WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Principal Financial Services, Inc. v. HostMonster Inc. d/b/a Hostmonster.com
Case No. D2006-1421
1. The Parties
The Complainant is Principal Financial Services, Inc., Des Moines, Iowa, United States of America, represented by Neal & McDevitt, United States of America.
The Respondent is HostMonster Inc. d/b/a, HostMonster.com, Orem, Utah, United States of America.
2. The Domain Name and Registrar
The disputed domain name <principle-financial.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on November 7, 2006. On November 9, 2006, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On November 9, 2006, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the ”Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 3, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2006.
The Center appointed Jeffrey M. Samuels as the Sole Panelist in this matter on December 11, 2006. 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
Complainant Principal Financial Services, Inc. is a publicly traded multi-national financial services institution. Since at least as early as 1985, Complainant has offered, through its licensees, member companies and affiliates, a broad range of services in the financial, insurance, investment, banking, retirement, real estate, and health care sectors, among others.
Complainant owns a number of U.S. trademark registrations for marks that include, in whole or in part, the term PRINCIPAL. These registrations include U.S. Reg. 1,740,181 for the mark THE PRINCIPAL, as used in connection with commercial and residential real estate services, and U.S. Reg. No. 1,740,172 for the mark THE PRINCIPAL FINANCIAL GROUP, which also is used in connection with commercial and residential real estate services. The Complainant also owns the domain names <principal.com> and <principalfinancial.com>.
The disputed domain name <principle-financial.com> was registered by Respondent on October 7, 2006. The Respondent operates an Internet website at the address that purports to offer loan services to individuals with credit challenges.
5. Parties’ Contentions
Complainant argues that the disputed domain name is confusingly similar to Complainant’s family of PRINCIPAL marks, as well as its registration for the domain name <principalfinancial.com>, because it incorporates the famous PRINCIPAL and PRINCIPAL FINANCIAL marks and because it is being used in connection with the sale of consumer loan services. Complainant further maintains that its marks and the domain name <principle-financial.com> are aurally identical and nearly indistinguishable from a visual perspective.
Complainant contends that Respondent has no rights or legitimate interests in the domain name. It points out that it has used, and has indisputably established enforceable rights in and to, its family of PRINCIPAL trademarks since long prior to Respondent’s registration of the disputed domain name. Moreover, Complainant asserts, it has never given Respondent permission to register and/or use the disputed domain name and Respondent is not a licensee of Complainant.
Finally, Complainant urges that the disputed domain name <principle-financial.com> was registered and is being used in bad faith. According to Complainant, Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s well-established family of PRINCIPAL marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or a product or service on Respondent’s site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <principle-financial.com> is confusingly similar to Complainant’s marks. The domain name is similar in appearance and pronunciation to Complainant’s PRINCIPAL FINANCIAL mark. A respondent cannot avoid a finding of confusing similarity by making minor alterations to a mark. See, e.g., Citigroup Inc. and Citicorp v. Phayze Inc., WIPO Case No. D2003-0430 (<citiback.com> held confusingly similar to CITIBANK mark); Pfizer, Inc. v. Phizer Antiques and Robert Phizer, WIPO Case No. D2002-0410 (<phizer.com> held confusingly similar to PFIZER mark).
The disputed domain name also is confusingly similar to Complainant’s PRINCIPAL mark. The addition of the descriptive term “financial” in Respondent’s domain name is insufficient to avoid a finding of confusing similarity.
It is also clear that Complainant has rights in the marks PRINCIPAL and PRINCIPAL FINANCIAL, among others. As noted above, these marks are the subject of U.S. trademark registrations and have been in use for many years.
B. Rights or Legitimate Interests
The Panel finds that Complainant has established that none of the circumstances set forth in paragraph 4(c) of the Policy with respect to the establishment of rights or legitimate interests in the domain name is applicable. Given its earlier finding that the domain name and marks are confusingly similar, the Panel concludes that Respondent is not using the domain name in connection with a bona fide offering of goods or services. There also is no evidence that Respondent is commonly known by the domain name or is using the domain name in a noncommercial or fair manner.
C. Registered and Used in Bad Faith
The evidence establishes not only that the disputed domain name is confusingly similar to Complainant’s marks but also that Respondent offers at its website services that overlap with those offered by Complainant under its PRINCIPAL marks. As a result, the Panel holds that the disputed domain name was registered and is being used in bad faith.
The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s PRINCIPAL marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and/or a product or service on Respondent’s site, within the meaning of paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <principle-financial.com> be transferred to the Complainant.
Jeffrey M. Samuels
Dated: December 25, 2006