complainant's rights in the PGIM mark. The disputed domain name is diverting Internet users to an unauthorized website bearing the PGIM mark and copied graphics and text, having no affiliation with or to the Complainant. The Respondent's registration of the disputed domain name was done to prevent the Complainant from registering the disputed domain name and is diverting the Complainant's customers or potential customers that are seeking information about the Complainant to a fraudulent website. UDRP panels have repeatedly held that registration and use of a domain name for illegal activity-including impersonation, passing off, and other types of fraud-is manifestly considered evidence of bad faith. Finally, the Respondent's provision of false and inaccurate contact details to the Registrar is another evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements: (i) the disputed 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 disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview 3.0, section 1.7. Annex 3 to the Complaint shows registrations of PGIM trademarks obtained by the Complainant, including in India, in 2016. The trademark PGIM wholly encompassed within the disputed domain name, together with the term "global", as well as with the gTLD suffix ".com". Although the addition of other terms (here, "global") may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. It is also well established that the addition of a gTLD, such as ".com", is typically disregarded when determining whether a domain name is confusingly similar to a complainant's trademark as such is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. page 4 Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. The Panel finds no indication that the Respondent is commonly known by the disputed domain name. Although the website at the disputed domain name resolved to a login page similar to the Complainant's official client access and currently resolves to a website which reproduces the Complainant's trademark and logo, in connection with asset management content, the Complainant has asserted that the Respondent is not an authorized representative, nor has obtained any permission for such reproductions of trademarks, logos and copyrighted materials. Therefore, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation. WIPO Overview 3.0, section 2.5.1. Also, panels have held that the use of a domain name for illegal activity (here, claimed unauthorized account access/hacking or impersonation/passing off) can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. Based on the available record, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. The disputed domain name includes the distinctive trademark PGIM, which has no dictionary meaning in English. Also, the Panel considers that the addition of the term "global" may even enhance the perception that the disputed domain name is sponsored or endorsed by the Complainant, in the present case, as it may suggest that it is the official PGIM global website, operated by the Complainant or by an authorized online representative. Furthermore, when the disputed domain name was registered (in 2023) the PGIM trademark was already connected with the Complainant's asset management services worldwide, including in India. Therefore, the Panel concludes that it is not feasible that the Respondent was not aware of the Complainant's trademark and that the registration of the disputed domain name was a mere coincidence. page 5 Actually, the use of the disputed domain name to resolve to an online login webpage similar to the Complainant's official client access demonstrates that the Respondent most likely targeted the Complainant when registering the disputed domain name. The current content at the website linked to the disputed domain name - including reproductions of the Complainant's trademark and the description of the respective services - indicates that the Respondent has intentionally attempted to attract, through the registration and use of the disputed domain name, the Complainant's customers, for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website. Furthermore, the request to enter bank details on such a website, which is not operated by the Complainant or by parties authorized by it, at the very least raises serious suspicions of fraud, as stated by the Complainant. Panels have held that the use of a domain name for illegal activity (here, claimed unauthorized account access/hacking and impersonation/passing off, or other types of fraud) constitutes bad faith. WIPO Overview 3.0, section 3.4. Therefore, having reviewed the record, the Panel finds the registration and use of the disputed domain name constitutes bad faith under the Policy. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant. /Rodrigo Azevedo/ Rodrigo Azevedo Sole Panelist Date: January 15, 2024
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