ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Principal Financial Services, Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Name Redacted Case No. D2022-2803 1. The Parties Complainant is Principal Financial Services, Inc., United States of America ("United States"), represented by Neal & McDevitt, United States. Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Name Redacted1. 2. The Domain Name and Registrar The disputed domain name
is registered with NameCheap, Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2022. On July 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 29, 2022, the Registrar 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 August 1, 2022, 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 the same day. 1 Respondent appears to have used the name of an employee of Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent's name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST - 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788. page 2 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 August 8, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2022. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent's default on August 29, 2022. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on September 1, 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 Complainant is a multinational financial services company. It is the proprietor of numerous registrations for marks containing the element PRINCIPAL, including the following: - United States Trademark Registration No. 1508544 for THE PRINCIPAL (word mark), registered on October 11, 1988, for services in class 36; and - United States Trademark Registration No. 1562541 for PRINCIPAL (word mark), registered on October 24, 1989, for services in class 36. Complainant has registered a number of domain names reflecting its PRINCIPAL mark, including , , , , and . According to information provided by Complainant, the name of Respondent corresponds to the name of an employee of Complainant who did not register the disputed domain name. The identity of the real Respondent is unknown. The disputed domain name was registered on May 10, 2022. At the time of this Decision, it did not resolve to an active website. The record contains evidence that it was used to generate an email message to Complainant's supplier impersonating Complainant's employee. 5. Parties' Contentions A. Complainant Complainant's contentions may be summarized as follows: Complainant states that the contact information for Respondent provided by the Registrar listed the name of one of Complainant's executives and the physical address of Complainant's headquarters. Neither that executive nor anyone else at the direction of Complainant registered the disputed domain name. Complainant requests that Complainant's executive's name be redacted from the Decision. Under the first element, Complainant states that it has used the PRINCIPAL mark in connection with financial services since at least 1985. Complainant is a publicly traded multinational financial services institution offering a range of services in the insurance, financial, investment, banking, retirement, global asset management, real estate, and healthcare sectors. Complainant owns the well-established and famous family of PRINCIPAL service marks in many jurisdictions throughout the world, and has invested significantly page 3 in these marks. The PRINCIPAL mark has become distinctive and well known. The disputed domain name incorporates Complainant's PRINCIPAL mark in its entirety. Under the second element, Complainant states that there has never been any relationship between Complainant and Respondent that would give rise to any license, sponsorship, permission or authorization for Respondent to use or register the disputed domain name. Complainant has not authorized Respondent to use the PRINCIPAL mark for any purpose. Respondent registered the disputed domain name using the name of one of Complainant's executives. Under the third element, Complainant states that, as Respondent used the disputed domain name to impersonate an executive of Complainant, and indeed impersonated Complainant when it registered the disputed domain name, one cannot reasonably believe that Respondent was not aware of Complainant and its PRINCIPAL mark when it registered the disputed domain name. The PRINCIPAL mark is so closely linked and associated with Complainant that Respondent's use of this mark, or any minor variation of it, strongly implies bad faith. The disputed domain name was used to generate fraudulent email to one of Complainant's suppliers, using the name of Complainant's employee and reflecting Complainant's physical address and logo. B. Respondent Respondent did not reply to Complainant's contentions. 6. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. Under paragraph 15(a) of the Rules, "[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable". A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the PRINCIPAL mark through registrations in the United States and other jurisdictions. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.2.1. In comparing Complainant's mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar to this mark as the PRINCIPAL mark is clearly recognizable within the disputed domain name. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, 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. See WIPO Overview 3.0, sections 1.7 and 1.8. page 4 It is the well-established view of UDRP panels that a generic Top-Level Domain ("gTLD") such as ".com" is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1. Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, respondent's use of, or 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) respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name nor is using the PRINCIPAL mark with the permission of Complainant. The nature of the disputed domain name, which reflects Complainant's mark in its entirety together with descriptive terms related to Complainant's business, cannot constitute fair use since it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See, for example, Iflscience Limited v. Domains By Proxy LLC / Dr Chauncey Siemens, WIPO Case No. D2016-0909; and B&B Hotels v. WhoisGuard Protected, WhoisGuard, Inc. / Soro Wonna, WIPO Case No. D2020-2837. See also WIPO Overview 3.0, section 2.5.1. The Panel therefore finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant's contentions. The circumstances of the case prevent the inference of rights nor legitimate interests on the part of Respondent. The record reflects that the disputed domain name was used by Respondent to impersonate Complainant in an attempt to perpetuate a fraudulent scheme. Such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith The Panel finds that Complainant has demonstrated Respondent's bad faith registration and use of the disputed domain name. Complainant's rights in its PRINCIPAL marks predate by more than 30 years the registration of the disputed domain name. The disputed domain name reflects Complainant's established PRINCIPAL mark in its entirety, together with the dictionary terms "insurance group," which are related to Complainant's business. UDRP panels have consistently found that the mere registration of a domain name page 5 that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith on the part of Respondent. See WIPO Overview 3.0, section 3.1.4. In this case, the record shows that Respondent deliberately targeted Complainant and its PRINCIPAL mark. The Panel finds the evidence in the record establishes that Respondent has attempted to pass itself off as Complainant to perpetuate what appears to be a fraudulent scheme. The Panel finds that Respondent thereby attempted to impersonate Complainant for commercial gain, indicating bad faith in registration and use of the disputed domain name. See WIPO Overview 3.0, section 3.2.1. Respondent has provided no evidence of actual or contemplated good-faith use of the disputed domain name and the Panel does not find any such use plausible. The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 name, , be transferred to Complainant. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: September 14, 2022
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