Principal Financial Services, Inc. v Privacy Service Provided by Withheld for

WIPO Case No. D2022-0489

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Privacy Service Provided by Withheld for
Privacy ehf / Freedom Finance, My Freedom Finance

Case No. D2022-0489

1. The Parties

The Complainant is Principal Financial Services, Inc., United States of America (“United States” or “U.S.”), represented by Neal & McDevitt, United States.

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Freedom Finance, My

Freedom Finance, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2022. On February 14, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 14, 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 the Complainant on February 15, 2022, 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 March 23, 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 the Respondent of the paragraph 5, the due date for Response was March 13, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Commencement of the Panel Appointment Process on March 14, 2022.

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The Center appointed Anne Gundelfinger as the sole panelist in this matter on March 23, 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

The Complainant is Principal Financial Services, Inc., a publicly-traded, 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, among others. Since at least as early as 1985 the Complainant has used the mark THE PRINCIPAL FINANCIAL GROUP and over the years has adopted hundreds of PRINCIPAL-based marks and trade names (hereafter “PRINCIPAL Marks” or “Complainant’s Marks”), in the United States and in markets around the world. Through its licensees, affiliates, and member companies, the Complainant has used this family of PRINCIPAL Marks in connection with a variety of products and services in the financial, insurance, investment, banking, asset management, retirement, real estate, and healthcare fields. In addition, the Complainant, via a predecessor-in-interest, has used the mark PRINCIPAL in connection with financial analysis and consulting, management of securities, and securities brokerage services since at least as early as 1960.

The Complainant is the owner of this family of PRINCIPAL Marks in markets around the world and owns the following incontestable U.S. trademark registrations (among many others):

- PRINCIPAL: U.S. Reg. No. 1,562,541 (first used in commerce July 1960; registered October 1989)

for use in connection with “Financial analysis and consulting, management of securities and securities
brokerage services”;

- THE PRINCIPAL: U.S. Reg. No. 1,508,544 (first used in commerce September 1985; registered

October 1988) for use in connection with “Life, health, accident, and casualty insurance and reinsurance underwriting and brokerage services; underwriting, administering and managing annuities and pension funds for others; variable life insurance and variable annuities funded through a variety of funding media”;

- THE PRINCIPAL FINANCIAL GROUP: U.S. Reg. No. 1,508,543 (first used in commerce September

1985; registered October 1988) for use in connection with “Life, health, accident, and casualty insurance and
reinsurance underwriting and brokerage services; underwriting, administering and managing annuities and
pension funds for others; variable life insurance and variable annuities funded through a variety of funding
media”; and

- THE PRINCIPAL FINANCIAL GROUP: U.S. Reg. No. 1,740,172 (first used in commerce December

1985; registered December 1992) for use in connection with “Commercial and residential real estate
services; namely, brokerage, investment, management, mortgage loan, and valuation services”.

Additionally, the Complainant is the owner of registrations for the domain names <principal.com>, <principalfinancial.com>, <principalfinancialgroup.com>, and <principalfinancialgrp.com>, among numerous other PRINCIPAL-formative domain names. It uses the domain name <principal.com> for its primary corporate website.

The disputed domain name was registered on February 8, 2022, using a privacy service that cloaks the Respondent’s true identity. At the time of the initiation of this proceeding, the disputed domain name resolved to a website impersonating the Complainant, as discussed more fully below. At the time of this decision, the disputed domain name resolved to an error page.

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5. Parties’ Contentions
A. Complainant

The Complainant contends that the disputed domain name <principalgroups.com> is confusingly similar to its well-established and widely registered PRINCIPAL Marks, as well as its various domain names because the disputed domain name consists of the words “principal” and “groups”, and therefore incorporates the

entirety of the Complainant’s PRINCIPAL trademark and is nearly identical to the Complainant’s THE
PRINCIPAL FINANCIAL GROUP trademark.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the disputed domain name was registered and is being used in bad faith. In support of these contentions, the Complainant has submitted persuasive and uncontested Page Vault evidence that, on February 10, 2022, the disputed domain name resolved to a website that fully copied the homepage of the Complainant’s primary corporate website, including images, text, and apparent links, as well as reproducing the Complainant’s corporate logo. Moreover, the website at the disputed domain name had an apparently functioning login page. Based on this evidence, the Complainant contends that the Respondent registered and used the disputed domain name to impersonate the Complainant and thereby to gather login credentials for the Complainant’s customers for some illegitimate and fraudulent purpose.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements to be successful in this action: (i) the disputed domain name is identical or confusingly similar to trademarks or service marks 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel agrees that the disputed domain name is confusingly similar to the Complainant’s PRINCIPAL Marks in its visual appearance, meaning, and overall impression. While not identical to any of the Complainant’s individual marks, the disputed domain name wholly incorporates the dominant PRINCIPAL element of the Complainant’s PRINCIPAL Marks and uses the plural form of the GROUP element that appears in many of the Complainant’s Marks and domain names. Here, neither the pluralization of “group” nor the omission of the word “financial” prevents the Complainant’s PRINCIPAL Marks from being recognizable within the disputed domain name. Certainly, it is well established that slight differences in spelling and/or the addition or omission of other terms (whether generic, descriptive, geographical, pejorative, meaningless, or otherwise) to a complainant’s mark do not prevent a finding of confusing similarity between a disputed domain name and that mark. See sections 1.7, 1.8, and 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and cases cited therein. See also, Allianz SE v. IP Legal, Allianz Bank Limited, WIPO Case No. D2017-0287.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark, and that the first element of the test is satisfied.

B. Rights or Legitimate Interests

It is well established that a complainant must present a prima facie case in relation to the second element of the Policy, not mere allegations. Once a prima facie showing is made, the burden of production shifts to the

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respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. of its own rights or legitimate interests. Accordingly, where a respondent fails to file a response, a UDRP panel may draw inferences from the failure to respond as appropriate under the circumstances of the case and while still weighing all available evidence irrespective of whether a response is filed. See, section 2.1 of the WIPO Overview 3.0 and cases cited therein. See also, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, the Complainant argues that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, but instead is hosting a false and misleading website that impersonates the Complainant’s own corporate website and exploits the Complainant’s Marks, a use which

clearly does not confer rights or represent a legitimate interest.

The Panel agrees with the Complainant. Hosting a website that falsely impersonates the website of the Complainant does not and cannot confer rights or legitimate interests in a disputed domain name. See, section 2.13 of the WIPO Overview 3.0 and cases cited therein. Accordingly, based on the convincing

evidence submitted by the Complainant, and in the absence of countervailing evidence from the domain name, and that the second element of the test is satisfied.

C. Registered and Used in Bad Faith

The third element of the test requires a showing that the disputed domain name has been registered and used in bad faith. Here the Respondent registered and used the disputed domain name to host a website that impersonated the Complainant’s website and exploited the Complainant’s PRINCIPAL mark and

corporate logo, as described above. Given the content of the Respondent’s website under the disputed disputed domain name in bad faith as there is no conceivable good faith justification for the false and misleading content found at the website under the disputed domain name. See, paragraph 4(b)(iv) of the UDRP; sections 3.1.1 and 3.1.4 of the WIPO Overview 3.0 and cases cited therein.

domain name, there can be no question that the Respondent targeted the Complainant’s Mark and sought
intentionally to create a likelihood of confusion. To what precise end, we do not know – the login page of the
Respondent’s website suggests that the purpose may have been to collect login credentials of the

Finally, under the circumstances of this case, the Respondent’s use of a privacy service raises an inference of and further supports a finding of bad faith registration. See, section 3.6 of the WIPO Overview 3.0 and cases cited therein.

Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith, and that the third element of the test is satisfied.

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 <principalgroups.com> be transferred to the Complainant.

Anne Gundelfinger
Sole Panelist
Date: April 6, 2022