The Prudential Insurance Company of America just lost the attempt to get the new gTLD domain name rocksolid.financial suspended through a Uniform Rapid Suspension (URS) proceeding.
The domain owner is Terrance McQuilkin who was represented by Mark Jeftovic of Toronto.
The Examiner Antonina Pakharenko-Anderson, denied relief to Prudential despite having a trademark going back to 1986 for financial services and the domain being parked, finding the term Rock Solid was generic
Here are the highlights:
“”The Examiner reminds that the primary purpose of the URS is to provide for rapid suspension of domain names on trademark infringement cases in which there is no genuine contestable issue as to the infringement and abuse that has taken place. The
Complainant holds the valid trademark registration for the ROCK SOLID trademark (U.S. Registration No. 1,443,527), the mark was verified by the Trademark Clearinghouse and is in current use.
The Complainant has been using the mark connection with financial and insurance services since at least as early as 1986.
The Complainants official website locates at the URL address http://www.prudential.com/view/page/public where some limited use of the ROCK SOLID may be found, although the Complainant asserts that the ROCK SOLID marks are some of the most famous marks in the financial industry and sources of significant goodwill for the Complainant.
The disputed domain name resolves to the parking page utilizing the standard parking page design without any PPC links published on it.
The Complainant contends that the disputed domain name fully incorporates the registered trademark and the addition and directly identifies Complainants chief services used in connection with the ROCK SOLID mark, only heightening the potential for confusion.
The Complainant contents that he has not authorized the Respondent to use its ROCK SOLID trademark.
Furthermore, the Complainant contends that the Respondents use is not a legitimate noncommercial or fair use, and is not in connection with a bona fide offering of goods or services. The Complainant asserts that the disputed domain name is registered and used in bad faith as the domain name was registered in order to prevent the trademark holder from reflecting the mark in a corresponding domain name.
The Respondent has alleged that the disputed domain name consists of a generic term and that the use is not targeting any trademark holder. The Respondent further contends that the domain name is not part of a wider pattern or series of abusive registrations and has been chosen to educate about some solutions how to build a banking business on a rock-solid foundation.
The Respondent asserts that he does not gain anything from advertising.
The Complainant asserts that the disputed domain name is registered and used in bad faith as the domain name was registered in order to prevent the trademark holder from reflecting the mark in a corresponding domain name. The records of the case do not contain any evidences supporting that the Respondent has registered multiple domain names which are similar to the ROCK SOLID mark which may constitute a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name.
Furthermore, there is a consensus view that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant, unless the domain name is used with bad faith intent to profit from the goodwill of a trademark belonging to someone else.
At the same time, the Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that there is the case of the bad faith use.
However, the Complainants allegations of bad faith registration are without sufficient facts to support such allegation.
The circumstances of the case do not give the grounds for such finding either.
Therefore, the Examiner finds that the Complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish circumstances that demonstrate bad faith registration and use by the Registrant under URS 126.96.36.199.”””