Principal Financial Services, Inc. v Tzyy Harn Tai

WIPO Case No. D2022-4557

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Principal Financial Services, Inc. v. Tzyy Harn Tai

Case No. D2022-4557

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 Tzyy Harn Tai, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <principalci.com> (the “Domain Name”) is registered with NameCheap, Inc. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2022. On November 30, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 30, 2022, the Registrar transmitted by email to the Center its verification response registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint (Privacy service provided by Withheld for Privacy ehf). The Center sent an email communication to the Complainant on December 2, 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 December 8, 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 Complaint, and the proceedings commenced on December 13, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 2, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2023.

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The Center appointed Gregor Vos as the sole panelist in this matter on January 13, 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 company that was founded in 1879 and is active in the field of financial services, offering inter alia insurance, investment and banking services.

The Complainant is the owner of inter alia the following United States (“US”) registrations (hereinafter jointly referred to as the “Trademarks”):

- U.S. trademark registration No. 1562541 for PRINCIPAL registered on October 24, 1989;

- U.S. trademark registration No. 3324583 for PRINCIPAL registered on October 30, 2007; and

- U.S. trademark registration No. 50749 for PRINCIPAL Device registered on November 1, 2016.

Further, it is undisputed that the Complainant is the holder of inter alia the following domain names:

- <principal.com>;

- <principalbank.com>; and

- <principalfinancial.com>.

The Domain Name was registered on November 5, 2022. Currently, the Domain Name does not resolve to an active website; it previously resolved to a site including content that mimicked the Complainant’s logo.

5. Parties’ Contentions

A. Complainant

With the Complaint, the Complainant seeks that the Domain Name is transferred to the Complainant. The
Complaint is based on the following factual and legal grounds: the Domain Name is identical or confusingly
similar to the Trademarks of the Complainant, the Respondent has no rights or legitimate interests in the
Domain Name and the Domain Name has been registered and is being used in bad faith.

Firstly, according to the Complainant, the Domain Name is identical or confusingly similar to its well-known and famous Trademarks. The Domain Name incorporates the Complainant’s Trademarks in their entirety with the mere addition of the generic Top-Level Domain “.com” and the letters “ci”. A finding of confusing similarity is reinforced by the fact that the Respondent has fraudulently impersonated the Complainant on the

website to which the Domain Name resolved at the time of filing of the Complaint.

bona fide offering of goods or services and does not make a legitimate noncommercial or fair use of the Domain Name.

Secondly, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain from the Complainant to use the Trademarks or has any relation with the Complainant. In addition, the Respondent does not use the Domain Name in connection with a

Lastly, according to the Complainant, the Respondent has registered and used the Domain Name in bad faith. In light of the well-known character of the Complainant’s Trademarks, it is inconceivable that the Respondent was not aware of the Complainant’s Trademarks when it registered the Domain Name. Also, the Respondent used the Domain Name in bad faith by displaying the Complainant’s Trademarks on the website to which the Domain Name resolved, thus creating the impression of an official website operated by

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the Complainant. In addition, the Respondent has attempted to conceal its identity by using a privacy

protection service.

B. Respondent

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

6. Discussion and Findings

In view of the lack of a response filed by the Respondent as required under paragraph 5 of the Rules, this proceeding has proceeded by way of default. Hence, under paragraphs 5(f), 14(a) and 15(a) of the Rules, the Panel is directed to decide this administrative proceeding on the basis of the Complainant’s undisputed factual presentations.

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i.         the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

ii.         the Respondent has no rights or legitimate interests in respect of the Domain Name; and

iii.        the Domain Name has been registered and is being used in bad faith.

Only if all three elements have been fulfilled, the Panel is able to grant the remedies requested by the

Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the Domain Name is (i) identical or confusingly similar to a trademark or service mark, (ii) in which the Complainant has rights.

With respect to having rights pursuant to paragraph 4(a)(i) of the Policy, it is noted that the Complainant is registered as the owner of the Trademarks. Consequently, the Panel finds that the Complainant has proven that it has rights in the Trademarks.

With regard to the assessment of identity or confusing similarity of the Domain Name with the Trademarks, it is generally accepted that this test involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark (see section 1.7 of the WIPO Overview 3.0).

In the present case, the Complainant’s Trademarks are incorporated in their entirety in the Domain Name.
The addition of the generic Top-Level Domain (“gTLD”) “.com” and the letters “ci” does not prevent a finding
of confusing similarity with the Trademarks (see section 1.11 of the WIPO Overview 3.0). Consequently, the

Panel finds that the requirement under paragraph 4(a)(i) of the Policy has been satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name. The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulty in proving a negative, however, it is usually sufficient for a complainant to make out a prima facie case that a respondent lacks rights or legitimate interests. If a complainant does establish a prima facie case, the burden of production of evidence shifts to the respondent (see, e.g., WIPO Overview 3.0, section 2.1; Sanofi v. Cimpress Schweiz GmbH, WIPO Case No. D2017-0522).

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Paragraph 4(c) of the Policy lists three non-limitative examples of instances in which a respondent may establish rights or legitimate interests in the disputed domain name.

The Complainant has substantiated that none of these circumstances apply in this case. By defaulting, the Respondent has failed to address the prima facie case thus established by the Complainant. Furthermore, based on the record before it, the Panel does not see an indication that any of the circumstances of

paragraph 4(c) of the Policy is present.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the

Domain Name. Paragraph 4(a)(ii) is thereby fulfilled.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four non-limitative circumstances which may be considered as evidence of registration and use in bad faith of a domain name.

In the Complaint, the Complainant provides an Annex which shows screenshots of the website linked to the Domain Name, by which the Respondent fraudulently impersonates the Complainant – mimicking its logo – and which would amount to bad faith.

In the present case, the Trademarks are registered by the Complainant and have been used for many years.
The Complainant’s rights to the Trademarks predate the registration date of the Domain Name. In light of
the well-known character of the Trademarks, the Panel agrees with the Complainant that it is not conceivable
that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its
Trademarks under which the Complainant is doing business. The reputation of the Trademarks of the
Complainant in the field of financial services has been confirmed by earlier UDRP panels (see e.g., Principal
Financial Services, Inc. v. Privacy service provided by Withheld for Privacy ehf / bei shang, WIPO Case No.
D2022-1509; Principal Financial Services, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina
Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-2267).

Further, it is generally accepted by UDRP panels that the non-use of a domain name does not prevent a finding of bad faith (section 3.3 of the WIPO Overview 3.0). In light of the reputation of the Trademarks, the lack of any rights or legitimate interest in the Domain Names by the Respondents, and in the absence of any conceivable good faith use of the Domain Name, the Panel finds from the present circumstances that the Respondents have intentionally sought to take unfair advantage of or otherwise abuse the Trademarks. This is reinforced by the fact that the Respondent used a privacy protection service to conceal its identity

Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith and that the third element of paragraph 4(a)(iii) of the Policy is fulfilled.

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 Domain Name, <principalci.com> be transferred to the Complainant.

/Gregor Vos/ Gregor Vos Sole Panelist Date: January 24, 2023