UBS AG v. Rudi Rufati
Claim Number: FA1511001645056
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Rudi Rufati (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsfinance.net> ('the Domain Name') , registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 2, 2015; the Forum received payment on November 3, 2015.
On November 3, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ubsfinance.net> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 November 3, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@ubsfinance.net. Also on November 3, 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 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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 is one of the largest financial services firms in the world with offices in more than fifty countries. Complainant owns and since 1962 has used the trade mark UBS to identify and distinguish its services from the services of others. It has trade mark registrations, inter alia, in the USA and Europe for the UBS mark. The UBS mark is inherently distinctive, strong, famous and deserving of a broad range of protection. The Complainant owns and uses the web site www.ubs.com.
The Domain Name is confusingly similar to Complainant's UBS mark as the dominant portion of the Domain Name is identical to the Complainant’s UBS mark. The fact that the Domain Name also contains the generic word 'finance' does not differentiate it from Complainant’s UBS mark, particularly when the Complainant’s mark is well known.
The gTLD .net in the Domain Name has no bearing on the confusing similarity issue.
Respondent has no rights or legitimate interests in the Domain Name or any UBS name or marks. Respondent does not have any connection with the Complainant, nor is it authorised to use the Complainant’s UBS mark
The Respondent is using the Complainant’s UBS marks on the site attached to the Domain Name, uses the Complainant’s red, white and black colour scheme, offers financial services under the name UBS Finance Services GmbH and uses the Complainant’s Zurich Switzerland address on its contact page. The Domain Name is being used to confuse consumers into thinking that Respondent has a connection or affiliation with the Complainant. Respondent is using a confusingly similar domain name to divert Internet users seeking the Complainant’s web site to Respondent's web site. This is predatory infringing behaviour and is not use in connection with a bona fide offering of goods and services or for any legitimate, non commercial purposes.
Respondent is not commonly known or identified by the Domain Name or the mark UBS.
Respondent's Domain Name was registered February 2015 more than fifty years after Complainant began using its UBS mark in commerce.
Respondent does not appear to have registered any trade marks containing UBS.
The acronym UBS is not a vocabulary word and is not a common or natural way of combining letters.
The Domain Name was registered and is being used in bad faith. It is being used to falsely suggest a connection with the Complainant and confuse consumers capitalising on the fame and notoriety of Complainant and its UBS marks in the financial services marketplace, as shown by the use of the Complainant’s UBS marks, its colour scheme and address.
The registration of a Domain Name containing the Complainant’s famous mark with no connection to the owner of the trade mark and no authorisation or legitimate purpose for using the mark is indicative of bad faith.
There is a page on the web site where consumers can register and provide their contact or credit card information.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant's is one of the largest financial services firms in the world. Complainant owns and since 1962 has used the trade mark UBS to identify and distinguish its services from the services of others. It has trade mark registrations, inter alia, in the USA and Europe for the UBS mark for its services.
The Domain Name which was registered in 2015 has been used to offer financial services which are not connected to the Complainant and to collect information from users.
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.”).
Identical or Confusingly Similar
The Domain Name consists of the Complainant's UBS mark, the generic term 'finance' and the gTLD .net.
Prior panels have found that adding a generic term does little to remove confusing similarity from a disputed mark. See 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.)
The gTLD .net does not serve to distinguish the Domain Name from the UBS mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Nat Arb 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 for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Respondent is using the Domain Name to deceive Internet users for pecuniary gain in that the Respondent is using a web site to pass itself off as the Complainant. Past panels have found the use of a disputed domain name to pass the Respondent off as the Complainant is not the bona fide offering of goods and services or a legitimate non-commercial or fair use pursuant to Policy 4(c)(i) or 4(c)(iii). See Crow v LOVEEARTH.NET, FA 203208 (Nat. Arb. Forum. Nov. 28, 2003)('It is neither a bona fide offering of goods or services nor an example of a legitimate non-commercial or fair use under Policy 4(c)(i) and (iii) when the holder of a domain name confusingly similar to a registered trade mark attempts to profit by passing itself off as the Complainant')
The web site also seeks to obtain the personal information of Internet users, conduct known as 'phishing'. Prior panels have found that 'phishing' is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) See Blackstone TM LLC v Mita Irelant Ltd., FA 1314998 (Nat Arb Forum Apr. 30, 2010) ('The Panel finds that Respondent’s attempt to 'phish' for users personal information is neither a bona fide offering of goods and services pursuant to Policy 4(c)(i) not a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)).
As such the Panel 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.
Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on‑line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
Reviewing the evidence the Panelist finds that the Respondent has attempted to cause confusion amongst Internet users between the Complainant’s mark and the Respondent’s Domain Name for commercial gain. It is not at all clear whether the web site to which the Domain Name has been connected is offering financial services related to the Complainant or not. Past panels have also held that where a respondent uses a disputed domain name to intentionally attract Internet users to its fraudulent web site by using the Complainant’s famous marks and trade dress it is registration and use in bad faith See HD Michigan Inc v Petersons Auto. FA 135608 (Nat Arb Forum Jan 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the Respondent’s registration and user of the infringing domain name to intentionally attract Internet users the Respondent’s fraudulent web site by using the Complainant’s famous marks and likenesses.).
Further the web site seeks to collect personal information from users. Past panels have held that phishing for information for financial information through a disputed domain name indicates bad faith by disrupting the Complainant’s business. See Wells Fargo & Co. v Maniac State, FA 608239 (Nat Arb Forum) Jan 19 2006) (finding bad faith registration and use where the respondent was using the wellsbankupdate.com domain name in order to act fraudulently to acquire financial information of the Complainant’s customers.)
As such the Panelist finds that the Complainant has made out its case under para 4(b)(iii) and (iv) of the Policy.
Accordingly, the Panel finds that the Domain Name has been registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsfinance.net> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: << December 13, 2015>>
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