Complainant is Principal Financial Services, Inc. of Des Moines, Iowa, United States of America, represented by Neal & McDevitt, LLC, United States of America.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Carl Simmions of Des Moines, Iowa, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 11, 2015. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. The Registrar promptly 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 Center sent an email communication to Complainant on September 21, 2015, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 24, 2015.
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 Respondent of the Complaint, and the proceedings commenced on October 1, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2015. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on October 23, 2015.
The Center appointed Steven L. Snyder as the sole panelist in this matter on November 12, 2015. 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
Complainant is a publicly traded multi-national financial services institution offering (through its licensees, member companies and affiliates) services in the financial, insurance, investment, banking, retirement, global asset management, real estate, and healthcare sectors, among others.
For many decades, Complainant has been based in Des Moines, Iowa. It has grown into one of the city's largest employers and established a global presence. Complainant now claims to have 19 million customers in 70 different countries and a management portfolio worth more than USD 519 billion. Complainant is also Respondent's neighbor: The Complainant's headquarters are located less than 1.5 miles from Respondent.
Complainant has long used the PRINCIPAL FINANCIAL GROUP mark in connection with its financial services. Based on its varied and extensive uses of the mark, Complainant has also obtained several service mark registrations from the United States Patent and Trademark Office for PRINCIPAL FINANCIAL GROUP, inter alia, No. 1,504,246 PRINCIPAL (registered on September 13, 1988) or No. 1,508,543 THE PRINCIPAL FINANCIAL GROUP (registered on October 11, 1988).
In addition to the above, Complainant is the owner of a number of domain names, among which was registered since 1999.
The WhoIs records show that on July 16, 2015, the disputed domain name was created. 5. Parties' Contentions A. Complainant
Extensive advertising, long usage, wide-spread recognition and numerous service mark registrations: Complainant argues that these factors clearly establish that it has rights in the PRINCIPAL FINANCIAL GROUP mark. It is also clear to Complainant that the disputed domain name is confusingly similar to its service mark: "Respondent's domain name PRINCIPALFINANCIALGROUPS.COM is virtually identical in sight, sound and meaning and, thus, confusingly similar to Complainant's Famous Family of PRINCIPAL Marks as well as Complainant's registrations for the domain names PRINCIPAL.COM, PRINCIPALFINANCIAL.COM, PRINCIPALFINANCIALGROUP.COM, and PRINCIPALFINANCIALGRP.COM, among others…."
Complainant contends that Respondent does not have any rights or legitimate interests in the disputed domain name. The company's use of its PRINCIPAL FINANCIAL GROUP mark long predated Respondent's registration of and the company has not authorized him to use its mark or to suggest any affiliation between himself and Complainant: "Complainant has never given Respondent permission, in any form whatsoever, to register and/or use the domain name and trademark PRINCIPALFINANCIALGROUPS.COM, direct consumer traffic to Complainant's website, utilize said domain in connection with email addresses, obtain credit and/or telecommunication services in Complainant's name, nor has Respondent become, or attempted to become a licensee of Complainant."
Complainant states that Respondent has registered and used the disputed domain name in bad faith. He has taken the company's well-known mark, put an "s" on the end of it, registered the disputed domain name, and then used it to create email addresses through which he has tried to consummate commercial transactions with third parties: "Respondent not only infringed Complainant's trademark rights, but also perpetrated a fraud upon the third parties it contacted through its fictitious PRINCIPALFINANCIALGROUPS.COM email addresses."
According to Complainant, Respondent linked the disputed domain name to Complainant's corporate website and started to use the email address "[…]@" to communicate with third parties. Complainant states that these actions were done without its consent.
Complainant also states that Respondent has represented to third parties that he was an officer of the company and could enter into agreements on its behalf. He reportedly tried to sign agreements with Vonage and with Birch Communications, two telecommunications companies, purportedly on behalf of Complainant. Representatives from both Vonage and Birch allegedly contacted Complainant and informed the company of Respondent' activities.
Complainant reports that Respondent has now created and is using a new email address based on the disputed domain name "[…]@" with the name of G. Scholten. G. Scholten is Complainant's Senior Vice President and Chief Information Officer.
Complainant requests that the disputed domain name be immediately transferred to its ownership in order "to protect Complainant's well-known Famous Family of PRINCIPAL Marks." B. Respondent
Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
To prevail in this action, Complainant must prove that: (a) The disputed domain name is "identical or confusingly similar to a trademark or service mark" in which Complainant has rights; (b) Respondent has "no rights or legitimate interests in respect of" the disputed domain name; and (c) the disputed domain name "has been registered and is being used in bad faith." SeePolicy paragraph 4(a). A. Identical or Confusingly Similar
Complainant has introduced evidence that it has used the mark PRINCIPAL FINANCIAL GROUP for many years, that engaged in extensive advertising, that it has obtained numerous registrations for the mark, and that it has acquired a stable of domain names incorporating the mark. That is more than enough to establish Complainant's rights in the mark.
As for confusing similarity, Complainant argues that there is virtually no difference between the disputed domain name and Complainant's trade mark PRINCIPAL FINANCIAL GROUP. There is, of course, one difference: The letter "s" on the end of the disputed domain name. To the Panel, this difference does not lessen the confusing similarity between the disputed domain name and Complainant's mark.
Another UDRP panel recently reached the same conclusion. In Tetra Laval Holdings & Finance S.A. v. Temme Steve/Steve Inc,WIPO Case No. D2015-1089, the complainant was a "multinational food processing and packaging company." For more than 60 years, complainant had used the TETRA PAK mark in connection with its products. In 2014, the respondent registered the domain name . The Panel held that the disputed domain name was "clearly confusingly similar to the Complainant's trademark. The mark is replicated and an 's' added. This is an obvious case of typosquatting."
In light of the above, the Panel considers that the first condition of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
Complainant has disavowed any connection between it and Respondent and argues that Respondent has no legitimate reason to use the PRINCIPAL FINANCIAL GROUP mark in the disputed domain name.
Respondent has not rebutted Complainant's proof or argument, but his actions speak louder than any words he could have offered. Respondent linked the disputed domain name to Complainant's own website and then used the disputed domain name to create email addresses. He has used those email addresses to propose business transactions with third parties, passing himself off as Complainant's representative. His latest move was to impersonate Complainant's head of IT.
On similar facts, other UDRP panels have ruled against the respondents. For example, in Graybar Services, Inc. v. Graybar Elec, Grayherinc Lawrenge, WIPO Case No. D2009-1017, the respondent registered a domain name that was virtually identical to the complainant's trademark. He then created email accounts based on the domain name and tried "to order goods from the Complainant's suppliers." Id. The panel characterized the respondent as having used "the domain name to perpetrate a fraud" and concluded that he had "no rights or legitimate interests in the domain name." Id.
In the Panel's view, the undisputed facts in the current case call for the same conclusion and therefore, the second condition of paragraph 4(a) of the Policy is also met. C. Registered and Used in Bad Faith
Respondent is located less than two miles from Complainant's world headquarters. Given Complainant's prominent position in Des Moines (Iowa, United States) and the large amounts Complainant spends on advertising, it is inconceivable that Respondent was unaware of Complainant's mark when he registered a domain name that is virtually identical to its mark. This is evidence of bad faith registration. See Dow Jones & Company, Inc. and Dow Jones, L.P. v. Powerclick, Inc.,WIPO Case No. D2000-1259 ("Complainant has shown that its trademarks are internationally famous. The Panel has no doubt that Respondent was well aware of Complainant's rights in the disputed domain name at the time Respondent registered them.").
As for the bad faith usage, that is evinced by Respondent's incorporation of Complainant's mark in the disputed domain name, the linking of the disputed domain name to Complainant's own website, the use of the disputed domain name to create email accounts, and the blatant misrepresentations to third parties that Respondent is affiliated with Complainant. See Najeti S.S.A. v. John Doe, "Jean Jacques Durand," WIPO Case No. D2012-0713 (noting use of disputed domain name to send emails); seePolicy paragraph 4(b)(iv) (characterizing as bad faith the intentional creation of a "likelihood of confusion" regarding respondent's "affiliation" with complainant).
Respondent has clearly joined the ranks of typosquatters.
Accordingly, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is also met. 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 name, , be transferred to the Complainant.
Steven L. Snyder
Sole Panelist
Date: November 23, 2015
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