Principal Financial Services, Inc. v Privacy service provided by Withheld for

WIPO Case No. D2022-1509

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Privacy service provided by Withheld for
Privacy ehf / bei shang

Case No. D2022-1509

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, Island / bei shang, Yemen.[1]

[1] It is evident from the case file that Privacy service provided by Withheld for Privacy ehf, Island, is a privacy protection service and that

2. The Domain Name and Registrar

The disputed domain name <principalfinancial.xyz> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2022. On April 27, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 27, 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 April 26, 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 April 29, 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 May 12, 2022. In accordance with the Rules, paragraph 5, the due

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date for Response was June 1, 2022. Respondent did not submit any response. Accordingly, the Center

notified Respondent’s default on June 2, 2022.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on June 13, 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 company organized under the laws of the United States that is active in the financial services industry.

Complainant has evidenced to be the registered owner of numerous trademarks relating to its company name and brand PRINCIPAL, including, but not limited, to the following:

- Word mark PRINCIPAL, United States Patent and Trademark Office (USPTO),
registration number: 1,562,541, registration date: October 24, 1989, status: active;

- Word mark PRINCIPAL, USPTO, registration number: 3,324,583,
registration date: October 30, 2007, status: active.

Respondent, according to the disclosed WhoIs information for the disputed domain name, is a resident of the
Republic of Yemen, who registered the disputed domain name on August 4, 2021. By the time of the
rendering of this decision, the disputed domain name does not resolve to any relevant content on the
Internet. Complainant, however, has demonstrated that at some point before the filing of this Complaint, the
disputed domain name resolved to an unauthorized website at “ to which Internet
consumers, who had participated in a cryptocurrency airdrop event, were invited in order to add funds on

that website after attending such event.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends to have started using the PRINCIPAL trademark in as early as 1985 in connection with a variety of finance-related products and services and that said trademark has meanwhile received a distinctive and well-known character given its extensive use for more than three decades.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s PRINCIPAL trademark as it incorporates the latter in its entirety, with the Top Level Domain (“TLD”) .xyz not forming part of the comparison on the grounds that it is required for technical reasons. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) enticing consumers to log into an unauthorized website and add funds to an account after participating in a cryptocurrency airdrop workshop neither qualifies as a bona fide offering of services nor as legitimate noncommercial or fair, (2) Complainant has never given Respondent permission in any form whatsoever to register and/or use the disputed domain name, neither as a licensee nor in any other way, and (3) Respondent seems to have offered inaccurate WhoIs information (by using the Republic of the Yemen as its country of origin, while copying the remainder of an address for a company called Rockford Markets in Auckland, New Zealand), demonstrating that Respondent completely lacks rights or legitimate interests in relation to the disputed domain name. Finally, Complainant argues that Respondent has registered and is using the disputed domain name in bad faith since (1) Complainant’s PRINCIPAL trademark is well-known worldwide in connection with financial services, and by registering and using the disputed domain name,

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which is confusingly similar with said well-known trademark, Respondent has unequivocally acted with opportunistic bad faith, and (2) the sporadic or intermittent use of the disputed domain name to run an unauthorized website and enticing consumers to log into such website and add funds to an account after

participating in a cryptocurrency airdrop workshop, resulted in consumer confusion, thereby violating

Complainant’s PRINCIPAL trademark.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i)        that the disputed domain name is identical or confusingly similar to a trademark or service mark in

which Complainant has rights; and

(ii)       that Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      that the disputed domain name has been registered and is being used in bad faith.

Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <principalfinancial.xyz> is confusingly similar with the
PRINCIPAL trademark in which Complainant has rights.

The disputed domain name incorporates the PRINCIPAL trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety is normally sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see WIPO Overview on WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether, e.g., descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the term “financial” (which even directly relates to Complainant’s company name and core business) does not dispel the confusing similarity arising from the incorporation of Complainant’s PRINCIPAL trademark in the disputed domain name. And finally, given that the applicable TLD as such is disregarded under the first element confusing similarity test (see WIPO Overview 3.0, section 1.11.1), the inclusion of the TLD .xyz in the disputed domain name does not alter the finding of confusing similarity in the case at hand, either.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Panel is further convinced on the basis of Complainant’s undisputed contentions, that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.

Respondent has neither been granted a license nor has it been otherwise authorized by Complainant to use

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bona fide nor as legitimate noncommercial or fair within the meaning of paragraph 4(c) of the Policy.

its PRINCIPAL trademark, either as a domain name or in any other way. Also, there is no reason to believe “ to which Internet consumers, who had participated in a cryptocurrency airdrop event, were invited in order to add funds on that website after attending such event, apparently intending to somehow financially profit from consumer confusion with Complainant’s PRINCIPAL trademark, which is undisputedly well-known in the area of financial services. Such use of the disputed domain name neither qualifies as
that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not
appear to have any trademark rights associated with the terms “Principal” or “Principal Finance” on its own.

Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.

The Panel, therefore, finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.

The temporary resolution of the disputed domain name, which is confusingly similar to Complainant’s well- known PRINCIPAL trademark, to an unauthorized website at “ to which Internet consumers, who had participated in a cryptocurrency airdrop event, were invited in order to add funds on

that website after attending such event, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusing with Complainant’s well-known PRINCIPAL trademark as to the source, sponsorship, affiliation or endorsement of

Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

In this context, the Panel has also noted that Respondent not only made use of a WhoIs Privacy Service in order to conceal its true identity, but also provided inaccurate contact information in the WhoIs register for the disputed domain name (e.g. by using the Republic of the Yemen as its country of origin, while copying the remainder of an address for a company called Rockford Markets in Auckland, New Zealand). Doing so,

at least throws a light on Respondent’s behavior which supports the Panel’s bad faith finding.

Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).

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.xyz> be transferred to Complainant.

/Stephanie G. Hartung/
Stephanie G. Hartung
Sole Panelist
Date: June 23, 2022

bei shang, Yemen, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term
“Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.