ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Principal Financial Services, Inc. v. Aron Maxwell Case No. D2023-0272 1. The Parties The Complainant is Principal Financial Services, Inc., United States of America ("United States"), represented by Neal & McDevitt, United States. The Respondent is Aron Maxwell, United States. 2. The Domain Name and Registrar The disputed domain name
(the "Disputed Domain Name") is registered with NameSilo, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 20, 2023. On January 23, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 24, 2023, 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 (Redacted for Privacy, PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email communication to the Complainant on January 25, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 26, 2023. 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 the Respondent of the Complaint, and the proceedings commenced on January 31, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 20, 2023. The Respondent did not file a substantive response, but informal emails were sent to the Center on January 25, 29, 31 and February 21, 2023 from what appears to be the hosting provider, and the Respondent. page 2 The Center appointed Lynda M. Braun as the sole panelist in this matter on March 2, 2023. 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, multi-national 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 owns and has used its PRINCIPAL trademarks since at least as early as 1985. In addition, the Complainant, via a predecessor-ininterest, has used the family of PRINCIPAL trademarks in connection with financial analysis and consulting, management of securities and securities brokerage services since at least as early as 1960. The Complainant owns the PRINCIPAL trademark with the United States Patent and Trademark Office ("USPTO) as follows: PRINCIPAL, United States Registration No. 1,562,541, registered on October 24, 1989, with its date of first use in commerce on July 8, 1960, in International Class 36.1 The Complainant also owns the PRINCIPAL trademark in other jurisdictions worldwide. The foregoing trademarks will hereinafter collectively be referred to as the "PRINCIPAL Mark". Given the extensive use of the PRINCIPAL trademarks for over three decades, the Complainant's marks have become distinctive and well-known in the financial, insurance, investment, banking, real estate, health care, and several other service areas. The Complainant also owns registrations for the domain names , , , , , among others. The Disputed Domain Name was registered on October 12, 2022, and redirected to a website mimicking the Complainant and its website. The Respondent's website used the Complainant's physical address on its home page, and also designed the website to include the Complainant's PRINCIPAL Mark and stylized "P" Mark throughout the site.2 Moreover, the Respondent purported to offer investment-related services on the website that are identical to the services provided by the Complainant. However, the Complainant recognized that the Respondent's website was not a legitimate investment services platform, but was a fraudulent, bogus website. For example, the Respondent published a fake "Certificate of Registration" on its website. The certificate is fake and had been posted to give a false sense of the Respondent's legitimacy. Further, the website is also part of a phishing scheme that requires Internet users to provide sensitive information to the Respondent via a sign-up page used for the collection of such information. 5. Parties' Contentions A. Complainant The following are the Complainant's contentions: - the Disputed Domain Name is confusingly similar to the Complainant's PRINCIPAL Mark; 1 The Complainant also owns various formations of the stylized "P" trademark, for example: P, United States Registration No.5,083,508, registered on November 15, 2016, in International Class 36. The P trademark is used in connection with similar financial and other services (hereinafter referred to as the "P Mark"). 2 As of the writing of this Decision, however, the Respondent's website has been taken down and the Disputed Domain Name currently resolves to an error landing page page 3 - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; - the Disputed Domain Name was registered and is being used in bad faith; and - the Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not file a substantive response but sent informal emails to the Center on January 25, 29, 31 and February 21, 2023, making statements such as "What am getting for the domain name transfer", "The website is offline", and "Hello what do you need me to do". 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)): (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry, a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the PRINCIPAL Mark. It is uncontroverted that the Complainant has established rights in the PRINCIPAL Mark based on its fame as well as its trademarks for the PRINCIPAL Mark in jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case". Thus, the Panel finds that the Complainant satisfied the threshold requirement of having rights in the PRINCIPAL Mark. The Disputed Domain Name consists of the PRINCIPAL Mark in its entirety followed by the terms "global", "investment" and "company", and then followed by the generic Top-Level Domain ("gTLD") ".com". It is well established that a domain name that wholly incorporates a trademark may be deemed confusingly similar to that trademark for purposes of the Policy despite the addition of other terms. As stated in section 1.8 of 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". Finally, the addition of a gTLD such as ".com" in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Disputed Domain Name is confusingly similar to the Complainant's PRINCIPAL Mark. page 4 Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use the Complainant's PRINCIPAL Mark. The Complainant does not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it. Moreover, the Complainant does not have any business relationship with the Respondent and based on the use made of the Disputed Domain Name to resolve to a website that is identical in content and layout, and displays the Complainant's PRINCIPAL and P Marks, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition, the Respondent is using the Disputed Domain Name to trade on the Complainant's PRINCIPAL Mark and to deceive Internet users into thinking that they arrived at a site belonging to the Complainant. The Respondent also used the Disputed Domain Name as part of a fraudulent phishing scheme to encourage the Complainant's customers to fill out login forms so that the customers would provide sensitive and confidential financial information to the Respondent. "Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent." See WIPO Overview 3.0, section 2.13.1. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant's prima facie case. As such, the Panel determines that the Respondent does not have rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy. First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163. Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith to target the Complainant's PRINCIPAL Mark as part of a fraudulent phishing scheme. page 5 Second, the Panel finds that the Respondent had actual knowledge of the Complainant's PRINCIPAL Mark and targeted the Complainant when it registered the Disputed Domain Name, demonstrating the Respondent's bad faith. Based on the widespread use of the PRINCIPAL Mark worldwide, it strains credulity to believe that the Respondent had not known of the Complainant or its PRINCIPAL Mark when registering the Disputed Domain Name. The Respondent's awareness of the Complainant and its PRINCIPAL Mark additionally suggests that the Respondent's decision to register the Disputed Domain Name was intended to cause confusion with the Complainant's PRINCIPAL Mark and to disrupt the Complainant's business. Such conduct indicates that the Respondent registered and used the Disputed Domain Name in bad faith. Third, the Panel concludes that the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's PRINCIPAL Mark as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Name's resolving website. The Respondent's registration and use of the Disputed Domain Name indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its PRINCIPAL Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain"). Fourth, at the time of registration of the Disputed Domain Name, the Respondent knew of the Complainant and its PRINCIPAL Mark, as demonstrated by the Respondent's use of the Complainant's physical mailing address on the Respondent's website. Moreover, the presence of the Complainant's stylized "P" Mark as a favicon makes it clear that the Respondent specifically targeted the Complainant. The Respondent's bad faith is further supported by the publication of a bogus business registration certificate on its website. In addition, the Disputed Domain Name redirected to the Respondent's website, which was identical to the Complainant's website, another instance of bad faith. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant. 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. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: March 10, 2023
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