Jose Felgueroso
Abogado | Attorney
An Insurance Company Obtains a Domain Name Registered by a Cybersquatter
info@josefelgueroso.com
2021-08-11
A judge has ordered the transfer of the domain name PRU.com to Prudential, a provider of insurance and financial services. Shenzhen Stone Network Information, a Chinese company, had registered the domain name allegedly for use in connection with the provision of financial news. The judge found that Shenzhen Stone had registered the domain name in bad faith, with intent to profit from its sale to Prudential. As a result, the judge ordered the transfer of the domain name to Prudential.
Background
Prudential initially sued the domain name and the individual who had purchased it from an unidentified company. The judge, however, dismissed the individual for lack of personal jurisdiction. As a result, the action continued in rem ("against a thing"), which means that the only purpose of the lawsuit was to decide what to do about an item of property, the domain name PRU.com.
The plaintiff was Prudential, whose marks include PRUDENTIAL and PRU. PRU is also Prudential's New York Stock Exchange ticker symbol. Prudential provides services in many countries, but not in China. The claimant for the domain name PRU.com was Shenzhen Stone Network Information, a Chinese internet company that provides financial and economic information to Chinese consumers, focusing on the foreign exchange industry.
Shenzhen Stone did not upload any information to PRU.com: the page simply contained ads with images of the marks of Prudential and several of its competitors and the message "Would you like to buy this domain?". Shenzhen Stone had no trademark rights on PRU.com, and it claimed that its Simplified Chinese name refers to "Prussia."
Prudential also filed an action with the World Intellectual Property Organization (WIPO) regarding the domain name. WIPO locked the domain name pending the outcome of the litigation, but later terminated the proceedings at Prudential's request.
The Judge's Decision
The judge had to decide (1) whether Shenzhen Stone had registered PRU.com in bad faith to sell it to Prudential (cybersquatting) and (2) whether Shenzhen Stone had used the PRU mark in commerce, infringing Prudential's trademark rights.
Cybersquatting
Prudential filed this claim under the Anti-Cybersquatting Consumer Protection Act, a federal statute.
The Anti-Cybersquatting Act lists nine factors to determine whether cybersquatting has occurred, but courts have indicated that they are merely a guide. The central question is whether the alleged cybersquatter registered, trafficked, or used the domain name in bad faith to profit from another party's reputation. If that is the case, the domain name must be transferred to the plaintiff.
The factors are the following:
- (1) Does the alleged cybersquatter have trademark or other intellectual property rights in the domain name?
- (2) Does the domain name consist of the legal name of the alleged cybersquatter?
- (3) Has the alleged cybersquatter used the domain name in good faith for the provision of goods or services?
- (4) Has the alleged cybersquatter used the domain name for non-commercial purposes?
- (5) Does the alleged cybersquatter intend to divert consumers from the mark owner?
- (6) Has the alleged cybersquatter offered to assign the domain for financial gain, without a good faith intent to use the name?
- (7) Has the alleged cybersquatter provided false contact information for the registration of the domain name?
- (8) Has the alleged cybersquatter registered domain names that are similar to the marks of third parties?
- (9) Does the alleged cybersquatter's domain name incorporate a famous mark?
The judge made the following findings:
(1) Shenzhen Stone has no trademark or other intellectual property rights on PRU.com, and has no legal rights on PRU. This factor favored Prudential.
(2) Shenzhen Stone is not known as PRU. This factor favored Prudential.
(3) Shenzhen Stone has not used PRU.com in good faith for the provision of goods or services. In addition, it has not developed PRU.com with relevant content. This factor favored Prudential.
(4) Shenzhen Stone has not used PRU.com for non-commercial purposes. This factor favored Prudential.
(5) Shenzhen Stone intended to divert customers from Prudential. PRU is identical to Prudential's trademark, and PRU.com contained hyperlinks to several of Prudential's competitors. The judge found amusing Shenzhen Stone's claim about the connection between its name and Prussia, because Prussia has not existed as a territory since the middle of the last century. This factor favored Prudential.
(6) Shenzhen Stone secured a six-figure offer for PRU.com without a good-faith effort to use the domain name. This factor favored Prudential.
(7) Shenzhen Stone provided false contact information for its registration of PRU.com. In addition, the registration information in GoDaddy (the domain name registrar for the domain name) was set to private. This factor favored Prudential.
(8) Shenzhen Stone has registered more than 100 domain names, some of which include marks well known in the United States, such as Yelp, Quora, and Chrome. This suggests that Shenzhen Stone intended to traffic in domain names and that it is familiar with businesses in the United States. This factor favored Prudential.
(9) Shenzhen Stone's domain name includes PRU, a famous mark that Prudential has registered in many Asian countries, but not in China. This factor favored Prudential.
The judge concluded that Shenzhen Stone had registered PRU.com in bad faith to profit from Prudential's reputation. As a result, he ordered the transfer of the domain name to Prudential.
Trademark Infringement
Because the only remedy in this in rem action was the transfer of the domain name to Prudential, the judge found the issue of trademark infringement moot.
Sources
The Prudential Insurance Company of America v. PRU.COM (United States District Court for the Eastern District of Virginia, 2021)
Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d)