The Complainant is Principal Financial Services, Inc., of Iowa, United States of America, represented by Neal & McDevitt, LLC, United States of America.
The Respondent is Gioacchino Zerbo, of Como, Italy.
The disputed domain name <principa.com> is registered with Dotster, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2009. On March 4, 2009, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the disputed domain name(s). On March 4, 2009, Dotster, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 30, 2009.
The Center appointed John Swinson as the sole panelist in this matter on April 7, 2009. 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.
The Complainant is listed on the New York Stock Exchange and is a member of the Principal Financial Group.
This Principal Financial Group is a global financial group of companies offering a range of financial products and services, including retirement solutions, life and health insurance, and investment and banking products. The group is a member of Fortune 500, with offices in Asia, Australia, Europe, Latin America and the United States. According to its website (“www.principal.com”), the group services over 18 million customers worldwide.
The Complainant is the owner of numerous trade mark registrations in the United States, as well as other countries including Australia. The United States registrations include Trade Mark Registration no 3324583 for PRINCIPAL, Trade Mark Registration No. 3095382 for PRINCIPAL BANK and Trade Mark Registration No. 3461024 for PRINCIPAL FINANCIAL GROUP.
The website operating from the disputed domain name provides an Internet search box, and also provides links under a range of categories. These categories include “productivity”, “accountants”, “CPA”, “business” and “bicycle”. When a user clicks on one of these category links, a number of pay per click links relevant to the category are displayed.
There is limited information available on the Respondent, particularly as no Response was filed. The Respondent appears to be an individual residing in Italy. A Google search of the Respondent's name returns results indicating that the Respondent owns a significant number of domain names, and has been involved in UDRP proceedings previously.
The Complainant makes the following contentions:
The Complainant is a multi-national company which offers (through licensees, member companies and affiliates) a range of services in the financial, insurance, investment, banking, retirement, real estate and healthcare sectors.
The Complainant owns a family of PRINCIPAL marks, including a significant number of registrations in the United States. The earliest registration is from 1987. Some of these marks are word marks, including marks for THE PRINCIPAL and PRINCIPAL, while others are composite marks. The Complainant also owns a large number of company names which feature the word PRINCIPAL, and holds common law trade mark rights in these terms.
The Complainant owns the domain name <principal.com>.
The Complainant has invested millions of dollars into its family of PRINCIPAL trade marks, and these marks are representative of high quality products and services. Because of extensive and long standing use, the marks have become distinctive and well known in the industries where the Complainant does business.
The disputed domain name is confusingly similar to the Complainant's family of PRINCIPAL marks, as well as the Complainant's domain name. The only difference between the famous PRINCIPAL mark and the disputed domain name is the minor variation of the deletion of the “l”.
The Complainant has not given the Respondent permission or a license to register and or use the domain name of the PRINCIPAL trade marks. The Respondent does not appear to be the owner of any trade mark in the United States (registered or unregistered) which relates to PRINCIPAL or PRINCIPA.
There is no evidence that the Respondent has used, or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services. The Respondent is blatantly using the disputed domain name with an intent of commercial gain, by misleadingly diverting consumers away from the Complainant's website.
The website operating from the disputed domain name provides hyperlinks to a variety of websites that offer mortgage, investment and financial products and services. These websites are not authorised by the Complainant, and compete with the Complainant's products and services.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's family of PRINCIPAL marks, as to the source, sponsorship, affiliation and/or endorsement of the Respondent's website.
The Respondent has no affiliation with the Complainant, and is not authorised to use the Complainant's trade marks. The Respondent has used a misspelling of the Complainant's PRINCIPAL mark to divert traffic to websites operated by the Complainant's competitors. These actions amount to typosquatting, which is evidence of bad faith.
The Respondent's website must derive revenue from “click-throughs” accessed by confused internet users who were really looking for the Complainant. The website contains no disclaimer or statement indicating that the website is not affiliated with the Complainant.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proof lies with the complainant to establish that all these three elements are satisfied.
The Panel is satisfied that the Complainant has long standing registered trade mark rights in THE PRINCIPAL, based on the following United States registrations (among others):
- Trade Mark Registration No. 1,504,246 (THE PRINCIPAL and device) registered from September 1988
- Trade Mark Registration No. 1,508,542 (THE PRINCIPAL and device) registered from October 1988
- Trade Mark Registration No. 1,508,544 (THE PRINCIPAL stylised word mark) registered from October 1988
- Trade Mark Registration No. 1,530,023 (THE PRINCIPAL and device) registered from March 1989.
The Complainant also has registered trade mark rights in PRINCIPAL (Trade Mark Registration No. 3,324,583), registered from 2007, as well as other PRINCIPAL and device marks.
While the Complainant has also relied on Registration numbers 1,562,541 and 1,740,181 (for PRINCIPAL and THE PRINCIPAL respectively), it appears that these marks are in fact owned by Principal Mutual Life Insurance Co, rather than the Complainant. This may well be a related company. However, the Complainant has not provided any evidence of any relationship. Therefore the Panel has not relied on these marks in making its decision.
As a whole, the evidence provided by the Complainant demonstrates that THE PRINCIPAL trade mark would be well known in the United States, and elsewhere around the world, and commonly associated with the Complainant in relation to the provision of financial services.
When comparing THE PRINCIPAL with the disputed domain name, there are only two minor differences. The first is the existence of the word “the”. As this is a common word, frequently used in everyday conversations, the omission of “the” from the disputed domain name is not sufficient to prevent a finding of confusing similarity. The other difference is the omission of the letter “l” from the word “Principal”. Again, this is a very minor difference which may be difficult to perceive at first glance, and is therefore not sufficient to prevent a finding of confusing similarity.
Where there is “essential” or “virtual” identity between a trade mark and domain name, this is sufficient for the purposes of the Policy: see, for example The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113. Further, slight changes in a well known trade mark or word are often found to be purposeful misspellings, “designed to take advantage of mistakes that consumers are likely to make when intending to enter Complainant's web site address” (see for example Infospace.com, Inc v. Registrar Administrator Lew Blank WIPO Case No. D2000-0069). An Internet user intending to visit the Complainant's official website (located at “www.principal.com”) could easily make a spelling error and end up at the Respondent's website.
The Panel finds that the disputed domain name is confusingly similar to THE PRINCIPAL trade mark in which the Complainant has rights.
Accordingly, the first element has been met.
Paragraph 4(c) of the Policy lists three ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“(i) before any notice to you 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 (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 are making legitimate non-commercial 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 Complainant has submitted that the Respondent is not known as “Principal” or “Principa”, has acquired no trade mark or other rights in those terms (in the United States at least), and has not been licensed or authorised by the Complainant to use its PRINCIPAL family of marks, or to register the disputed domain name.
The website operating from the disputed domain name has a title which states “Welcome to principa.com. For resources and information on Productivity and Accountants”.
The website currently provides a range of links under broad subject headings such as “Productivity”, “Accountants”, “Consulting Accountants”, “Business” and “CPA”. These are the first five links, and obviously have a financial/accounting flavour. Other categories are included which cover different and seemingly unrelated areas, such as “Bicycle”, “Colleges” and “Online sporting goods”.
Using the website at the disputed domain name, it seems entirely possible that an Internet user could be directed to a website which offers the same or similar goods or services as the Complainant (particularly since the Complainant is involved in a wide range of industries, ranging from finance to healthcare).
From the placement of third party website links, it is clear that the Respondent is making a commercial use of the website, and is receiving a profit from the sponsored links being displayed.
It is possible that the Respondent registered and is using the disputed domain name, only because it is similar to the Complainant's well known PRINCIPAL mark, in the hope that it will divert traffic intended for the Complainant's website, to its own website. This is likely given that someone looking for the Complainant's website, could easily fail to type the last letter of the word “Principal”.
In light of the Complainant's evidence, and the Respondent's failure to respond to such evidence, it is open to the Panel to infer that the Respondent chose a purposeful misspelling of the Complainant's mark and domain name, to redirect Internet users looking for the Complainant's website to its own website. The Panel does make such an inference in this case. Such use cannot constitute a bona fide offering of goods of services, or a non-commercial or fair use under paragraph 4(c) (see The Coryn Group, Inc., Apply Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664).
The Panel therefore finds that the second element has been met.
Paragraph 4(b) of the Policy enumerates four, non-inclusive circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
The Complainant alleges that the Respondent has engaged in the type of behaviour described in subparagraph (iv), namely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website.
Although not mentioned in the Complaint, the Panel notes that the Respondent has been a respondent in nine other administrative proceedings brought before the Center (see for example Starline Publications, Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-1822 <blackmenmagazine.com>; Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 <terroni.com>; Werner Söderström Osakeyhtiö v. SZK.com and Zerbo Gioacchino, WIPO Case No. D2008-0555 <wsoy.com> and ExxonMobil Oil Corporation v. Gioacchino Zerbo, WIPO Case No. D2008-0046 <mobileoil.com>) which all found in favour of the complainants, resulting in a transfer of the domain names in issue.
The Panel infers that the Respondent is a serial cyber squatter, who has engaged in a pattern of registering domain names which match or are similar to well known trade marks, for the purpose of intentionally diverting Internet users to his own websites.
The Panel has also already found that the Respondent chose a purposeful misspelling of the Complainant's mark and domain name, in order to create confusion among Internet users and to redirect traffic.
By choosing a word such as “principa”, which has no ordinary meaning and is almost identical to PRINCIPAL, the Panel infers that the Respondent knew of the Complainant's trade mark and brand at the time of registering the disputed domain name. The Respondent deliberately chose a domain name which was likely to be confused with the Complainant's trade mark and own domain name.
As discussed above, the Respondent is making a commercial gain from the website, by providing sponsored links to goods and services which in some cases directly compete with the Complainant's core services.
In summary, the Panel considers that there is ample evidence of bad faith registration and use on the part of the Respondent.
Accordingly, the Panel finds that the third element has been met.
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, <principa.com> be transferred to the Complainant.
Dated: April 20, 2009