UBS AG v. koffi simplice
Claim Number: FA1510001641625
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington, D.C., USA. Respondent is koffi simplice (“Respondent”), Cote D’Ivoire.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-company.com>, registered with Key-Systems GmbH.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 8, 2015; the Forum received payment on October 9, 2015.
On October 9, 2015, Key-Systems GmbH confirmed by e-mail to the Forum that the <ubs-company.com> domain name is registered with Key-Systems GmbH and that Respondent is the current registrant of the name. Key-Systems GmbH has verified that Respondent is bound by the Key-Systems GmbH 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 October 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2015 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@ubs-company.com. Also on October 9, 2015, 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 November 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
1. Complainant, UBS AG, is one of the largest financial services firms in the world. Complainant owns rights to the UBS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl., at Attached Annex 5. Complainant uses the UBS mark in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services.
2. The disputed domain name is confusingly similar to Complainant’s registered mark. Respondent’s domain name contains Complainant’s entire UBS mark, adds a hyphen, inserts the generic term “company,” and adds the generic top-level domain (“gTLD”) “.com” to the domain name.
3. Respondent has no rights or legitimate interests in the <ubs-company.com> domain name. Respondent is not commonly known by the disputed domain name, nor does Respondent have any connection with Complainant. Further, Respondent is not actually using the disputed domain name in connection with a bona fide offering of goods or services, or for any legitimate noncommercial purposes. Respondent uses the disputed domain name to confuse consumers into thinking that Respondent has a connection with Complainant, and diverts Internet users attempting to visit Complainant’s website. See Compl., at Attached Ex. 7.
4. Respondent registered the disputed domain name in bad faith. Respondent attempts to confuse consumers in order to capitalize on the fame and notoriety of Complainant its UBS mark. Such use constitutes bad faith under Policy ¶ 4(b)(iv). Further, Respondent had constructive notice of Complainant’s registered UBS mark when it registered the <ubs-company.com> domain name, which is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent Swiss company engaged in the business of banking and related financial activities.
2. Complainant is the registered owner of the UBS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989).
3. Respondent registered the disputed domain name on February 7, 2015.
4. Respondent uses the disputed domain name to confuse consumers into thinking that Respondent has a connection with Complainant, and diverts Internet users attempting to visit Complainant’s website
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it is one of the largest financial services firms in the world. Complainant asserts that it owns rights to the UBS mark through its registration with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Complainant has provided evidence of its trademark registrations at Attached Exhibit 5. Complainant contends that it uses the UBS mark in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. Past panels have held that registration of a mark with a trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i), even when Respondent does not reside in the country where the mark is registered. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Accordingly, even though Respondent reportedly resides in Cote D’Ivoire, the Panel finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UBS mark. Complainant argues that the disputed domain name is confusingly similar to Complainant’s registered mark. Respondent’s domain name contains Complainant’s entire UBS mark, adds a hyphen, inserts the generic term “company,” and adds the gTLD “.com” to the domain name. Past panels have found that the addition of a hyphen to a registered mark is irrelevant to the determination of confusing similarity, and the addition of a generic term such as “company” is insufficient to differentiate the domain name from the mark. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Past panels have also agreed that the addition of a gTLD does not serve adequately to distinguish the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). As such, the Panel determines that the disputed domain name is confusingly similar under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UBS trademark and to use it in its domain name;
(b) Respondent has used the disputed domain name to confuse consumers into thinking that Respondent has a connection with Complainant, and diverts Internet users attempting to visit Complainant’s website;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d)Complainant contends that Respondent has no rights or legitimate interests in the <ubs-company.com> domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, nor does Respondent have any connection with Complainant. The Panel notes that the WHOIS information for the disputed domain name lists “koffi simplice” as the registrant of record. Without any evidence from Respondent to allow the Panel to conclude otherwise, the Panel agrees that Complainant’s contentions and the evidence are sufficient to establish Respondent’s lack of rights to the disputed domain name according to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name);
(e)Further, Complainant alleges that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or for any legitimate noncommercial purposes. Complainant argues that Respondent uses the disputed domain name to confuse consumers into thinking that Respondent has a connection with Complainant, and diverts Internet users attempting to visit Complainant’s website. See Compl., at Attached Ex. 7. Complainant insists that Respondent is trying to suggest falsely a partnership, connection, and affiliation with Complainant when no such partnership, connection, or affiliation exists and capitalize on Complainant’s notoriety in the financial services marketplace. Previous panels have found that this type of behavior evidences that a respondent has no rights or legitimate interests in the disputed domain name. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). The Panel concludes that Respondent lacks a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered the disputed domain name in bad faith. According to Complainant, Respondent attempts to confuse consumers in order to capitalize on the fame and notoriety of Complainant and its UBS mark. Past panels have found that such use constitutes bad faith under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). The Panel determines that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Secondly, Complainant submits that Respondent had constructive notice of Complainant’s registered UBS mark when it registered the <ubs-company.com> domain name, which is evidence of bad faith under Policy ¶ 4(a)(iii). While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s UBS mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubs-company.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 4, 2015
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