World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Private

Case No. D2010-1161

1. The Parties

The Complainant is Principal Financial Services, Inc. of Des Moines, Iowa, United States of America, represented by Neal & McDevitt, United States of America.

The Respondent is Private, (Johnny Burrowes as Administrative Contact) of Kingston, Jamaica.

2. The Domain Name and Registrar

The disputed domain name <principalfinancialgrp.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2010. On July 15, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On July 15, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Registrant is listed as “Private” and providing the contact details and contact information for the disputed domain name including the administrative and technical contact “Johnny Burrowes”, as identified in the Complaint.

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 July 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2010.

The Center appointed Keith Gymer as the sole panelist in this matter on August 31, 2010. 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 Panel notes that the mailing address provided for the registrant was found to be incomplete by UPS when attempting to deliver the mailed written notice of the complaint and the UPS package was consequently abandoned as undelivered.

4. Factual Background

The Complainant, Principal Financial Services, Inc., is a publicly traded (NYSE – 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, real estate, and healthcare sectors, among others. The Complainant is the owner of various PRINCIPAL marks including, but not limited to, the

following United States (“U.S.”) trademark registrations:

US Trademark Registration No, 1,502,424 – THE PRINCIPAL FINANCIAL GROUP - registered on August 30, 1988 for services in Classes 35, 36 & 42.

US Trademark Registration No. 1,740,172 – THE PRINCIPAL FINANCIAL GROUP – registered on December 15, 1992 for services in Class 36.

US Trademark Registration No. 3,461,024 - Principal Financial Group (device mark) – registered on July 8, 2008 for services in Classes 36 & 41.

The Complainant operates a website at “www.principal.com”, which is accessed also via “www.principalfinancialgroup.com”.

According to the WhoIs record, the Respondent, nominally associated with Johnny Burrowes in the Complaint, being the Administrative Contact for the Registrant designated as “Private”, first registered the disputed domain name <principalfinancialgrp.com> with Tucows on December 24, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant made the following submissions (edited extracts taken from the Complaint):

The Complainant provided details of at least 35 trade mark registrations for a collection of various PRINCIPAL marks, including those specifically identified above, which are confirmed to be in force.

The Complainant also asserted that it is the owner of numerous other common law trademarks and service marks for its family of PRINCIPAL marks, including but not limited to the following marks and names which include both the words PRINCIPAL and FINANCIAL:

“Common Law Names”

PRINCIPAL FINANCIAL MILESTONES PROGRAM

PRINCIPAL FINANCIAL SECURITY REVIEW

PRINCIPAL FINANCIAL SECURITY SERIES

PRINCIPAL FINANCIAL SOLUTIONS EXPLORER

PRINCIPAL FINANCIAL WELL BEING

“Business Names”

PRINCIPAL FINANCIAL ADVISORS, INC.

PRINCIPAL FINANCIAL GROUP, INC.

PRINCIPAL FINANCIAL GROUP (MAURITIUS) LTD.

PRINCIPAL FINANCIAL GROUP AUSTRALIA PTY LIMITED

PRINCIPAL FINANCIAL SERVICES, INC.

PRINCIPAL FINANCIAL SERVICES (AUSTRALIA), INC.

In addition, the Complainant is the owner of registrations for the domain names <principal.com>, <principalfinancial.com>, and <principalfinancialgroup.com>, among numerous other PRINCIPAL formative domain names.

Through its licensees, affiliates and member companies, the Complainant has used its well established family of PRINCIPAL marks in connection with a variety of products and services in the financial, insurance, investment, banking, retirement, real estate, and healthcare fields, since at least as early as 1985. In addition, the Complainant, via a predecessor-in-interest, has used the famous PRINCIPAL marks in connection with financial analysis and consulting, management of securities and securities brokerage services since at least as early as 1960.

The Complainant has invested literally hundreds of millions of dollars in its famous family of PRINCIPAL marks over the years, which have come to represent the high quality of products and services that Complainant’s licensees, affiliates and member companies offer. This family of PRINCIPAL marks constitutes one of Complainant’s most valuable assets.

Respondent’s Web Site

The Respondent is the registrant for the disputed domain name <principalfinancialgrp.com> and has operated an Internet web site at said address. The web site in question collected personal financial information and purported to offer financial services, including personal loans, bad credit loans, and debt consolidation. However, the Complainant has reason to believe that these services were fraudulent. The website accompanying the disputed domain name was suspended by the registration service provider, Yola, Inc., on July 9, 2010.

The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

As referenced above, the Complainant is the owner of the well-established family of PRINCIPAL marks used in connection with a variety of financial related products and services since at least as early as 1985. Said marks are known throughout the world as denoting the source of the high quality financial related products and services offered and sold by the Complainant through its licensees, affiliates and member companies.

As a result of the Complainant’s extensive and long standing use of its family of PRINCIPAL marks, said marks have become distinctive and well known in the financial, insurance, banking, investment, retirement, real estate and healthcare services industries. See Principal Financial Services, Inc. v. Michail Solncev, WIPO Case No. D2009-1801 (transferring the domain name <pricipal.com> to the Complainant); Principal Financial Services, Inc. v. Gioacchino Zerbo, WIPO Case No. D2009-0280 (transferring the domain name <principa.com> to the Complainant); Principal Financial Services, Inc. v. Blair Russell, WIPO Case No. D2008-1970 (transferring the domain name <prinipal.com> to the Complainant); Principal Financial Services, Inc. v. HostMonster Inc. d/b/a Hostmonster.com,, WIPO Case No. D2006-1421 (transferring the domain name <principle-financial.com> to the Complainant).

The disputed domain name is confusingly similar to the Complainant’s family of PRINCIPAL marks as well as the Complainant’s registration for the domain name <principalfinancialgroup.com>, among others, because it incorporates the famous PRINCIPAL and PRINCIPAL FINANCIAL formative marks and because it is being used to divert consumers to a website that collects personal financial information, purportedly for purposes of offering financial services, which are not owned, operated, or authorized by the Complainant.

The disputed domain name is virtually identical and/or confusingly similar to the Complainant’s family of PRINCIPAL marks as well as the Complainant’s domain name registration for <principalfinancialgroup.com>. Indeed, the disputed domain name and the Complainant’s famous PRINCIPAL and PRINCIPAL FINANCIAL formative marks are nearly indistinguishable from an aural and visual perspective, despite the de minimis variation created by omission of the letters “ou” in “group.” Moreover, “grp” is commonly understood to be an abbreviation for the term “group.” Clearly, the Respondent cannot avoid a finding of a likelihood of confusion by simply making minor alterations to a trademark or by utilizing a common abbreviation or misspelling of a trademark. - See also Principal Financial Services, Inc. v. Gioacchino Zerbo and Principal Financial Services, Inc. v. Blair Russell, supra.

Additionally, gTLDs and ccTLDs, including “.com”, are not to be considered when analyzing whether a domain name and a trademark are identical or confusingly similar. Thus it is clear from the record that the disputed domain name is identical and/or confusingly similar to Complainant’s well-established family of PRINCIPAL trademarks.

The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent also has no rights or legitimate interests in the disputed domain name. Indeed, the Complainant has used and has established enforceable trademark rights in and to its family of PRINCIPAL trademarks long before the Respondent registering the disputed domain name. Moreover, the Complainant has never given the Respondent permission, in any form, to register and/or use the domain name and/or trademark THE PRINCIPAL FINANCIAL GROUP (or abbreviations of the same) nor is the Respondent a licensee of the Complainant.

In addition, the Respondent is not the owner of any PRINCIPAL formative marks in the United States, whether registered or at common law. Nor is there any evidence that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name <principalfinancialgrp.com>|. There is also no evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name <principalfinancialgrp.com> or any name corresponding to said domain name in connection with a bona fide offering of goods or services. The Respondent is clearly not making a legitimate noncommercial or fair use of the domain name. Rather, the Respondent is blatantly using the disputed domain name with the intent of commercial gain and to misleadingly divert consumers from the Complainant’s web site.

Indeed, on its web site, (prior to its suspension by Yola, Inc.) the Respondent prominently used the trade name Principal Financial Group, without authorization from the Complainant, to entice consumers to provide personal financial information in connection with alleged loan services (Representative samples of pages from the website at the disputed domain name were annexed to the Complaint).

The Respondent’s website is a classic example of phishing, which is not a bona fide offering of goods or services. See MasterCard International Incorporated v. Capital Conservator Group LLC, WIPO Case No. D2009-1051 (“Phishing is ‘a form of Internet fraud that aims at stealing valuable information from visitors to the website’ which ‘has become a serious problem for the financial industry worldwide,’ and thus ‘cannot constitute a bona fide use of the domain name…”).

Thus, it is clear from the record that the Respondent has no rights or legitimate interests in using any of the PRINCIPAL family of marks or any formative thereof in connection with the disputed domain name and the associated web site.

The domain name was registered and is being used in bad faith.

The Complainant’s family of PRINCIPAL marks is well-known worldwide in connection with financial, insurance, investment, banking, retirement, real estate, and healthcare services, among others due, in part, to the hundreds of millions of dollars the Complainant has expended promoting, selling and advertising related products and services under the PRINCIPAL family of marks throughout the United States and elsewhere. By registering and using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s well-established family of PRINCIPAL marks as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s web site and/or of a product or service on the Respondent’s website.

The Respondent undeniably has no affiliation with the Complainant, nor is the Respondent authorized, in any way, to use any of the Complainant’s family of PRINCIPAL marks or any formatives thereof. Despite this fact, the Respondent uses, in an unauthorized manner, a de minimis variation (i.e., a misspelling or abbreviation) of the Complainant’s PRINCIPALFINANCIAL GROUP mark in connection with its infringing domain name and purports to offer financial services by posing as the Complainant.

The Respondent’s use of the disputed domain name for phishing purposes amounts to bad faith registration and use, as it has used the disputed domain name to attract Internet users to a phishing website and deceive them into divulging private information.

The Respondent’s actions also amount to unlawful typosquatting, which has been long held in various UDRP decisions to constitute bad faith registration and use of a domain name. See Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568 (“[t]yposquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site . . . by creating a likelihood of confusion with the complainant's mark as to the source’ of the web site. Here, such conduct was undertaken to send Complainant's customers to a site that promoted directly competing services.”)

Consequently, the Respondent’s unauthorized use of the disputed domain name is a clear attempt to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the Complainant’s family of PRINCIPAL marks. Such evidence that the Respondent has no legitimate interest in using the domain name, coupled with the Respondent’s clear goal of deceptively diverting traffic away from the Complainant’s web site for commercial gain, unequivocally constitutes bad faith.

Remedies Requested

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent filed no response to the Complainant’s allegations.

6. Discussion and Findings

In order for the Panel to decide to grant the remedy of transfer of a domain name to the Complainant under the Policy it is necessary that the Complainant must prove, as required by paragraph 4(a) of the Policy, that

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

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

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

The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to “decide the dispute based upon the complaint”. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed to a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences therefrom as it considers appropriate.”

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The disputed domain name is <principalfinancialgrp.com>.

The Complainant has amply demonstrated earlier registered trademark rights in THE PRINCIPAL FINANCIAL GROUP, in standard character word marks and in marks with minor stylisation (e.g. with the word “Principal” superimposed on a triangle) and use of the PRINCIPAL FINANCIAL GROUP family of marks predating the date of creation of the disputed domain name by many years.

The disputed domain name incorporates the elements PRINCIPAL FINANCIAL in their entirety, together with the letters “grp”, which are readily recognised as a commonplace abbreviation for “group”. The absence of an initial “the” in the disputed domain name and the addition of the generic domain suffix “.com” are of no relevance to the overall comparison. The disputed domain name is essentially identical to the mark in which the Complainant has established rights.

The Panel therefore finds that the disputed domain name is to be considered identical or confusingly similar to an earlier trademark in which the Complainants have rights, and the requirements of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, (by way of example) might serve to demonstrate the Respondent’s rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to the Respondent of the dispute, 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has made no express claims to any rights of its own. Clearly, the Respondent “Private” is not commonly known by the disputed domain name, nor has it claimed to have made any legitimate use of the disputed domain name.

The Panel finds that the evidence in the Complaint supports the Complainant’s assertion that the Respondent has simply adopted the disputed domain name to take advantage of public recognition of the Complainant’s THE PRINCIPAL FINANCIAL GROUP mark and business name, to set up a website, which identified the site expressly with references to PRINCIPAL FINANCIAL GROUP and which was apparently intended to mislead consumers into providing personal financial information in the belief that the website was operated by the Complainant. In the Panel’s view, this could not in any way be considered as a bona fide offering or use. The Respondent, having provided no Response in this matter, has failed to rebut the Complainant’s prima facie case under this element of the Policy.

Consequently, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are met.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, the following are examples of the sort of conduct which a Panel may consider (without limitation) to present evidence of registration and use in bad faith:

“(iii) [the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.”

In the Panel’s opinion, the unchallenged evidence in the Complaint demonstrates persuasively that the Respondent has registered the disputed domain name with the intention of establishing a website using the PRINCIPAL FINANCIAL GROUP mark and name to attract users, for its own commercial gain, and intentionally creating a misleading and confusing impression as to the source, affiliation or endorsement of the Respondent’s website operations. It is inevitable that such misuse would cause disruption and damage to the Complainant’s business name and reputation.

Additionally, the Panel also considers it significant that the contact address details for the Respondent are invalid, and that there was apparently no contact address provided on the Respondent’s website to identify where the business behind the <www.principalfinancialgrp.com> website was really located. In the Panel’s experience, such lack of proper identification is a characteristic feature of bogus websites set up to trade off the name and reputation of legitimate businesses, and supports the Complainant’s allegation of bad faith use and registration for the purposes of “phishing” in this case.

The Panel also accepts the Complainant’s submissions that the disputed domain name is an example of bad-faith “typosquatting”, with the substitution of the familiar abbreviations “grp” for the word “group” in the Complainant’s business name and mark being adopted simply to assist the Respondent’s deceptive intent as claimed in the Complaint.

For the same reasons as in Section B above, the Panel also considers the example of paragraph 4(b)(iv) of the Policy is directly applicable in the present case.

Consequently, for the purposes of the Policy, the Panel concludes that the disputed domain name has been registered and is being used in bad faith and that paragraph 4(a)(iii) of the Policy is also met.

7. Decision

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 <principalfinancialgrp.com> be transferred to the Complainant.

Keith Gymer
Sole Panelist
Dated: September 10, 2010

 

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