WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Principal Financial Services, Inc. v. Michail Solncev Case No. D2009-1801 1. The Parties
The Complainant is Principal Financial Services, Inc. of United States of America, represented by Neal & McDevitt of United States of America.
The Respondent is Michail Solncev of Moscow, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 30, 2009. On January 4, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On January 6, 2010, eNom 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 14, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 4, 2010.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on February 8, 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. 4. Factual Background
The factual background is taken from information submitted by the Complainant.
The Complainant is a major company, quoted on the New York Stock Exchange, engaged in various areas of business broadly under the umbrella of finance, including insurance, investment, banking, retirement planning and real estate. It has used the name PRINCIPAL in trade or service marks (hereafter, trademarks) since at least as early as 1985, and through its predecessor-in-interest in connection with financial analysis and consulting, management of securities and securities brokerage services, since at least as early as 1960.
The Complainant owns a number of registered trademarks incorporating the word PRINCIPAL alone or in combination, registered between 1987 and the present, and also claims numerous common law trademarks and business names incorporating the name PRINCIPAL.
The Complainant owns the domain name and other domain names incorporating its trademark PRINCIPAL.
Nothing is known about the Respondent except for the information provided on the registration document for the disputed domain name , which appears to have been registered on July 27, 2000. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is virtually identical or confusingly similar to a trademark or service mark in which it has rights. A list of 35 USPTO trademarks is submitted, each incorporating the name PRINCIPAL, such as PRINCIPAL; THE PRINCIPAL; THE PRINCIPAL PLAN; THE PRINCIPAL FINANCIAL GROUP. Each entry is qualified by the trademark registration number and date, and a description of the services trademarked. Two examples are selected:
Trademark: PRINCIPAL
Registration number: 1,562,541
Registration date: October 24, 1989
Services: financial analysis and consulting, management of securities and securities brokerage services.
Trademark: PRINCIPAL
Registration number: 3,324,583
Registration date: October 30, 2007
Services: Tax consulting services; annuities underwriting and investment, management of, distribution and administration services, namely, providing administrative services for fixed and variable annuities; funds investment; trust and custodial services for retirement plans, namely, investment of funds for others in the field of mutual funds and individual retirement accounts; administration of employee pension plans; financial services in the nature of an investment security; investment management services; mutual fund investment, distribution and brokerage; administration of employer provided and individual pension and income programs; registered investment advisory services and broker-dealer securities services, namely, brokering and dealing in securities and providing investment advisory services; banking services; consumer loan financing; pension plan consulting; estate planning; financial planning; administration services of insurance in the fields of life, health, disability, dental, prescription drug, vision and accidental death and dismemberment; administration services for deferred compensation benefit plans, profit sharing plans, cafeteria plans and other employee benefit plans; insurance underwriting and brokerage services for groups and individuals in the fields of life, health, disability and dental; mortgage banking services; mortgage brokerage services; real estate mortgage lending and mortgage asset procurement for others; maintaining real estate mortgage escrow accounts; real estate investment services; real estate management; leasing of commercial real estate; financial investment in the field of real estate development; providing administration services to employee welfare benefit plans and pre-paid dental plans and claims administration, namely, claims processing and retail commercial banking services, namely, checking, savings, money market, credit cards, certificates of deposit, mortgage loans, commercial real estate lending, and corporate banking services.
The Complainant asserts ownership of 65 common law trademarks such as PRINCIPAL ASSET MANAGEMENT COMPANY (ASIA) LTD and 65 business names that are essentially the same as the common law trademarks.
The Complainant submits that the difference between the words PRINCIPAL and “pricipal” is minimal, that the disputed domain name incorporates a misspelling of its trademark, and that the two words are phonetically similar, therefore there is confusing similarity.
The Respondent further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has never given the Respondent permission to use the Complainant's trademark and the Respondent is not a licensee of the Complainant. There is no evidence that the Respondent is the owner of any relevant trademarks in the United States, or that he (as an individual, business, or other organization) has been commonly known by the disputed domain name. There is no evidence of the Respondent's use of, or demonstrable preparations to use, the disputed domain name or any corresponding name in connection with a bona fide offering of goods or services. Respondent is not making a legitimate noncommercial or fair use of the domain name.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith, particularly in the terms of paragraph 4(b)(iv) of the Policy. The Complainant says that because its trademark PRINCIPAL is so well known, the Respondent has attempted to attract, for commercial gain, Internet users by confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or of products or services thereon. The Complainant submits evidence in the form of screenshots to the effect that the Respondent's website contains click-through links intended to direct traffic to websites featuring products and services of the Complainant's competitors.
The Complainant cites a number of previous decisions under the UDRP that it submits may be considered as precedent in the context of the present case.
The Complainant requests the transfer to it of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant') asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. A. Identical or Confusingly Similar
The Complainant must prove, first that it has rights in a trademark, and second, that the trademark and the disputed domain name are confusingly similar.
The Complainant has submitted a list of its trademark registrations at the USPTO for words or devices featuring the name PRINCIPAL, more than one of which is for or incorporates the word PRINCIPAL alone. The list is uncontested and the Complainant certifies that its evidence is complete and accurate. The Panel is satisfied that the Complainant has rights in the trademark PRINCIPAL.
The disputed domain name is , of which the gTLD directory “.com” may be neglected for the purposes of determining confusing similarity. The entity that remains, “pricipal”, is not a dictionary word. In so far as the mind may tend to correct or fail to notice some typographical errors, and may tend to substitute an obvious context word, the entity “pricipal” is found to be a misspelling of PRINCIPAL and likely to be read as such. Similarly, since the inadvertent omission of a random letter is an experience familiar to keyboard users, it may be predicted that the trademark PRINCIPAL may occasionally be typed as “pricipal”. The Panel finds confusing similarity proven within the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant states that it has never had any dealings with the Respondent and has never in any way licensed or permitted the Respondent to use the Complainant's trademark. The Complainant says there is no evidence for the Respondent having any other right or legitimate interest in the disputed domain name. As far as the Complainant has ascertained, the Respondent does not hold any related trademark, is not known by the disputed domain name, has not conducted bona fide business through the corresponding website and is not using the disputed domain name for any legitimate fair or noncommercial purpose.
The Complainant is found to have made out a prima facie case within the requirements of paragraph 4(a)(ii) of the Policy to the effect that the Respondent does not have rights or legitimate interests in the disputed domain name and the Respondent has offered no rebuttal either within the terms of paragraph 4(c) of the Policy or otherwise.
The Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Complainant is required to prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or location.
The Respondent has not explained his use of the disputed domain name, therefore it is necessary to infer it from the evidence. The Complainant has submitted screenshots of the pages from the Respondent's corresponding website. At the time the screenshots were recorded, the website appeared to involve a search engine and offered the visitor 200 links to other websites, predominantly in the realms of finance, debt, credit, loans, stocks, investments, insurance, banking and mortgages.
On the balance of probabilities it may reasonably be concluded that the Respondent has harnessed the disputed domain name to the well-known business of generating revenue by referral of visitors to other websites that pay a fee for each referral, a system known as click-through or pay-per-click. This modus is widely used to generate revenue in order to subsidise information and other websites, or simply as a way of making money, and can be entirely legitimate. It is not legitimate, however, to attract visitors by the intentional misuse of another's trademark and through initial interest confusion, causing or allowing visitors to think that the website may be operated or endorsed by the holder of the trademark when it is not.
On the facts, it may reasonably be concluded that the Respondent expects Internet users to arrive at the website of the disputed domain name either after erroneously typing “pricipal” instead of PRINCIPAL when seeking the Complainant, or through misreading “pricipal” as PRINCIPAL among the findings displayed by a search engine. The 200 links offered to visitors by the Respondent's website at the time of the screenshots were competitors of the Complainant within the same broadly financial field of business. The finding of the Panel is that in the terms of paragraph 4(b)(iv) of the Policy the Respondent intended to attract Internet users by confusion with the Complainant's trademark for the purpose of commercial gain.
The date of registration of trademark number 1,562,541 was October 24, 1989 (section 5A above), being before the Respondent evidently registered the disputed domain name. The comprehensive list of services covered by trademark number 3,324,583, registered by the Complainant on October 30, 2007, fully encompasses the wide range of financial services referred to on the Respondent's website. The Panel finds the registration and use of the disputed domain name to have been in bad faith. 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.
Dr. Clive N.A. Trotman
Sole Panelist
Dated: February 15, 2010
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