WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Principal Financial Services, Inc. v. Domain Admin, Privacy Protection Service, Inc. d/b/a PrivacyProtect.org / Domain Admin, P. Registrations Aktien Gesellschaft
Case No. D2016-0842
1. The Parties
The Complainant is Principal Financial Services, Inc. of Des Moines, Iowa, United States of America ("US"), represented by Neal & McDevitt, US.
The Respondent is Domain Admin, Privacy Protection Service, Inc. d/b/a PrivacyProtect.org of Nobby Beach, Queensland, Australia / Domain Admin, P. Registrations Aktien Gesellschaft of Kingstown, Saint Vincent And The Grenadines.
2. The Domain Name and Registrar
The disputed domain name <pricipal.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2016. On April 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On April 29, 2016, 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 Complainant filed an amendment to the Complaint on April 28, 2016.
The Center verified that the Complaint and the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 27, 2016.
The Center appointed Adam Taylor as the sole panelist in this matter on June 2, 2016. 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, incorporated in the US, offers a wide range of services in the financial, insurance, investment, banking, retirement, asset management, property and healthcare sectors, amongst others. The Complainant and its predecessors have traded under the name "Principal" since 1960.
The Complainant owns various trade marks including or consisting of the term PRINCIPAL, including US trade mark no. 1562541 PRINCIPAL, filed on November 9, 1988 and registered on October 24, 1989, in international class 36.
The Complainant has invested over USD 1 billion in its trade marks over the years.
The disputed domain name <pricipal.com> was registered on July 27, 2000. The Complainant was previously the registrant of the disputed domain name and the Respondent subsequently obtained the registration after the Complainant failed to renew the disputed domain name.
The Complainant has submitted evidence with the complaint showing the disputed domain name has been redirected to different websites including, inter alia, a website offering retirement planning services operated by the Fidelity Investments, the Complainant's competitor and to another website about the benefits of financial planning.
5. Parties' Contentions
The following is a summary of the Complainant's contentions:
The Complainant's marks are famous throughout the world in connection with the services offered by the Complainant.
The disputed domain name is confusingly similar to the Complainant's trade mark as it is a typosquatting variation of the Complainant's mark, omitting just one letter.
The Complainant has no rights or legitimate interests in the disputed domain name.
The Complainant has not given permission to the Respondent to use its mark.
There is no evidence that the Complainant is commonly known by the disputed domain name or that it has used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services or that it is making a noncommercial fair use of the disputed domain name.
The Respondent has intentionally created a likelihood of confusion with the Complainant's well established trade marks.
The registration of the disputed domain name amounts to unlawful typosquatting.
The Complainant suspects that the Respondent has used the disputed domain name in connection with acts of fraud, deceptive trade practices, trade mark infringement, unfair competition and trade mark dilution. The Complainant provided evidence of one of its clients providing private information through the website of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has rights in the mark PRINCIPAL by virtue of its registered trade marks as well as unregistered trade mark rights deriving from its extensive use of that name.
The disputed domain name is confusingly similar to the Complainant's trade mark. It differs only by omission of the letter "n". The terms remain visually and aurally similar.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
"While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant."
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, the Panel has concluded below that the Respondent intentionally set out to target the Complainant's mark. In the oft-quoted case of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847, the panel stated that:
"… use which intentionally trades on the fame of another cannot constitute a "bona fide" offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy."
Nor is there any evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Given that the disputed domain name is difficult to explain other than as a misspelling of the word "principal", and that the disputed domain name has at times been forwarded to the website of a direct competitor of the Complainant and to a financial planning website, the Panel considers that the Respondent registered the disputed domain name with the Complainant in mind and that such redirection of the disputed domain name was designed to illicitly target the Complainant's trade mark. It does not matter whether or not the Respondent directly profited from such activities – see paragraph 3.8 of WIPO Overview 2.0.
The Complainant has also asserted that the Respondent has used the disputed domain name to mine personal data of the Complainant's customers and has produced an email sent to one of its customers following one such alleged complaint. Again, there is no rebuttal from the Respondent.
In the above circumstances, the Panel finds that the disputed domain name has been registered and is being used in bad faith and that the Complainant has established the third element of paragraph 4(a) of the Policy.
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, <pricipal.com>, be transferred to the Complainant.
Date: June 16, 2016