UBS AG v. Jone Key
Claim Number: FA1611001705029
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Jone Key (“Respondent”), Uruguay.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-global.org>, registered with OnlineNIC, Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 30, 2016; the Forum received payment on December 1, 2016.
On December 1, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <ubs-global.org> 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 2, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 22, 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@ubs-global.org. Also on December 2, 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 29, 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 is a large Swiss-based provider of banking and financial services worldwide with offices in more than 60 countries and some 60,000 employees. Complainant owns many trademark registrations in numerous countries for the mark UBS and its distinctive logo. It registered a United States trademark for UBS on December 26, 1989 (Reg. No. 1,573,828) and has similar registrations in the European Union and China amongst many other countries. See Compl., at Attached Annex. 3. Complainant uses this mark in its trading and marketing. Respondent’s <ubs-global.org> is confusingly similar to the UBS mark because it incorporates a hyphen, the “.org” generic top-level domain (“gTLD”), and the generic term “global.”
2. Respondent has no rights or legitimate interests in <ubs-global.org>. Respondent is not commonly known by <ubs-global.org>, nor does Respondent have any affiliation or connection with Complainant. Furthermore, Respondent uses <ubs-global.org> to resolve to a website that displays the UBS logo. See Compl., at Attached Annex 4.
3. Respondent registered and used <ubs-global.org> in bad faith. Respondent’s use to falsely suggest an affiliation with Complainant indicates that it intended to capitalize on Complainant’s fame and notoriety for commercial gain as per Policy ¶ 4(b)(iv). Lastly, Respondent had at least constructive knowledge when registering and using the disputed domain name.
B. Respondent
1. Respondent did not submit any Response.
1. Respondent’s <ubs-global.org> domain name is confusingly similar to Complainant’s UBS mark.
2. Respondent does not have any rights or legitimate interests in the <ubs-global.org> domain name.
3. Respondent registered or used the <ubs-global.org> 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 hold registration no. 1,573,828 for the UBS mark with the likes of the United States Patent and Trademark Office (“USPTO”) (registered Dec. 26, 1989), and argues that this registration demonstrates rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Annex 3. USPTO registrations confer Policy ¶ 4(a)(i) rights. See 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).). Therefore, the Panel agrees that Complainant has established rights in the UBS mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant contends that Respondent’s <ubs-global.org> is confusingly similar to the UBS mark because it incorporates a hyphen, the “.org” gTLD, and the generic term “global.” These specific alterations have encountered findings of confusing similarity. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1625750 (Forum July 17, 2015) (holding that “[t]he addition of a hyphen and a gTLD is insufficient to establish distinctiveness from a
complainant’s mark.”); see also Cargill, Incorporated v. Eduardo Xambre, FA 1699721 (Forum Nov. 21, 2016) (stating, “The addition of ‘global’ and a gTLD also does not adequately distinguish a domain name from a complainant’s
mark.”). Accordingly, the Panel agrees that “global” is not a term that distinguishes a domain name from a mark, and that an added hyphen and the “.org” gTLD are also nondistinguishing features under 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 interests 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 rights or legitimate interests in <ubs-global.org>. Complainant contends that Respondent is not commonly known by <ubs-global.org>, nor does Respondent have any affiliation or connection with Complainant. Under Policy ¶ 4(c)(ii), WHOIS information is seen as useful as prima facie evidence, as is evidence of a respondent’s trademark rights, and use of a resolving website. See, e.g., UBS AG v. Domains 4Sale / Domains 4Sale Ghana, FA 1701732 (Forum Dec. 14, 2016). Here, the WHOIS lists “Jone Key” as registrant, there do not appear to be any trademark rights held by Respondent, and the resolving website does not seem to posit any information that would indicate Respondent is commonly known by <ubs-global.org>. See Compl., at Attached Annex 4 (displaying, “Webcome(sic) to the UBS GLOBAL”). Therefore, the Panel agrees that Respondent is not commonly known by <ubs-global.org>.
Furthermore, Complainant argues that Respondent uses <ubs-global.org> to resolve to a website that displays the UBS logo. See Compl., at Attached Annex 4. Complainant says that Respondent’s use trades on the goodwill associated with the mark by suggesting an affiliation with Complainant, and to confuse and defraud Internet users for commercial gain—which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondents that incorporate a complainant’s marks and likeness have little to no claim of rights. Cf. Vivendi Universal Games v. Ballard, FA 146621 (Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the
respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”). Here, the only evidence of Respondent’s use is a screenshot displaying, “Webcome(sic) to the UBS GLOBAL.” See Compl., at Attached Annex 4. The Panel notes that it incorporates Complainant’s mark and logo at the top of the page. Id. The Panel agrees that this imputes an attempt to deceive/defraud Internet users, and concludes that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use.
Complainant argues that Respondent registered and used <ubs-global.org> in bad faith—specifically under Policy ¶ 4(b)(iv). Complainant contends that Respondent’s use to falsely suggest an affiliation with Complainant indicates that it intended to capitalize on Complainant’s fame and notoriety for commercial gain. There may exist circumstances that impute an attempt for commercial gain when a Respondent’s use is not explicitly for that purpose. See MySpace, Inc. v. Myspace Bot, FA 672161 (Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Accordingly, the Panel agrees that it is likely that Respondent has intended to divert Internet users for commercial gain in some fashion, and that such use demonstrates bad faith under the language of Policy ¶ 4(b)(iv).
Lastly, Complainant also includes an argument that Respondent had at least constructive knowledge when registering and using the disputed domain name. In support of this, Complainant cites to its federally registered UBS mark, and 15 U.S.C. § 1072, which states that “[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant’s claim of ownership thereof.” Complainant also urges that constructive notice is a factor supporting a finding of bad faith. But see Gruner + Jahr Printing & Publ’g Co. v. 2 Ergo Ltd., FA 214463 (Forum Jan. 27, 2004) (“Even if [constructive knowledge] were applicable to cases under the Policy, Complainant cannot rely, in relation to activities of non-U.S. persons outside the U.S., on constructive notice under U.S. trademark law arising out of registration of its U.S. marks.”). While constructive notice has not been considered to apply under the Policy, the Panel looks to circumstances that create an inference of actual knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, the domain name at issue incorporates the UBS mark completely, and the resolving website seems to represent an attempt to convey an association with Complainant. The Panel agrees this was done with actual knowledge, and therefore in bad faith under Policy ¶ 4(a)(iii).
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-global.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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