Principal Financial Services, Inc. v Host Master, Transure Enterprise Ltd

WIPO Case No. D2022-1839

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Host Master, Transure Enterprise Ltd

Case No. D2022-1839

1. The Parties

Complainant is Principal Financial Services, Inc., United States of America (“United States”), represented by

Neal & McDevitt, United States of America.

Respondent is Host Master, Transure Enterprise Ltd, United States.

2. The Domain Name and Registrar

The disputed domain name <principelbank.com> is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2022.

On May 23, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 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 May 28, 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 June 2, 2022.

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 June 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was July 3, 2022. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on July 4, 2022.

page 2

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on July 8, 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, Principal Financial Services, Inc., is a financial service institution that provides a variety financial, insurance, investment, banking, retirement, global asset management, and other services.

Complainant owns a number of trademark registrations in the United States that include the word “principal”

alone or with other words, the earliest of which for THE PRINCIPAL FINANCIAL GROUP and THE (Registration No. 5,039,159), which issued to registration on September 13, 2016. Lastly, Complainant owns and uses the domain name <principal.com> for a website providing information concerning Complainant and its services and from which customers of Complainant can log in to their accounts.

PRINCIPAL (Registration Nos. 1,508,543 and 1,508,544) issued to registration on October 11, 1988.

Respondent, who appears to be based in Wilmington, Delaware, United States, registered the disputed domain name on April 20, 2022. Respondent has used, and continues to use, the disputed domain name in

connection with either a landing page which contains pay-per-click (“PPC”) links for various financial

offerings or to a page offering web users to “Click continue to go to the Chrome Web Store and install our

Chrome Extension“ for a purportedly safer searching experience.

5. Parties’ Contentions

A. Complainant

Complainant maintains that it is the owner of a family of famous PRINCIPAL marks used in connection with its various services and that it has used the PRINCIPAL marks since at least as early as 1960.

Complainant asserts that the disputed domain name is nearly identical and confusingly similar to

Complainant’s PRINCIPAL BANK and PRINCIPAL marks.

Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as or to other offers, (ii) has never received permission from Complainant to register or use the disputed domain

name based on Complainant’s PRINCIPAL marks, (iii) is not commonly known by the disputed domain

name, and (iv) has never received a license from Complainant to use the disputed domain name.

Lastly, Complainant contends that Respondent has registered and used the disputed domain name

opportunistically and in bad faith as Complainant’s PRINCIPAL marks are well-known worldwide.

Complainant further contends that Respondent’s bad faith is established by Respondent’s use of the

disputed domain name with a landing page full of links for financial services offered by third parties and by

Respondent’s established and extensive history of bad faith registration and use of domain names based on

the marks of others in over 189 proceedings.

B. Respondent

Respondent did not reply to Complainant’s contentions.

page 3

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii)       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

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. Section 1.2.1. of the WIPO Overview of

WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has

provided evidence that it owns a trademark registration for the PRINCIPAL BANK mark and many other
marks consisting of PRINCIPAL alone or with other words, and that such issued to registration years before

Respondent registered the disputed domain name.

With Complainant’s rights the PRINCIPAL BANK and PRINCIPAL marks established, the remaining question

under the first element of the Policy is whether the disputed domain name (typically disregarding the generic

Top-Level Domain (“gTLD”) such as “.com”) is identical or confusingly similar with Complainant’s mark. See

B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph GrossD2010-0842

, WIPO Case No. . incorporating the identical mark in a disputed domain name is sufficient to meet this standing requirement.

In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s PRINCIPAL and

PRINCIPAL BANK marks as it fully and clearly includes a misspelling of the PRINCIPAL mark and

essentially copies Complainant’s PRINCIPAL BANK mark. The Panel therefore finds that Complainant has
satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s

PRINCIPAL BANK and PRINCIPAL marks and in showing that the disputed domain name is confusingly similar to those trademarks.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Respondent has used the disputed domain name with a website that provides financial links which in turn lead to further links promoting various third party financial services. Respondent has also used the disputed

domain name to offer downloads for an alleged “Chrome Extension” for a safer browsing experience.

Reviewing the web pages that appear at the disputed domain name, it appears fairly obvious that

Respondent registered the disputed domain name that plays upon Complainant’s PRINCIPAL and

PRINCIPAL BANK marks and names as a way to drive web traffic to Respondent’s website for Respondent’s

profit. Such use of the disputed domain name does not amount to a bone fide use or provide Respondent
with a legitimate interest in the disputed domain name. See WIPO Overview 3.0 at section 2.5.3.

page 4

Given that Complainant has established with sufficient evidence that it owns rights in the PRINCIPAL and

PRINCIPAL BANK marks, and given Respondent’s above noted actions, the Panel concludes that

Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

In this matter, Respondent has registered the disputed domain name that plays upon and is a typosquatted

version of Complainant’s PRINCIPAL and PRINCIPAL BANK marks, and used such with web pages

promoting various third party financial and other products, services, and offerings of third parties for

Respondent’s profit. Given that the disputed domain name appears to be a deliberate misspelling of

Complainant’s PRINCIPAL and PRINCIPAL BANK marks support Complainant’s contention that Respondent

registered the disputed domain name to take advantage of Complainant’s rights in the PRINCIPAL and
PRINCIPAL BANK marks for Respondent’s profit. That this is likely the case is supported by the fact that

Respondent has been found in well over one hundred cases to have registered and used domain names in bad faith based on the marks of others for similar purposes.

Simply put, the evidence before the panel, none of which of which is contested by Respondent, makes it more likely than not that Respondent opportunistically registered and used the disputed domain name to

intentionally and misleadingly attract Internet users to Respondent’s website for Respondent’s own profit.

See WIPO Overview 3.0 at Section 3.1.4 (and cases cited therein).

Accordingly, the Panel finds that Complainant succeeds under this 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 <principelbank.com> be transferred to Complainant.

/Georges Nahitchevansky/

Georges Nahitchevansky

Sole Panelist
Date: July 22, 2022