WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Domains By Proxy, LLC / principal pfg

Case No. D2018-1724

1. The Parties

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

The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / principal pfg, Beijing, China.

2. The Domain Names and Registrar

The disputed domain names <principal-vip.co> and <principal-vip.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2018. On July 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 1, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2018 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 August 9, 2018.

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 August 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2018.

The Center appointed Antony Gold as the sole panelist in this matter on September 11, 2018. 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 a publicly traded financial services institution, based in the United States. It provides a range of finance-related services to various industry sectors.

The Complainant’s primary trading style is PRINCIPAL and it has registered many trade and service marks to protect this trading style, as well as a number of variants, such as THE PRINCIPAL and THE PRINCIPAL PLAN. These registrations include, by way of example only, United States service mark registration no. 1,562,541 for PRINCIPAL registered on October 24,1989 in respect of services comprising financial analysis and consulting, management of securities and securities brokerage services.

The disputed domain name <principal-vip.co> (“the first disputed domain name”) was registered on November 10, 2017. <principal-vip.com> (“the second disputed domain name”) was registered on October 26, 2017. According to a screen print provided by the Complainant, the first disputed domain name resolves to a website (“the first website”) containing an image of a hand and various piles of coins. Superimposed over the image is a login screen containing the words “PFG Use your account number to sign in. Don’t have an account? Sign up!”. The second disputed domain name resolves to a website (“the second website”), the home page of which is branded “PFG”. This features a menu bar in written Chinese, which, in translation, comprises the words “Home”, “Digital assets”, “Life guarantee” and “Trading System”. At the center of the page are the words “Reduce your savings by turning IRA. You can merge these old accounts into one, by rolling the IRA to the supervisor RolloverPlusSM”.

5. Parties’ Contentions

A. Complainant

The Complainant says that the disputed domain names are identical or confusingly similar to trade and service marks in which it has rights. It refers to its family of PRINCIPAL-related trade and service marks, full details of one of these being set out above. The Respondent’s disputed domain names are nearly identical to the Complainant’s PRINCIPAL marks in that they differ from it only by the addition of a hyphen and the letters “VIP”. These words do not serve to prevent the disputed domain names from being confusingly similar to the Complainant’s PRINCIPAL service marks.

The Complainant also says that the Respondent has no rights or legitimate interests with respect to the disputed domain names. The Respondent is not using, and has not shown any intention to use, the disputed domain names in connection with a bona fide offering of goods and services. In fact, the disputed domain names resolve to websites the home pages of which are virtually identical to the Complainant’s own web pages, which comprises an illegitimate and confusing use of the disputed domain names. Moreover, the Complainant has never given the Respondent permission to register and/or use the disputed domain names. There is no evidence to show that the Respondent is commonly known by either of the disputed domain names or that it owns or has any common law rights in the disputed domain names.

Finally, the Complainant says that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b)(iv) of the Policy provides that the registration and use of a domain name will be in bad faith if by using the domain name, 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 its website or location or of a product or service on it.

It is reasonable to assume that, by using the disputed domain names in order to resolve them to websites which can readily be confused with the Complainant’s website, the disputed domain names were acquired for this purpose. This is particularly the case in view of the similarities in website design and content between the Complainant’s and the Respondent’s websites. Furthermore, both the first and second websites feature login screens, which are likely to be components of a phishing scheme established by the Respondent.

Having regard to the similarities between the Complainant’s and the Respondent’s websites, Internet users are likely to assume that the word “vip” is intended to create a sense of importance in connection with the Complainant’s marks and to reinforce the impression caused to them that they are entering information on websites affiliated with the Complainant.

B. Respondent

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

6. Discussion and Findings

Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.

Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:

(i) the disputed domain names are identical or confusingly similar to a trade mark 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 names; and

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

A. Identical or Confusingly Similar

The Complainant has produced evidence of its trade and service mark registrations for PRINCIPAL as well as a number of variants in which “PRINCIPAL” is the primary component. This evidence includes the service mark registration in respect of which details are set out above. It accordingly has rights in this name.

When considering whether a domain name is identical or confusingly similar to a complainant’s service mark, it is established practice to disregard the generic or country code Top Level Domain, that is “.com” and “.co” in the case of the disputed domain names, as these are technical requirements of registration. The disputed domain names therefore incorporate the entirety of the Complainant’s PRINCIPAL service mark and differ from it only by the addition of a hyphen and the letters “vip”.

As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “While each case is judged on its own merits, in 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.” The additional components of the disputed domain names do not serve to distinguish them from the Complainant’s service mark. The Panel accordingly finds that the disputed domain names are confusingly similar to a service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

As part of its assertions in respect of this element of the Policy, the Complainant has claimed that there are similarities between the first and second websites of the Respondent and the Complainant’s website. The Complainant has not, however, provided screen prints of its own website.

Section 4.8 of the WIPO Overview 3.0 explains that: “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name […].” With this guidance in mind, the Panel has visited the Complainant’s website at “www.principal.com” as well as the first and second websites, so that it has sufficient information to evaluate the Complainant’s contentions. Its findings are dealt with below.

Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely:

(i) before any notice to it of the dispute, it had used or made 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) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or

(iii) it was 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 second and third circumstances outlined above are plainly inapplicable. So far as the first circumstance is concerned, the Complainant has asserted that the form and content of the first and second websites are deliberately intended to confuse Internet users into thinking that they have some connection with the Complainant. Neither of the home pages uses the Complainant’s PRINCIPAL service marks and both home pages use the acronym “pfg” to denote the brand which is purportedly offering the services on the website. The Complainant does not have any registered trade or service marks for PFG, nor has it asserted any unregistered rights in this acronym. Moreover, whilst the second website has distinct resonances with the style and content of the Complainant’s website, the screen print of the first website provided by the Complainant has no obvious similarities to it. In fact, however, when the Panel visited the first website, its form and content were identical to that of the second website, as described above.

Notwithstanding the use by the websites of a “PFG” trading style rather than a “Principal” branding, weighing heavily in the balance is the fact that both websites are plainly purporting to operate in the field of financial services and/or banking and will have been found because the user has accessed them through disputed domain names which incorporate the Complainant’s service mark and are confusingly similar to it. In these circumstances it is highly likely that this fact, coupled with the distinct similarities in style and layout to the Complainant’s website, means that Internet users who are able to read and understand written Chinese will associate the websites with the Complainant and be disposed to believe, for example, that “pfg” is an acronym in some way associated with the Complainant. Furthermore, these similarities establish that the Respondent has deliberately intended to create such confusion and that the intention is to profit in some way from it. Such conduct plainly does not constitute a bona fide offer of goods and services.

The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

As indicated above, the close similarities in style between the Complainant’s website and those to which the disputed domain names resolve strongly suggests that, as at the time of registration of the disputed domain names, the Respondent was aware of the Complainant and its business and registered the disputed domain names with a view to establishing the websites to which they now resolve.

Paragraph 4(b)(iv) of the Policy provides, in summary, that evidence of registration and use of a domain name shall be found if by using the domain name, 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 its website.

As explained at section 3.1.4 of the WIPO Overview 3.0, “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” Among the factors which panels have found to support a bad faith finding are seeking to cause confusion for the respondent’s commercial benefit, the lack of a respondent’s own rights to or legitimate interests in a domain name and redirecting the domain name to a different respondent-owned website.

Each of the above factors is present in this case. The fact that the first and second websites will have the greatest impact on Internet users who can read and understand written Chinese does not impact on the presumed intentions of the Respondent.

The Respondent’s registration and use of the disputed domain names falls squarely within the provisions of paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the Respondent has registered and is using the disputed domain names 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 names <principal-vip.co> and <principal-vip.com> be transferred to the Complainant.

Antony Gold
Sole Panelist
Date: September 24, 2018