UBS AG v. Axel A Weber / UBS GROUP AG
Claim Number: FA1702001717668
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia. Respondent is Axel A Weber / UBS GROUP AG (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsgroupag.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 17, 2017; the Forum received payment on February 17, 2017.
On Feb 18, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ubsgroupag.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 20, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 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@ubsgroupag.com. Also on February 20, 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 17, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant registered the UBS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered December 26, 1989).
Respondent’s <ubsgroupag.com> mark is confusingly similar as it includes the entire UBS mark with the generic word “group”, the generic entity designator “ag”, and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in <ubsgroupag.com>. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the UBS mark in any way. Respondent also does not use the domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use as it attempts to divert prospective users away from Complainant and to its webpage, which merely has a tiling pattern of the UBS mark and its accompanying design.
Respondent registered and is using the <ubsgroupag.com> in bad faith. Respondent used false and fraudulent WHOIS information when registering the disputed domain. Respondent attempts to intercept users seeking Complainant and benefit from Complainant’s fame and goodwill to likely commercially benefit. Respondent, by using the disputed domain name, suggests a connection with Complainant, thus causing initial interest confusion. Finally, Respondent also must have actual or constructive knowledge of Complainant’s mark, registered the domain name using the mark anyways, and used it without any legitimate purpose.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in the UBS mark.
Respondent registered the at-issue domain name after Complainant acquired rights in its UBS trademark.
Respondent did not give its real name and organization in registering the at-issue domain name.
Respondent uses the at-issue domain name to display a webpage containing a tiling pattern of the UBS mark and related design in an attempt to divert prospective users away from Complainant and to Respondent’s webpage,
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration as well as other registrations worldwide for the UBS trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <ubsgroupag.com> domain name contains Complainant’s UBS trademark with the generic and suggestive term “group” added, the German business organizational form identifier “ag” added, and finally ends with the top-level “.com” Notwithstanding the differences between the domain name and Complainant’s mark, Respondent’s domain name is confusingly similar to Complainant’s UBS trademark under Policy ¶ 4(a)(i). In fact, the addition of the term “group,” which suggests Complainant’s organization and the term “ag,” an identifier used by Complainant UBS AG (and numerous other businesses) to designate its business form, adds to such confusion. See EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (Holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).); see also, F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Axel A Weber / UBS GROUP AG” as the at-issue domain name’s registrant. However, Axel A Weber serves on Complainant’s board of directors as its chairman and is not the real registrant of the at-issue domain name. Further, there is nothing in the record that otherwise suggests Respondent is commonly known by the <ubsgroupag.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). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent uses the at-issue domain name to attempt to divert internet users from Complainant to Respondent’s holding page. The page displays a tiled pattern consisting of Complainant’s trademark and related design. Use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). 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).”).
Given the forgoing, Complainant satisfies its initial burden under Policy ¶ 4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name.
Respondent registered and used the at-issue domain name in bad faith. As discussed below Policy ¶ 4(b) circumstance, as well as other circumstances, are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, the at-issue domain name’s registration information lists the current chairman of Complainant’s board of directors, Axel A Weber, as <ubsgroupag.com> registrant when Mr. Weber undeniably is not the domain name’s registrant. The bogus information of record indicates that Respondent registered the <ubsgroupag.com> domain in bad faith. See CNU ONLINE Holdings, LLC v. Domain Admin / Whois Privacy Corp., FA1504001614972 (Forum May 29, 2015) (“As the Panel sees that Respondent has provided false or misleading WHOIS information, the Panel finds bad faith in Respondent’s registration of the disputed domain name per Policy ¶ 4(a)(iii).”).
Next and as mentioned above regarding rights and interests, Respondent attempts to divert internet users seeking Complainant’s services to its own webpage. Moreover, it is likely that Respondent benefits by using the confusingly similar domain name for such purpose. Respondent’s confounding <ubsgroupag.com> webpage, which misappropriates Complainant’s mark and logo, additionally makes clear that Respondent desires to hijack wayward internet users and deliver them to a web presence that Respondent controls. Such use of the <ubsgroupag.com> domain name demonstrates Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv). See 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).
Finally, Respondent registered the <ubsgroupag.com> domain name knowing that Complainant had trademark rights in the UBS trademark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from <ubsgroupag.com>’s direction to a webpage containing Complainant’s trademark and logo. It is thus clear that Respondent registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <ubsgroupag.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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 had "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 <ubsgroupag.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 19, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page