UBS AG v. Pechala Frantisek
Claim Number: FA1701001711221
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Pechala Frantisek (“Respondent”), represented by Radek Pivonka, Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsresearch.com>, registered with Domain.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.
Kenneth L Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 6, 2017; the Forum received payment on January 9, 2017.
On January 6, 2017, Domain.com, LLC confirmed by e-mail to the Forum that the <ubsresearch.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 January 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@ubsresearch.com. Also on January 9, 2017, 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.
A timely Response was received and determined to be complete on January 30, 2017.
On February 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, UBS AG, is a financial services firm that operates in more than 50 countries and employs approximately 60,000 people. Complainant uses the UBS mark in connection with this business and has rights in the mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered December 26, 1989). Respondent’s domain name <ubsresearch.com> is confusingly similar to the UBS mark as the domain name includes the entire mark and differs through the addition of the generic term “research” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, been a licensee or partner of Complainant, or authorized to use any of Complainant’s marks. Further, Respondent’s domain name is not used in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s domain name resolves to a website hosting information related to the stock market, indexes, currencies, and interest rates which falsely suggests a connection between Complainant and Respondent. Respondent also had notice of Complainant’s UBS mark at the time of registration.
B. Respondent
Respondent’s domain name is a mere abbreviation of the words “united bear strategies research.” Respondent uses the name in connection with new strategies in investments. Respondent is not planning on using the UBS mark and only plans on using the domain to further its “united bear strategies research” business.
The Panel disputed domain name was created on December 25, 2016.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, UBS; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark, UBS. Complainant has adequately plead it rights and interests in and to this trademark.
Respondent makes no allegations regarding the similarity of the disputed domain name to the trademark. As such, the Panel concludes that it concedes that the disputed domain name and Complainant’s trademark are confusingly similar.
Respondent arrives at the disputed domain name by merely adding the generic word “research” and the g TLD “.com” to Complainant’s trademark. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent does not apparently have a license or other authority to register the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as “Pechala Frantisek.” As such, the record is devoid of any information that indicates Respondent is commonly known by the disputed domain name.
With no supporting evidence whatsoever, Respondent claims to be doing business using the disputed domain name. If true, the Panel would expect some supporting evidence. Without supporting evidence, such a claim is unsubstantiated, self-serving, and will be dismissed by the Panel.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Complainant contends that Respondent’s domain name resolves to a website hosting information related to the stock market, indexes, currencies, and interest rates which falsely suggest a connection between Complainant and Respondent. See Compl., at Attached Annex 4. Panels have held that using another’s mark in a domain name to operate a commercial website has attempted to confuse and attract internet users for commercial gain. 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). Therefore, the Panel finds that Respondent’s use of the disputed domain name indicates a bad faith attempt to confuse and attract internet users for commercial gain pursuant to Policy ¶ 4(b)(iv).
Respondent claims that it is operating a business using the disputed domain name. Even if that were true and Respondent offers no evidence to support this claim, such a business trades on the fame of Complainant’s trademark, UBS. That is, by claiming that it uses the disputed domain name in business and that the disputed domain name contains the famous mark of another, Respondent concedes that it uses it in bad faith when the only evidence in the record is that offered by Complainant and that seems to clearly indicate that Respondent’s use is likely to confuse and misdirect Internet users.
Complainant asserts that its trademark registrations for the UBS mark existed well before the registration of the disputed domain name. Due to the fame of Complainant's mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of the mark and Complainant's rights in and to trademark, UBS.
Therefore, the Panel finds that Respondent has engaged in bad faith use and registration of 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 <ubsresearch.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 11, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page