The Complainant is Principal Financial Services, Inc., United States of America (“United States”), represented by Neal & McDevitt, LLC, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
The disputed domain name <princicpal.com> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 15, 2021, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 19, 2021 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 July 24, 2021.
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 July 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2021.
The Center appointed Marina Perraki as the sole panelist in this matter on August 30, 2021. 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.
Complainant is a publicly-traded (NASDAQ– PFG) multi-national financial services institution offering, through its licensees, member companies and affiliates, a broad range of services in the financial, insurance, investment, banking, retirement, global asset management, real estate, and healthcare sectors, among others.
Complainant is the owner of numerous PRINCIPAL trademarks throughout the world, including the United States trademark registration PRINCIPAL, word, number 1,562,541, filed on November 9, 1988 and registered on October 24, 1989, with first use in commerce on July 8, 1960, for services in international class 36.
Per Complaint, Complainant has invested well in excess of USD one billion in its PRINCIPAL trademarks over the years.
Complainant is also the owner of inter alia a domain name registration for <principal.com> and numerous other business names and common law trademarks and service marks for its family of PRINCIPAL marks.
The Domain Name was registered on August 12, 2019 and it leads per Complaint to a landing page with suspicious activity, such as the prominent display of Complainant’s registered domain name <principal.com> in a pop-up screen instructing users to download a web browser extension. The Domain Name currently leads to an inactive website, which has been blocked, showing a warning notice for malicious content.
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The Domain Name incorporates Complainant’s trademark PRINCIPAL in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the letter “c” placed after the beginning “princi” and before the ending “pal” of the word “PRINCIPAL” as a clear misspelling of this word, does not avoid a finding of confusing similarity as the PRINCIPAL mark remains recognizable within the Domain Name (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; mytheresa.com GmbH v. Domain Admin Private Registrations Aktien Gesellschaft, WIPO Case No. D2013-0904, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8. and 1.9).
The generic Top-Level Domain (“gTLD”) “.com” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the Domain Name is confusingly similar to the PRINCIPAL mark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Prior to the notice of the dispute, Respondent did not demonstrate any use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrated, the Domain Name lead to a landing page with suspicious activity, such as the prominent display of Complainant’s domain name <principal.com> in a pop-up screen instructing users to download a web browser extension. Per Complaint, upon information and belief, Respondent registered and used the Domain Name to impersonate Complainant and possibly mine private information from unsuspecting users or download malware. The Domain Name currently leads to an inactive website, which has been blocked, showing a warning notice for malicious content.
Use of a domain name for illegal activity (e.g., distributing malware) can never confer rights or legitimate interests on a respondent (WIPO Overview 3.0, section 2.13.1).
This, along with the fact that the Domain Name was initially registered with a privacy shield service, speaks against any rights or legitimate interests held by Respondent (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name in bad faith.
Because the PRINCIPAL mark had been widely used and registered at the time of the Domain Name registration by Respondent and per Complaint it enjoys reputation, noting the composition of the Domain Name, and the fact that Complainant operates the domain name <principal.com>, the Panel finds likely that Respondent had Complainant’s mark in mind when registering the Domain Name (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Domain Name was therefore probably created for commercial gain by intentionally creating a likelihood of confusion with Complainant’s trademarks and business as to the source, sponsorship, affiliation or endorsement of the website it resolved to, within the sense of paragraph 4(b)(iv) of the Policy. This can be used in support of bad faith registration and use (WIPO Overview 3.0, section 3.1.3).
As regards bad faith use, Complainant demonstrated that Respondent used the Domain Name to create a landing page with suspicious activity, such as the prominent display of Complainant’s registered domain name <principal.com> in a pop-up screen instructing users to download a web browser extension. Respondent therefore registered and used the Domain Name to take advantage of a confusion with Complainant and possibly mine private information of users or download malware. The Domain Name currently leads to an inactive website, which has been blocked, showing a warning notice for malicious content.
Use of a domain name for purposes such as phishing or malware distribution, constitutes bad faith use (WIPO Overview 3.0, section 3.4) and further evidences bad faith (Andrey Ternovskiy dba Chatroulette v. Transfer Service, Sedo.com, LLC, WIPO Case No. D2018‑2510).
The Panel considers also the apparent initial concealment of the Domain Name holder’s identity through use of a privacy shield is further indicative of bad faith (BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364).
Lastly, as Complainant demonstrated, Respondent is a “systematic cybersquatter” engaged in a series of domain name registrations that infringe trademarks of third parties (e.g. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico WIPO Case No. D2021-1659; Registration Private, Domains by Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico WIPO Case No. D2021-1586; Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico WIPO Case No. D2021-1411; Carolina Rodrigues WIPO Case No. D2021-1408; Domains By Proxy, LLC, DomainsByProxy.com / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1393). As stated in the Complaint, a search for prior UDRP decisions identified approximately 200 cases involving Respondent where a transfer was ordered.
This pattern supports a finding of bad faith registration (Dr. August Oetker Nahrungsmittel KG v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-1664; The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881).
The Domain Name currently resolves to an inactive website. The non-use of a domain name does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds that Respondent has registered and used the Domain Name in bad faith.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <princicpal.com>, be transferred to the Complainant.
Marina Perraki
Sole Panelist
Date: September 13, 2021