UBS AG v. nghia truong
Claim Number: FA1612001706562
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is nghia truong (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-global.info>, registered with GoDaddy.com, LLC.
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 December 8, 2016; the Forum received payment on December 9, 2016.
On December 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubs-global.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2017 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.info. Also on December 12, 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 January 10, 2017, 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.
1. Complainant provides worldwide financial services. In connection with its business, Complainant uses the UBS mark. Complainant has registered the UBS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989) and other global trademark entities. See Compl. at Attached Annex 3. Additionally, Complainant registered the UBS service mark with the three keys symbol with the USPTO (e.g., Reg. No. 3,623,958, registered May 19, 2009). Id. Respondent’s <ubs-global.info> is confusingly similar to the UBS mark because it incorporates the mark in its entirety and adds the descriptive term “global,” along with the “.info” generic top level domain (“gTLD”) and a hyphen.
2. Respondent has no rights or legitimate interests in <ubs-global.info>. Respondent is not commonly known by the disputed domain name. Complainant has not licensed or authorized Respondent to use the UBS mark in any respect. Respondent has not made a bona fide offering of goods or services for any legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a web page displaying UBS offices and employees. See Compl., at Attached Annex 4. Respondent’s domain name also contains a login screen displaying the UBS service mark, which is typically associated with phishing or online fraudulent activities.
Respondent has registered and used the <ubs-global.info> domain name in bad faith. Respondent’s efforts to attract and mislead UBS customers for commercial gain evinces bad faith under Policy ¶ 4(b)(iv). Lastly, Respondent registered and subsequently used <ubs-global.info> with at least constructive notice of Complainant and its rights in the UBS mark.
1. Respondent did not submit a response.
1. Respondent’s <ubs-global.info> domain name is confusingly similar to Complainant’s UBS mark.
2. Respondent does not have any rights or legitimate interests in the <ubs-global.info> domain name.
3. Respondent registered or used the <ubs-global.info> 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 provides worldwide financial services. In connection with its business, Complainant uses the UBS mark. Complainant has registered the UBS mark with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989) and other global trademark entities. Additionally, Complainant registered the UBS service mark with the three keys symbol with the USPTO (e.g., Reg. No. 3,623,958, registered May 19, 2009). See Compl. at Annex 3. The general consensus is that USPTO registrations are sufficient in conferring rights in a mark under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Therefore, the Panel deems Complainant’s evidence of USPTO registrations for the UBS mark and service mark to be sufficient in establishing rights under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ubs-global.info> is confusingly similar to the UBS mark because it incorporates the mark in its entirety and adds the descriptive term “global,” along with a hyphen and the “.info” gTLD. Panels have held that a domain name is confusingly similar when the mark has been used in its entirety with the addition of a descriptive term and a gTLD. See Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s
mark.”). Furthermore, the addition of a hyphen has also been considered inconsequential under Policy ¶ 4(a)(i). See Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”). Therefore, the Panel agrees that the alterations Respondent has made to the UBS mark create confusing similarity pursuant to 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 contends that Respondent has no rights or legitimate interests in <ubs-global.info>. In support of this argument, Complainant claims that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the disputed domain name indicates that Respondent used a privacy shield, Domains by Proxy, LLC, to conceal its identity prior to the initiation of this dispute. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of information to the contrary. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). The privacy shield has since been lifted, and the WHOIS now demonstrates “nghia truong” is the registrant—which still does not indicate that Respondent is commonly known by the domain name. Id. Here, pursuant to all relevant WHOIS listings, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues that Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use. Respondent’s domain name resolves to a web page displaying UBS offices and employees, presumably passing itself off as Complainant to deceive customers for financial gain. See Compl., at Attached Annex 4. Panels have held that respondents attempting to pass themselves off as the complainant for financial gain lack a bona fide offering of goods and services. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant registered the UBS logo with the three keys. Compare Compl., at Attached Annex 3, p.3, with Compl., at Attached Annex 4 (Respondent’s resolving website). The Panel agrees that Respondent has fully incorporated Complainant’s marks and likeness and that it has thus passed itself off as Complainant, which does not represent any bona fide offering of goods or services or any legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii), respectively.
Finally, Complainant argues that Respondent’s domain name contains a login screen displaying the UBS service mark, which is typically associated with phishing or online fraudulent activities. See Compl. at Attached Annex 4. The general consensus among Panels is that phishing attempts to obtain consumer personal information is not a bona fide offering of goods or services, nor is it a legitimate non-commercial or fair use. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (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) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum Mar. 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). The Panel finds that
Respondent’s use of the disputed domain name is not permitted use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Complainant claims Respondent has registered and used the <ubs-global.info> domain name in bad faith. Specifically, Respondent’s efforts to attract and mislead UBS customers for commercial gain evinces bad faith under Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion."); 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). Here, the Panel agrees that the resolving website incorporates Complainant’s marks several times, and that such use is clearly confusing. See Compl., at Attached Annex 4. The Panel imputes an intent to commercially gain based on this use, and conclude that Respondent has engaged in bad faith found under Policy ¶ 4(b)(iv).
Complainant also argues that Respondent’s use of a customer login as a phishing attempt to obtain personal information evinces bad faith under Policy ¶ 4(b)(iv). To reiterate, Respondent’s domain name resolves to a website containing images of UBS offices and employees, along with a login page utilizing Complainant’s service mark. See Compl. at Attached Annex 4. Panels have held that attempts to deceive customers and phishing may demonstrate bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); Capital One Fin. Corp. v. Howel, FA 289304 (Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients). The Panel finds that Respondent has registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant asserts that its trademark registrations for the UBS mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. 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, and the use Respondent has made of the mark, that Respondent had actual knowledge of the mark and Complainant's rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration"). Thus, the Panel holds that Respondent registered the disputed domain name 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.info> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: January 23, 2017
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