The former owner of Pru.com has appealed after a court determined that he was cybersquatting on Pru.com.
A man in China has appealed a summary judgment ruling that forced him to transfer the domain Pru.com to the insurance and financial company Prudential.
Frank Zhang, a Chinese citizen, said he bought the domain from a Texas company in 2017 for about $100,000.
Prudential filed an in rem anti-cybersquatting and trademark infringement case against Pru.com last year. The company has trademarks for pru.
At the end of June, the judge found in favor (pdf) of Prudential’s request for summary judgment on the issue of cybersquatting. The domain was subsequently transferred to Prudential.
The judge found that the facts favored Prudential on all nine of the factors in the Anticybersquatting Consumer Protection Act (ACPA).
While there was certainly some evidence against Zhang, GoDaddy’s default landing page also hurt. The judge pointed to links on the landing page pointing to Prudential’s competitors and a message asking people, “Would you like to buy this domain name?”.
The links were default pay-per-click links that GoDaddy profits from, but the judge said he had the option to have them removed. And the “buy this domain?” link is a promo for GoDaddy’s domain buying service.
Making matters worse, the links didn’t show to visitors in China, so it would have been difficult for Zhang to know about them.
The case was appealed to the Court of Appeals for the Fourth Circuit.
A friend lost sunbrella .ca because of the ads that GoDaddy puts on its default landing pages.
It’s too bad that my friend didn’t have the budget to sue GoDaddy for breach of trust and other potential torts.
GoDaddy profits from its customer’s domain names and puts them at risk of trademark infringement. Nobody should ever park their domain names with GoDaddy.
Hmm. I get it on something that could be generic like Pru. But Sunbrella? That’s a well known trademark in and of itself. Even if there weren’t links on the page, it would be difficult to explain that one.
The complainant wasn’t well known in Canada; I never heard of them. I grew up using Sunbrella sun tan lotion, but they went out of business in the 1980s.
An Israeli based company recently applied to revive the SUNBRELLA brand in application 2119384, claiming “Non-medicated cosmetic sun-protecting preparations.” They are now the 4th sunscreen manufacturer adopting the word Sunbrella.
There were other three expired trademarks owned by different registrants for sunglasses, sunscreen, and Suntan lotions at the time of the CDRP.
My friend worked for a consumer packaged goods company before becoming a real estate agent, so he comes up with ideas to revive old consumer product brands.
Thanks for the additional information.
Obvious infringement, I doubt this mark is not known in Canada and probably would have been lost regardless of the lander.
“so he comes up with ideas to revive old consumer product brands.”
Hope he didn’t say that to the judge.
Pru doesn’t necessarily willingly allocate itself to the trademark because it’s not a known trademark like QTips.
If he was going to build it out in a different class than insurance – he too could have trademarked Pru in furniture or cannabis soft drinks apparel or any other class
He didn’t have the right lawyer
Good luck to Mr. Zhang in his appeal.
PRU.com decision was trash.
“Pru” is not a brand it is the stock symbol for Prudential. Their product brand to the public is “Prudential”. Consumers will not be “confused” with pru.com in buying insurance and financial products from Prudential and since the domain owner of pru is not listed on the stock exchange there cannot be any confusion with stock trading. The problem is that most Judges do not understand trademark law. And then deep pocket corporations abuse the legal system to steal what they want. This action says a lot about Prudential’s core values as a company. The will steal a domain name. So should we trust them to do business with them or will they steal from us as well.
The company is widely known as “pru”, it is even in the dictionary. Pointless arguing it is just the stock ticker.
“The problem is that most Judges do not understand trademark law.”
Perhaps have a lie down Kevin, just because you don’t like the result does not mean that most judges don’t know what they are doing.
I have invested with prudential for over 2 decades … never seen “pru” on their paperwork. It’s always the full “prudential” word.