WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / leo smart, Dsenator.club

Case No. D2021-4168

1. The Parties

The Complainant is Principal Financial Services, Inc., United States of America (“United States”), represented by Neal & McDevitt, United States.

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / leo smart, Dsenator.club, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <principalfinance.club> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 13, 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 December 14, 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 December 16, 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 December 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.

The Center appointed Gareth Dickson as the sole panelist in this matter on January 24, 2022. 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 group companies affiliated to the Principal Financial Group, a financial investment management and insurance company based in the United States. The Complainant is also based in the United States. It is publicly traded on the NASDAQ stock exchange and, either by itself or through a predecessor in interest, has been providing services under the PRINCIPAL mark (the “Mark”) since 1960.

The Complainant is the owner of a number of trade mark registrations. In particular, the Complainant owns trade mark registrations for the Mark as well as various word and device marks incorporating the Mark, in the United States, including:

- United States trade mark registration number 3,324,583 for “PRINCIPAL”, registered on October 30, 2007;
- United States trade mark registration number 3,053,544 for “PRINCIPAL GLOBAL INVESTORS”, registered on January 13, 2006;
- United States trade mark registration number 3,095,382 for “PRINCIPAL BANK” (device), registered on May 23, 2006;
- United States trade mark registration number 3,107,136 for “PRINCIPAL FREEDOM”, registered on June 20,2006;
- United States trade mark registration number 3,368,180 for “PRINCIPAL FUNDS” (device), registered on January 15,2008;
- United States trade mark registration number 3,368,181 for “PRINCIPAL FUNDS”, registered on January 15, 2008;
- United States trade mark registration number 3,369,005 for “THE PRINCIPAL CHARITY CLASSIC”, registered on January 15, 2008;
- United States trade mark registration number 3,400,594 for “PRINCIPAL GLOBAL INVESTORS” (device), registered on March 25, 2008;
- United States trade mark registration number 4,111,149 for “PRINCIPAL REAL ESTATE INVESTORS”, registered on March 13, 2012;
- United States trade mark registration number 4,130,738 for “PRINCIPAL REAL ESTATE INVESTORS” (device), registered on April 24, 2012;
- United States trade mark registration number 4,396,203 for “PRINCIPAL GLOBAL FIXED INCOME”, registered on September 3, 2013;
- United States trade mark registration number 4,483,644 for “PRINCIPAL FINANCIAL GROUP” , registered on February 18, 2014; and
- United States trade mark registration number 4,483,643 for “PRINCIPAL FINANCIAL GROUP” (device), registered on February 18, 2014.

The Complainant is also the proprietor of registrations incorporating a device mark for a stylized “P” inside a larger stylized “P” which at first glance resembles a speech mark. It is also the registrant of domain names incorporating the Mark, including <principal.com> and <principalfinancial.com>.

The disputed domain name was registered on January 16, 2021. It directed Internet users to a website seeming to offer financial and investment services under the PRINCIPAL mark and incorporating a logo resembling the stylized “P” device mentioned above, but ceased this activity at some point after the Complainant sent cease and desist letters dated March 4, 2021 and May 3, 2021, to the email address provided by the privacy service provider, at which point an “Account Suspended” notice appeared on the website. The disputed domain name is currently inactive and does not point to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the Mark is famous and known throughout the world and that the disputed domain name is confusingly similar to the Mark since it incorporates the Mark (which is recognisable within the disputed domain name) in its entirety with the addition of the descriptive term “finance”, under the generic Top-Level Domain (“gTLD”) “.club”.

The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to (purport to) offer financial and investment services, giving the false impression that the services (purportedly) being offered are sponsored, endorsed, or otherwise affiliated with the Complainant, in order to divert traffic and/or consumers to the Respondent’s website, by creating a likelihood of confusion with the Mark, contrary to the Policy.

The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name; is making, or intends to make, a legitimate noncommercial or fair use of it; or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible.

The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Mark, according to the Complainant, is well-known throughout the world. The Respondent’s own use of the disputed domain name to offer services similar to that offered by the Complainant, and use of a “speech mark” device similar to that of the Complainant, further confirms that the Respondent knew of the Mark and of the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith.

Finally, the Complainant argues that the Respondent has used the disputed domain name to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Mark, contrary to the Policy. It notes that a Panel has recently found the actions of a respondent with the same name as the Respondent to amount to bad faith registration and use of a domain name, and infers that the Respondent’s registration of the disputed domain name is a continuation of that pattern of behaviour. Together, the Complainant submits that the disputed domain name has been registered and is being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:

a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

c) the disputed domain name has been registered and is being used in bad faith.

These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.

Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.

Section 1.8 of the WIPO Overview 3.0 further provides that: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”.

The Panel therefore finds that the disputed domain name is confusingly similar to the Mark, since the disputed domain name incorporates the Mark in its entirety. The addition of the word “finance” in the disputed domain name does not alter that conclusion, nor does the addition of the gTLD “.club”.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.

In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name.

There is also no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark, or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. The available evidence suggests that the Respondent has actively sought to impersonate the Complainant on its website accessed via the disputed domain name.

Together, this makes a coincidental adoption of the Mark in the disputed domain name by the Respondent highly unlikely.

By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.

As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the Mark has already been found by previous UDRP panels to be well-known and distinctive of the Complainant.

The Panel also notes that the disputed domain name was registered years after the Mark was registered and accepts that the disputed domain name was chosen by reference to the Mark.

As a result, and in the absence of evidence from the Respondent that the similarity of the disputed domain name to the Mark would be coincidental, the Panel must conclude that the Respondent knew of the Complainant’s rights in the Mark when it registered the disputed domain name. The Respondent’s use of a logo similar to the Complainant’s stylized “P” device mark, and the fact that the Complainant is traded on NASDAQ and therefore easily discoverable by anyone wanting to find a target to impersonate online is, in this Complaint, more than sufficient to outweigh any inference that the Respondent would not be aware of (and targeting) the Mark.

The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.

The disputed domain name is also being used in bad faith.

The website accessed via the disputed domain name originally purported to offer financial and investment services under the Mark, with the intention of redirecting traffic, and in particular Internet users seeking the Complainant, to its website and of deceiving consumers into wrongly believing that the website was connected to the Complainant.

Although that particular bad faith use of the disputed domain name by the Respondent has now ceased, that appears to be a result of the Complainant’s cease and desist letters. It would be absurd if non-use arising in such circumstances required a Panel to deny an otherwise successful complaint. Accordingly, since the disputed domain name was being used in bad faith immediately prior to its non-use, and remains registered to the Respondent without having changed hands since being used in bad faith, the Panel finds that for the purposes of determining the Complaint the disputed domain name is being used in bad faith. The Panel moreover notes for completeness that irrespective of the prior use and action taken, the passive holding (as is done now) of the disputed domain name would not prevent a finding of bad faith.

The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith.

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 <principalfinance.club> be transferred to the Complainant.

Gareth Dickson
Sole Panelist
Date: February 10, 2022