Principal Financial Services, Inc. v Barry Friedman, Seaport 17th Care
WIPO Case No. D2024-4955
•17-01-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Principal Financial Services, Inc. v. Barry Friedman, Seaport 17th Care
Center
Case No. D2024-4955
1. The Parties
The Complainant is Principal Financial Services, Inc., United States of America, represented by Neal &
McDevitt, United States of America (“United States”).
The Respondent is Barry Friedman, Seaport 17th Care Center, United States.
2. The Domain Name and Registrar
The disputed domain name <principalfinancial.app> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2024. On December 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 2, 2024, 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 (Registration Private / Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 3, 2024, 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 December 3, 2024.
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 December 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 26, 2024. The Respondent sent email communications to the Center on several occasions in December 2024 and January 2025.
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Pursuant to paragraph 6 of the Rules, on January 2, 2025, the Center informed the Parties that it would proceed with the panel appointment process
The Center appointed William F. Hamilton as the sole panelist in this matter on January 3, 2025. 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 multi-national financial services company 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.
The Complainant owns numerous registrations for the trademark PRINCIPAL used individually and as a formative foundation for other registered trademarks in many jurisdictions around the world, including for example, United States Reg. No. 1,562,541 for the trademark PRINCIPAL registered on October 24, 1989,
and United States Reg. No. 4,483,644 for the trademark PRINCIPAL FINANCIAL GROUP registered on
February 18, 2014. Herein, the Complainant’s trademarks will be referred to collectively as the PRINCIPAL
Marks.
In addition to the PRINCIPAL Marks, the Complainant owns registrations for the domain names
<principal.com>, <principalbank.com>, <principalfinancial.com>, <principalfinancialgroup.com>, and
<principalfinancialgrp.com>, among numerous other PRINCIPAL formative domain names.
The dispute domain name was registered on January 30, 2019. The disputed domain name resolves to a website featuring pay-per-click to competitive services and products.
5. Parties’ Contentions
A. Complainant
The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.
Notably, the Complainant contends that the disputed domain name is confusingly similar to its PRINCIPAL marks for a variety of reasons. The Complainant contends the disputed domain name is confusing similar to the PRINCIPAL trademark because the disputed domain name merely adds a term descriptive term “financial” to the PRINCIPAL trademark. The Complainant further contends that the disputed domain is confusing similar to the Complainant’s trademark PRINCIPAL FINANCIAL GROUP because the disputed domain merely omits the trademark’s last word “group”.
The Complainant contends that the Complainant has never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, has never operated a business under the disputed domain name, has not advertised the disputed domain name, and has never engaged in any bona fide commercial activity in connection with the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in the PRINCIPAL Marks and has registered and used the disputed domain name in bad faith to unfairly compete with the Complainant by attracting unsuspecting Internet users to the Respondent’s website which offers links to competitive services and products.
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B. Respondent
The Respondent emailed the Center on December 6, 2024, offering to sell the disputed domain name to the disputed domain name. The due date for a Response to the Complaint was December 26, 2024. Twice on January 2, 2024, the Respondent emailed the Center requesting an unspecified amount of time to respond to the Complaint. The Complainant objected to the extension request. The Respondent did not thereafter reply to the Complainant’s contentions nor provide any recognized circumstances justifying an extension. The Respondent did not make any response to the Complaint for the Panel’s consideration.
Complainant for USD 1,000. On December 10, 2024, the Complainant emailed the Center requesting the
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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
It is well-accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
The Complainant has shown rights in the PRINCIPAL Marks for the purposes of the Policy by virtue of the numerous registrations of the PRINCIPAL Marks. The disputed domain name is confusingly similar to the PRINCIPAL trademark because the disputed domain name entirely replicates the PRINCIPAL trademark and
merely adds the industry term “financial.” Alternatively, the disputed domain name is confusingly similar to the Complainant’s trademark PRINCIPAL FINANCIAL GROUP because the disputed domain name merely omits the last word of the trademark. These minor alterations of the PRINCIPAL Marks do not prevent a
finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8; H-D U.S.A., LLC v.
Privacyguardian.org/ Atomic Art, WIPO Case No. D2021-1623.
The generic Top-Level Domain (“gTLD”) of the disputed domain name, viz. “app,” may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.
Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative,” requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of
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proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1.
The Complainant has never authorized or licensed the Respondent to use its Mark. The Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this showing and has not provided evidence of any of the circumstances set forth in paragraph 4(c) of the Policy.
The use of the disputed domain name to resolve to a pay-per-click website offering competitive services and products does not establish any Respondent rights or legitimate interests in the disputed domain name.
The Panel finds the second element of the Policy has been established.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has
engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of
a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
| of the PRINCIPAL Marks. Given the fame of the Complainant’s trademarks and the Respondent’s use of the | The Respondent registered the disputed domain name many decades after the Complainant’s registrations coincidentally selected the precise domain without any knowledge of the Complainant and its trademarks). |
| The Respondent’s use of the disputed domain name to host a webpage displaying pay-per-click advertisements constitutes evidence of bad faith under paragraph 4(b)(iv) of the Policy. By using the disputed domain name, which incorporates the Complainant’s trademark, the Respondent intentionally seeks to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. | |
| The Respondent’s bad faith registration and use of the disputed domain name is further evidenced under the circumstances of this case by the Respondent’s failure to the respond to the Complaint, vague requests for extension of time to respond to the Complaint, and the offer to sell the disputed domain name to the |
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Complainant for USD 1,000, an amount, without evidence to the contrary, most likely exceeding the actual costs of registering the disputed domain name. WIPO Overview 3.0, section 3.1.1.
The Panel finds that the Complainant has established the third element 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 <principalfinancial.app> be transferred to the Complainant.
/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: January 17, 2025.
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