ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Principal Financial Services, Inc. v. Johnson Zhang, xiao long lin, and WhoisSecure / Manlidy, GNN Case No. D2022-2479 1. The Parties The Complainant is Principal Financial Services, Inc., United States of America ("United States" or "U.S."), represented by Neal & McDevitt, LLC, United States. The Respondents are Johnson Zhang, Singapore; xiao long lin, China; and WhoisSecure, United States / Manlidy, GNN, Singapore. 2. The Domain Names and Registrars The disputed domain names
and are registered with Realtime Register B.V. (the "First Registrar"); the disputed domain names , , and are registered with Gname.com Pte. Ltd. (the "Second Registrar"); and the dispute domain names <8principal.com> and <9principal.com> are registered with OwnRegistrar, Inc. (the "Third Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 7, 2022. On July 8, 2022, the Center transmitted by email to the concerned Registrars a request for registrar verification in connection with the disputed domain names. On July 11, 2022, the First 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. On July 12, 2022, the Second 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 July 15, 2022, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amended Complaint on July 20, 2022, requesting addition of the disputed domain names , <8principal.com>, and <9principal.com> to the proceeding. On July 21, 2022, the Center transmitted by email to the concerned Registrars a request for registrar verification in connection with the disputed domain names , <8principal.com>, and <9principal.com>. On July 21, 2022, the Third 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. On July 27, 2022, the First Registrar transmitted by email to the Center its verification response page 2 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 July 28, 2022, providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the second amended Complaint on August 2, 2022. The Center verified that the Complaint together with the first amended Complaint and the second 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 Respondents of the Complaint, and the proceedings commenced on August 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondents' default on August 29, 2022. The Center appointed Taras Kyslyy as the sole panelist in this matter on August 31, 2022. 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 offering, through its licensees, member companies, and affiliates, a broad range of services in the financial, insurance, investment, banking, retirement, global asset management, real estate, and healthcare sectors, among others. Through its licensees, affiliates, and member companies, the Complainant has used its PRINCIPAL trademark since at least as early as 1985. The Complainant owns PRINCIPAL trademarks in many jurisdictions throughout the world, including, for instance the United States trademark registration No. 1,562,541, registered on October 24, 1989. The Complainant also owns registrations for the domain names , , , , and , among numerous other PRINCIPAL formative domain names. The Complainant has invested well in excess of one billion U.S. dollars in its PRINCIPAL trademarks over the years, which the consuming public has come to associate with the Complainant. The disputed domain name was registered on May 6, 2022. The disputed domain name was registered on May 8, 2022. The disputed domain names and were registered on June 9, 2022. The disputed domain names <9principal.com> and <8principal.com> were registered on June 23, 2022. All of the disputed domain names resolved to websites with similar design prominently featuring the Complainant's trademark and a photograph of employees of the Complainant and a pop-up prompting users to click on a "confirm" button before entering the site. The content of the websites appeared to be related to financial transactions. At the time of the decision the disputed domain names do not resolve to any active website. 5. Parties' Contentions A. Complainant The disputed domain names are identical or confusingly similar to the Complainant's trademark. The disputed domain names incorporate the Complainant's trademark in its entirety. The presence of the various numbers within the disputed domain names do not eliminate the confusing similarity. When comparing the page 3 disputed domain names to the Complainant's trademark, the extension should not be taken into account. The content of the Respondents' websites confirms the confusing similarity between the disputed domain names and the Complainant's trademark. The Respondents have no rights or legitimate interests in the disputed domain names. The Complainant has not authorized Respondents to use the Complainant's trademark in the disputed domain names. The use of the Complainant's trademark in the disputed domain names is not a noncommercial or fair use. The Respondents have not been known by the disputed domain names. The Respondents have not used the disputed domain names, nor have they engaged in demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services. The disputed domain names were registered and are being used in bad faith. Because the Complainant's trademark is well known, it is implausible to believe that the Respondents were not aware of the trademark when it registered the disputed domain names. Based on the contents of the websites, the Respondents registered and intended to use the disputed domain names to impersonate the Complainant. There is no other explanation for the Respondents' selection and prominent placement of the Complainant's trademark and a photograph of the Complainant's executives on each landing page of the disputed domain names at issue. B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings A. Preliminary Issues - Consolidation The Complainant requested the Panel to hear the present dispute brought against multiple respondents as a consolidated Complaint. Paragraph 10(e) of the Rules states that a "[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules." Paragraph 10(c) of the Rules provides, in relevant part, that "the [p]anel shall ensure that the administrative proceeding takes place with due expedition". Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") summarizes the consensus view of UDRP panels on the consolidation of multiple respondents, in part, as follows: "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario". The Complainant asserts, among other things, that the Respondents should be treated as one respondent in this proceeding, based on the following: (i) the disputed domain names were registered close in time to one another, (ii) the disputed domain names contain the Complainant's trademark and mirror the pattern of the Complainant's trademark, plus numerical values and generic Top-Level Domains ("gTLDs") ".com" and ".vip", (iii) the disputed domain names were registered with, or resold using, the same entity, (iv) the content on the websites associated with of each of the disputed domain names contains the same imagery in an attempt to imitate the Complainant, (v) all of the disputed domain names are configured with the same name servers. page 4 The Panel accepts these arguments in favor of consolidation and grants the request to consolidate the Respondents into one proceeding. Hereafter, the Panel will refer to the Respondents as the "Respondent". B. Identical or Confusingly Similar According to section 1.11.1 of the WIPO Overview 3.0, the applicable gTLD in a domain name (e.g., ".com", ".club", ".nyc") is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLDs ".com" and ".vip" for the purposes of the confusing similarity test. According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain names incorporate the entirety of the Complainant's trademark. According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The Panel finds that the addition of numbers "11", "886", "9", and "8" to the disputed domain names do not prevent a finding of confusing similarity with the Complainant's trademark. Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant's trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. Furthermore, the Respondent provided no evidence that it holds rights or legitimate interests in the disputed domain names. The available evidence confirms that the Respondent is not commonly known by the disputed domain names, which could demonstrate its rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642). The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain names could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875). The disputed domain names used to redirect Internet users to a website with a logo similar to the Complainant's and using photos of the Complainant's employees to make the Internet users believe that they actually access website owned or controlled by the Complainant. Past UDRP panels confirmed that such actions prove the respondent has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211). The Respondent has no right or legitimate interests in the disputed domain names as they resolve to an inactive website at the time of the decision (see, e.g., Philip Morris USA Inc. v. Daniele Tornatore, WIPO Case No. D2016-1302). page 5 Considering the above the Panel finds the Respondent does not have any rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith According to section 3.2.2 of the WIPO Overview 3.0, further factors including the nature of the domain name, the chosen TLD, any use of the domain name, or any respondent pattern, may obviate a respondent's claim not to have been aware of the complainant's mark. In the present case the Respondent shortly after registration of the disputed domain names incorporating the Complainant's trademark placed a website prominently featuring the Complainant's trademark and displaying photos of the Complainant's employees. The Panel finds that the nature of the disputed domain names and its use confirms the Respondent knew or should have known of the Complainant's prior trademark rights, which confirms the bad faith. According to paragraph 4(b)(iv) of the Policy, the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith: "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location." In this case, the disputed domain names were resolving to websites prominently featuring the Complainant's trademark and displaying photos of the Complainant's employees aiming to create an impression that they are owned or authorized by the Complainant to intentionally attract Internet users by creating likelihood of confusion with the Complainant's trademark as to the source of the Respondent's websites and its products. The Panel finds the above confirms the disputed domain names were registered and used in bad faith. In addition, although at the time of this decision the disputed domain names resolve to inactive webpages, its previous bad faith use and lack of explanation of possible good faith use from the Respondent makes any good faith use of the disputed domain names implausible. Thus, the current passive holding of the disputed domain names does not prevent a finding of bad faith (see, e.g., Abbott Diabetes Care Inc. v. Privacy Protection, Hosting Ukraaine LLC / Виталий Броцман (Vitalii Brocman), WIPO Case No. DPW2017-0003). Considering the above, the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under paragraph 4(a)(iii) of the Policy. 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, , , , , , <8principal.com>, and <9principal.com>, be transferred to the Complainant. /Taras Kyslyy/ Taras Kyslyy Sole Panelist Date: September 14, 2022
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