UBS AG v. ??????? ???????
Claim Number: FA2001001878940
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is ??????? ??????? (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsbanksolutions.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Jan Claude Petillion as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 15, 2020; the Forum received payment on January 15, 2020.
On January 15, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubsbanksolutions.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 January 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2020 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@ubsbanksolutions.com. Also on January 15, 2020, 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.
A timely Response was received and determined to be complete on January 16, 2020.
On January 20, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Flip Jan Claude Petillion 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, UBS AG, claims being one of the largest financial services firms in the world. Complainant invokes rights in the UBS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. Complainant considers that Respondent’s <ubsbanksolutions.com> domain name is confusingly similar to Complainant’s UBS mark as Respondent merely adds the generic terms “bank” and “solutions” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Complainant argues that Respondent does not have rights or legitimate interests in the <ubsbanksolutions.com> domain name. According to Complainant, Respondent is not permitted or licensed to use Complainant’s UBS mark and is not commonly known by the disputed domain name. Additionally, Complainant submits that Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent, phishing scheme, according to Complainant.
Furthermore, Complainant considers that Respondent has registered and uses the <ubsbanksolutions.com> domain name in bad faith. According to Complainant, Respondent had actual knowledge or constructive notice of Complainant’s UBS mark prior to registering the <ubsbanksolutions.com> domain name. Finally, Complainant argues that Respondent is attempting to attract Internet users to its website in order to conduct a phishing scheme.
B. Respondent
Respondent claims that the <ubsbanksolutions.com> domain name bears no confusion to Complainant’s mark because there are several website domain names not related to Complainant that are composed with the UBS mark. The Respondent argues that there is no intention to insult or harm the reputation of Complainant. Respondent considers that the Complainant’s accusations are unfounded and that the website associated to the domain name is not used for stealing personal data.
Complainant, UBS AG, is one of the largest financial services firms in the world. Complainant has rights in the UBS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3.
The disputed domain name was created on December 9, 2019. The WHOIS information of record identifies Respondent as “??????? ???????,” See WHOIS.
The disputed domain name is in connection with a website that contains a UBS sign, the wording “bank solutions”, and a log-in feature.
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.
Complainant claims rights to the UBS mark based upon registration with the USPTO. The Panel considers that registration with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the UBS mark (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. Therefore, the Panel finds that Complainant has rights in the UBS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <ubsbanksolutions.com> domain name is confusingly similar to Complainant’s UBS mark as Respondent merely adds descriptive terms and a gTLD to the mark. The Panel considers that additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see alsoTrip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Complainant argues Respondent merely adds the terms “bank,” “solutions” and a “.com” gTLD to Complainant’s UBS mark. The Panel agrees with Complainant and finds that the <ubsbanksolutions.com> does not contain changes that would sufficiently distinguish it from the UBS mark per Policy ¶ 4(a)(i).
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. As established by previous UDRP panels, it is sufficient for Complainant to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), in order to place the burden of production on Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <ubsbanksolutions.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the UBS mark and is not commonly known by the disputed domain name. The Respondent does not address this issue. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “??????? ???????,” and there is no other evidence to suggest Respondent was authorized to use or commonly known by the UBS mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
In addition, Complainant argues that Respondent is not using the <ubsbanksolutions.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent fails to make an active use of the disputed domain name. Instead, Respondent attempts to impersonate Complainant as part of a fraudulent scheme, according to Complainant. Use of a confusingly similar domain name to pass off as a complainant in furtherance of a phishing scheme is not indicative of rights or legitimate interests in the name per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Here, the Panel observes that Respondent does not have any apparent connection with Complainant, yet Respondent is using the disputed domain name in connection with a website that contains Complainant’s UBS mark, the wording “bank solutions”, and a log-in feature. See Compl. Annex 4. The Respondent’s assertion that the website associated to the disputed domain name is not used for stealing personal data is not supported by any evidence and the Panel observes that the Respondent does not provide any details as to what the log-in feature is used for. The Panel considers that such log-in feature could be used to trick users and steal their personal and financial information. Thus, the Panel finds that Respondent’s use of the domain name indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has registered and uses the <ubsbanksolutions.com> domain name in bad faith. Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s UBS mark. While constructive notice of a complainant’s mark may be insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s famous UBS mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s UBS mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the UBS mark, and Respondent’s knowledge constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant alleges Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of a phishing scheme, presumably for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). As previously mentioned, Respondent is using the disputed domain name in connection with a website that contains Complainant’s UBS mark, the wording “bank solutions”, and a log-in feature that could be used to trick users and steal their personal and financial information. See Compl. Annex 4. The Respondent’s assertion that the website associated to the disputed domain name is not used for stealing personal data is not supported by any evidence and the Panel observes that the Respondent does not provide any details as to what the log-in feature is used for. Therefore, the Panel finds, on the balance of probabilities, that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsbanksolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Jan Claude Petillion, Panelist
Dated: February 3, 2020
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