UBS AG v. Brett Pinnington
Claim Number: FA1702001716641
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Brett Pinnington (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsoption.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically February 8, 2017; the Forum received payment February 9, 2017.
On February 9, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubsoption.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 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@ubsoption.com. Also on February 10, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications record, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant provides worldwide financial goods and services. Complainant uses the UBS mark in conjunction with its business practices. Complainant registered the UBS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl., at Attached Annex 3. Respondent’s <ubsoption.com> is confusingly similar to the UBS mark because it incorporates the mark in its entirety, adding the generic term “option” and “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <ubsoption.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the UBS mark in any way, Respondent is not affiliated with Complainant and Respondent has not made a bona fide offering of goods and services or a legitimate non-commercial or fair use of the domain name. Respondent’s <ubsoption.com> resolves to a website featuring Complainant’s black, white, and red color scheme, offering financial services in direct competition with Complainant’s business, thereby infringing on the good will of Complainant’s UBS mark. See Compl., at Annex 4.
Respondent registered and is using <ubsoption.com> in bad faith. The apparent intent of the disputed domain name is to attract Internet users to Respondent’s website for commercial gain. Additionally, <ubsoption.com> gives the impression that Respondent is affiliated or endorsed by Complainant. Respondent registered <ubsoption.com> with at least constructive notice of Complainant and its rights to the UBS mark.
Respondent did not submit a response. The Panel notes that Respondent registered <ubsoption.com> July 26, 2016.
Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or disputed domain name containing that protected mark.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark without permission or license to do so.
Respondent registered the disputed domain name and uses it 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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:
Complainant provides worldwide financial goods and services. Complainant uses the UBS mark in conjunction with its business practices. Complainant registered the UBS mark with USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Additionally, Complainant states it registered the UBS mark with WIPO (e.g., Reg. No. 803311, registered May 7, 2003). See Compl., at Attached Annex 3. Registrations with the USPTO and other governmental or global agencies show rights in a mark under the Policy. See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel deems Complainant’s USPTO and WIPO registrations as sufficient to show rights to the UBS mark.
Complainant asserts that Respondent’s <ubsoption.com> is confusingly similar to the UBS mark because it incorporates the mark in its entirety, adding the generic term “option” and “.com” gTLD. Addition of generic terms and gTLDs do not differentiate a disputed domain name from the original mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel finds that <ubsoption.com> is not distinguished from but is confusingly similar to Complainant’s UBS mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name using Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 <ubsoption.com>. To support its argument, Complainant states that Respondent is not commonly known by the disputed domain name. WHOIS information associated with the disputed domain name identifies Respondent as “Brett Pinnington.” The WHOIS information and a lack of information to the contrary sufficiently shows that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In the absence of a response, the Panel finds that Respondent is not commonly known by <ubsoption.com>.
Complainant urges it has not authorized or licensed Respondent to use the UBS mark in any way and that Respondent is not affiliated with Complainant. Complainant also contends that Respondent has not made a bona fide offering of goods and services or a legitimate non-commercial or fair use of the domain name. Complainant shows that Respondent’s <ubsoption.com> resolves to a website featuring Complainant’s black, white, and red color scheme, offering financial services in direct competition with Complainant’s business, thereby infringing on the good will of Complainant’s UBS mark. See Compl., at Annex 4. “[C]apitalizing on the well-known marks of [c]omplainant by attracting internet users to its disputed domain names where [r]espondent sells competing products of [c]omplainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010). Furthermore, panels have found that a respondent lacks rights and legitimate interests in a disputed domain name where a color scheme identical to the complainant’s is used in the disputed site. Dream Horse Classifieds v. Mosley, FA 381256 (Forum Feb. 8, 2005). Therefore, the Panel finds that Respondent has no rights or legitimate interests in <ubsoption.com> pursuant to Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant contends that Respondent registered and is using <ubsoption.com> in bad faith. Respondent’s <ubsoption.com> resolves to a website displaying a color scheme similar to Complainant’s website and financial services in direct competition with Complainant. See Compl., at Attached Annex 4. Complainant argues that the apparent intent of the disputed domain name is to attract Internet users to Respondent’s website for commercial gain. Additionally, <ubsoption.com> gives the impression that Respondent is affiliated or endorsed by Complainant. “By use of . . . a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, … intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).” Yahoo! Inc. v. Web Master, FA 127717 (Forum Nov. 27, 2002). Therefore, this Panel finds “evidence of Policy ¶ 4(b)(iv) bad faith as Respondent … used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.” Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014).
Finally, Complainant argues that Respondent registered <ubsoption.com> with at least constructive notice of Complainant and its rights to the UBS mark. Complainant asserts that its trademark registrations for the UBS mark existed well before the registration of the disputed domain name. While constructive notice will not support a bad faith finding, this Panel finds that, due to the fame of Complainant's mark and Respondent’s offer of similar services at <ubsoption.com>, Respondent had actual knowledge of Complainant and its rights to the UBS mark. 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 finds that Respondent registered <ubsoption.com> in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsoption.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 22, 2017
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