UBS AG v. Aktien Geldanlage
Claim Number: FA1904001840658
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington DC, USA. Respondent is Aktien Geldanlage (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <swiss-ubs.com> (‘the Domain Name’), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 26, 2019; the Forum received payment on April 26, 2019.
On April 26, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <swiss-ubs.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@swiss-ubs.com. Also on April 29, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the UBS trademark registered, inter alia, in the USA and the EU for financial services with first use recorded as 1962.
The Domain Name is confusingly similar to the Complainant’s UBS mark adding only the geographical term ‘swiss’, a hyphen and the gTLD “.com” which do not prevent confusing similarity between the Domain Name and the Complainant’s trade mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name or authorized by the Complainant. Respondent has no connection with the Complainant and is using the Domain Name to point to a web site that uses the Complainant’s UBS mark and refers to the Respondent as UBS Investment Group based in Zurich where the Complainant has its headquarters. It purports to offer financial services and the site is a clone of an existing third party Austrian investment company’s site. A German person has already contacted the Complainant about fraudulent e-mails emanating from the Domain Name. This is not a bona fide offering of goods or services or a legitimate commercial or fair use.
It is bad faith registration and use diverting and misleading Internet users fraudulently for illegal commercial gain in knowledge of the Complainant’s well known trademark and its rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the UBS trademark registered, inter alia, in the USA and the EU for financial services with first use recorded as 1962.
The Domain Name registered in 2019 has been used for a site purporting to offer financial services which are unconnected with the Complainant and using a web site framework cloned from a third party financial company unconnected with the parties to this complaint.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's UBS mark (which is registered in, inter alia, the EU for financial services with first use recorded as 1962), a hyphen, the geographical term ‘swiss’ and the gTLD “.com” which do not prevent confusing similarity between the Domain Name and the Complainant’s mark.
Adding a hyphen does not distinguish a domain name from a domain name containing the Complainant’s mark. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i).).
Previous panels have found confusing similarity when a respondent merely adds a geographical term to a Complainant's mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations do not remove a domain name from the realm of confusing similarity.). The Panel agrees that the addition of the geographical term ‘swiss’ to the Complainant's mark does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy.
The gTLD “.com” does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s UBS registered mark.
As such, the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its marks. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Name offers financial services under the Complainant’s UBS logo and references Switzerland where the Complainant is based. It does not make it clear that there is no connection with the Complainant. The Panel finds this use is misleading. As such, it cannot amount to the bona fide offering of goods and services. See Am. Intl. Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise services which competed with the Complainant's business did not constitute a bona fide use of goods and services). As the use is commercial, it cannot be non-commercial legitimate fair use. The fact that the web site framework has been cloned from a third party financial services company unconnected with this Complaint is also indicative of a lack of legitimate rights or interests.
As such, the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it uses the Complainant’s well-known name to offer financial services without permission and referencing Switzerland indicating that the Respondent is aware of the Complainant and its business. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See AllianZ of AM. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
The fact that the web site of the Respondent has been cloned from a third party financial services company is also indicative of bad faith.
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under ¶¶ 4(b)(iv) and 4(b)(iii). There is no need to consider the further allegations of fraudulent e-mails of which there is no evidence attached to the Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <swiss-ubs.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: May 22, 2019
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