UBS AG v. Kumail Bokhari / UBS And Associates
Claim Number: FA1611001704570
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Kumail Bokhari / UBS And Associates (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsassociates.net>, registered with OnlineNIC, Inc.
The undersigned certifies that he 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2016; the Forum received payment on November 30, 2016.
On November 28, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <ubsassociates.net> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. 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 December 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 21, 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@ubsassociates.net. Also on December 1, 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 December 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant, UBS AG, is a financial services provider operating in over 50 countries with approximately 60,000 employees. Complainant has used the UBS mark since as early as 1962 in connection with its business providing a wide range of banking, investment banking, securities brokerage, and lending services. Complainant’s rights in the UBS mark stem from registration of the mark with trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubsassociates.net> is confusingly similar to Complainant’s UBS mark as the domain is only distinguished from the mark through the addition of the generic word “associates” and the generic top-level domain “.net,” which are not sufficient to differentiate the domain from Complainant’s mark.
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no connection with Complainant, has not been commonly known by the disputed domain name, and has not been a licensee or partner of Complainant. Additionally, Respondent’s use of the confusingly similar domain, to divert users seeking Complainant’s website to the website of Respondent, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use because it merely resolves to a site displaying references to funding services and energy audits. See Compl., at Attached Annex 4.
3. Respondent’s domain was registered and is being used in bad faith. Respondent’s registered the disputed domain to create a likelihood of confusion and falsely suggest a connection between Complainant and Respondent which is being exploited for commercial gain under Policy ¶ 4(b)(iv). Further, Respondent had knowledge of Complainant’s rights in the UBS mark at the time of registration based on the fame of the mark.
B. Respondent
1. Respondent did not submit a response.
1. Respondent’s <ubsassociates.net> domain name is confusingly similar to Complainant’s UBS AG mark.
2. Respondent does not have any rights or legitimate interests in the <ubsassociates.net> domain name.
3. Respondent registered or used the <ubsassociates.net> domain name in bad faith.
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.”).
Complainant claims to have rights in the UBS mark through registration with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl., at Attached Annex 3. Panels have routinely held, and this Panel may hold, that registration of a mark with the USPTO is sufficient to demonstrate a
complainant’s rights in a mark. 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).); BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).); BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).).
Complainant next claims that Respondent’s <ubsassociates.net> is confusingly similar to the UBS mark in which Complainant asserts rights. Respondent’s domain appears to include the entire UBS mark and adds to the mark the generic word “associates” and the gTLD “.net.” Panels have held that adding a generic term to a mark in a domain does not alleviate an impression of confusing similarity. 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); Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Panels have also consistently held that the presence of the gTLD “.net,” is not relevant to an analysis of confusing similarity under Policy ¶ 4(a)(i). See Thom Browne, Inc. v. Huili Zhang, FA 1358629 (Forum Dec. 22, 2010) (“finding, “The addition of the gTLD “.net” also has no effect on the Policy ¶ 4(a)(i) analysis.”). Taken together, this Panel finds that <ubsassociates.net> is confusingly similar to the UBS mark for purposes of Policy ¶ 4(a)(i).
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 (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 (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.”).
Complainant argues that Respondent has no connection with Complainant, has not been commonly known by the disputed domain name, and has not been a licensee or partner of Complainant. No evidence has been submitted by Respondent or Complainant to indicate that the parties have associated with each other prior to this Complaint. WHOIS information associated with the disputed domain identifies Respondent as “Kumail Bokhari / UBS And
Associates” which implies a connection with <ubsassociates.net>. However, where a respondent has not submitted evidence to substantiate a connection with the WHOIS information, they have met failure. See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Accordingly, the Panel agrees that Respondent is not commonly known by <ubsassociates.net>.
Complainant next argues that Respondent is using <ubsassociates.net> to divert users seeking Complainant’s website to the website of Respondent, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain appears to resolve to a website titled, “About UBS.” See Compl., at Attached Annex 4. At the top of the page is a word cloud with terms such as “security,” “protection,” and “communication.” Id. At the bottom of the page is a circular flow chart of what is termed “Energy Audit Process.” Id. Panels have generally held that using another’s mark or a domain that is closely reminiscent of another’s mark for the purposes of hosting a website for a respondent’s benefit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Gen. Mills, Inc. v. Zuccarini, FA 97050 (Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”); Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds that Respondent deliberately used a domain that incorporated a close derivation of another’s mark to benefit commercially, and finds that Respondent’s use is not within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant asserts that Respondent’s registered the disputed domain to create a likelihood of confusion and falsely suggest a connection between Complainant and Respondent which is being exploited for commercial gain. As stated previously, Respondent’s domain appears to resolve to a website displaying the UBS mark, a word cloud, and services presumably offered through the domain name. See Compl., at Attached Annex 4. Panels have found bad faith where a respondent commercially gained from creating confusion in the mind of Internet users. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005)
(“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). This Panel concludes that Respondent registered the disputed domain for the purposes of profiting from creating confusion as to the source of the website, and finds that Respondent has done so in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the UBS mark. Complainant argues that the fame of the UBS mark indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsassociates.net> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 9, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page