WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Principal Financial Services, Inc. v. Blair Russell Case No. D2008-1970 1. The Parties
The Complainant is Principal Financial Services, Inc., of Des Moines, Iowa, United States of America, represented by Neal & McDevitt, LLC, United States of America.
The Respondent is Blair Russell, of Gilford, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Price D Internet Services Corporation. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2008. On December 23, 2008, the Center transmitted by email to Price D Internet Services Corporation a request for registrar verification in connection with the disputed domain name. On the same day, Price D Internet Services Corporation 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 January 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 30, 2009.
The Center appointed Knud Wallberg as the sole panelist in this matter on February 10, 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. 4. Factual Background
The Complainant is a multinational financial services institution. Since at least as early as 1985, the Complainant has continuously used the PRINCIPAL Mark in connection with financial services.
The Complainant's services are marketed and sold in several countries, just as the Complainant holds several registrations and common law trademark rights in the trademark PRINCIPAL and of trademarks containing PRINCIPAL as part thereof in the United States of America and elsewhere.
Complainant also maintains an active presence on the Internet, primarily through its website “”.
The Panel has not received any substantial information on the activities of the Respondent, although it appears to be briefly stated by Respondent in an attachment to the Complaint that the Respondent is a citizen living in and doing business in Canada, and that the contested domain name was acquired at an auction. 5. Parties' Contentions A. Complainant The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant contends that the disputed domain name is virtually identical and thus confusingly similar to Complainant's PRINCIPAL marks. Respondent has merely omitted the letter “C”. UDRP panels have repeatedly held that typosquatted domain names such as this, are confusingly similar for the purposes of paragraph 4(a)(i) of the Policy.
In view of the foregoing, Complainant submits that Respondent's domain name is identical or confusingly similar to trademarks in which it has rights as required under the Policy para 4(a)(i). The Respondent has no rights or legitimate interests in respect of the domain name
To the best of the Complainants knowledge Respondent has no rights or legitimate interests in the domain name .
The Complainant states that Respondent is not a licensee of Complainant and has never been affiliated with, connected to, or sponsored or endorsed by Complainant.
Additionally, because Respondent is using a domain name that is identical or confusingly similar to Complainant's mark, and is doing nothing more than offering sponsored links, Respondent is not using the domain name in connection with a bona fide offering of goods or services.
Further, Complainant contends, there is no evidence that Respondent is one commonly known by the disputed domain name, neither are there any registrations for marks incorporating the term “principal” or “prinipal” in the name of Respondent.
Complainant therefore submits that Respondent has no rights or legitimate interest in the domain name as required under paragraph 4(a)(ii) of the Policy. The domain name was registered and is being used in bad faith
According to the Complainant, the Respondent has registered the domain name to intentionally attract 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. Given the fame and notoriety of the PRINCIPAL trademark, it is inconceivable that the Respondent registered the contested domain name in good faith and without knowledge of the Complainant's PRINCIPAL Mark.
The Respondent presumably obtains a commercial benefit by providing “sponsored results” on its site, as operators of websites of this type generally receive revenue for each click-through by online consumers. It is recognized in other UDRP decisions that such acts may generate unjustified revenues for each click-through by on-line consumers of the sponsored links, and thus illegitimately capitalize on the trademark owner's fame. Use and registration of a domain name for such purposes is misleading, and constitutes evidence of bad faith registration and use of a domain name under the UDRP.
For all of these reasons, Complainant submits that Respondent's registration and use of the disputed domain name is in bad faith. B. Respondent
The Respondent did not submit a Response in these proceedings in reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) that the Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar
The contested domain name contains Complainant's distinctive trademark PRINCIPAL, with the only difference that the “C” is omitted and with the addition of the “.com” designation. For the purpose of these proceedings the domain name is found to be confusingly similar to the Complainant's trademark.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled. B. Rights or Legitimate Interests
According to the Complaint the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Panel is satisfied that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this by way of a formal Response or otherwise. Although the word “principal” is a common word that may be descriptive for some goods and services, the word “prinipal” is clearly not. The Respondent could thus not credibly claim that the domain name is intended to be used for any descriptive purposes and such a claim would in any event also be contrary to the way the Respondent has been using and is still using the contested domain name, namely for a website that contains only links to other sites. The Panel further refers to its below findings in relation to the actual use made of the domain name.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii), cf. 4(c) of the Policy are also fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that the Complainant must prove the Respondent's registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
The Complainant's trademark was registered and used well in advance of the date of registration of the disputed domain name. Given the extent of use of the Complainant's trademark and the distinctive nature of the mark in relation to financial services, it is inconceivable to the Panel in the current circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant's mark.
This is underlined by the fact that the disputed domain name, at the time of the filing of the Complaint was used for a website that contained links to other sites including links related to the Complainant as well as links to sites that offered products of competitors of the Complainant. The Panel therefore finds that the Respondent by its registration and its use of the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. The fact that the wording of webpage “www.” as well as of the contained links have changed after the filing of the Complaint, and now allegedly refers to websites relating to “principals” such as school principals does not alter this assessment.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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 be transferred to the Complainant.
Knud Wallberg
Sole Panelist
Dated: February 16, 2009
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