UBS AG v. paul hoara / online
Claim Number: FA1609001693337
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington D.C., United States. Respondent is paul hoara / online (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsonline-ch.com>, (‘the Domain Name’) registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that 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 IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 12, 2016; the Forum received payment on September 14, 2016.
On September 15, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ubsonline-ch.com> domain names 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 September 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 5, 2016 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@ubsonline-ch.com. Also on September 15, 2016, 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 October 10, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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’s Contentions can be summarised as follows:
Complainant is one of the largest financial services services firms in the world and has been using the mark UBS for its services since 1962. It owns trade mark registrations, inter alia in the USA and in the European Union for its UBS mark for its services and owns ubs.com. The UBS mark is distinctive and famous.
The Domain Name is confusingly similar to Complainant’s UBS mark. The dominant portion of the Domain Name is the UBS mark and the fact that the Domain Name also contains the generic word ‘online’ and the two letter abbreviation for Switzerland ‘ch’ does not differentiate it from the Complainant’s mark. The gTLD .com has no bearing on the confusing similarity issue.
Respondent has no rights or legitimate interests in the Domain Name or the UBS mark. Respondent does not have any connection with the Complainant, however the Domain Name resolves to a site that prominently features the UBS mark and the Complainant’s logo and contains information about financial services. The content, font and color schemes on the site are similar and in some cases identical to those on the Complainant’s site. Using a confusingly similar domain name to divert customers is not a bona fide offering of goods and services. Nor is it a legitimate non commercial purpose. Respondent is not commonly known by the Domain Name. The Respondent is not authorized to use any of the Complainant’s marks.
The Domain Name was registered and used in bad faith. Respondent’s use of the Domain Name is likely to cause confusion and mislead customers into thinking that the Respondent is affiliated with the Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark UBS for financial services, inter alia in the USA and in the European Union where the Respondent is based, with first use in commerce recorded in its trade mark registration for the USA as 1962.
The Domain Name has been used for a web site for financial services which uses the Complainant’s UBS mark and the Complainant’s logo prominently in a deceptive fashion.
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 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 (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 (which is registered in USA and the European Union for financial services with first use in commerce recorded as 1962), the generic term ‘online’, a hyphen, the two letter abbreviation for Switzerland ‘ch’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant). See Teradyne Inc v 4Tel Tech., D2000-0026b (WIPO May 9, 2000)(finding that the addition of a hyphen to a registered mark is an insubstantial change, the hyphen being silent). The Panel agrees that the addition of the generic term ‘online’, a hyphen and the geographic abbreviation for Switzerland ‘ch’ to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy. In fact, in particular, the geographical abbreviation ‘ch’ commonly used to indicate Switzerland may add to confusion as the Complainant is based there.
The gTLD .com 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 (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 purpose to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent uses the Complainant’s name and logo. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, 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 Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights. The web site attached to the Domain Name uses the Complainant's word mark UBS and logo mark in a prominent fashion to offer services in the same field as the Complainant. It does not make it clear that there is no commercial connection with the Complainant and appears to be an official site of the Complainant. This use is confusing and deceptive. As such it cannot amount to the bona fide offering of goods and services. (See Kmart of Mich., v. Cone, FA 655014 (Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself off as the Complainant with a near identical website to the Complainant’s web site was not a bona fide offering of goods and service nor a legitimate non commercial or fair use).
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
Complainant also alleges that the Respondent's use of the site attached to the Domain Name is commercial and it is using it to make profit by competing with the Complainant in a confusing and deceptive manner. In the opinion of the panelist the use made of the Domain Name in relation to the site is confusing and deceptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers services using the Complainant’s UBS mark and logo. The use of the Complainant's UBS word and logo marks on the Respondent's web site also shows knowledge 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 trade marks as to the source, sponsorship, affiliation or endorsement of the web site. (See AM. Online, Inc. v Miles, FA 105890 (Forum May 31, 2002) where 4 (b)(iv) of the Policy was found to be contravened by a site prominently displaying the Complainant’s name and logo).
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 para 4(b)(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 <ubsonline-ch.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: October 18, 2016
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