UBS AG v. Peter mayer
Claim Number: FA1702001719193
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington D.C., USA. Respondent is Peter mayer (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-kreditkarte.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 27, 2017; the Forum received payment on February 27, 2017.
On February 28, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ubs-kreditkarte.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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 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-kreditkarte.com. Also on February 28, 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 April 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that is one of the largest financial services firms in the world, present in all major financial centers worldwide, with offices in more than 50 countries and approximately 60,000 employees. It has been using the UBS mark in commerce in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. Complainant registered the UBS mark in the United States in 1989. The mark is also registered in many other countries around the world, including in Germany. The mark is famous.
According to Complainant, the disputed domain name is confusingly similar to its mark UBS as it includes the entire mark and only adds a hyphen, the German generic or descriptive word “kreditkarte”, and the generic top-level domain (“gTLD”) “.com”.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain, nor has Complainant authorized Respondent to use the UBS mark in any way. Respondent also fails to use the disputed domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use as it resolves to a website that prominently features the UBS logo and color scheme, an e-banking login box that will more than likely be used to commit fraud on consumers, and references to e-banking and mobile banking services.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent attempts to commercially benefit by falsely suggesting a partnership, connection, and affiliation with Complainant by using the UBS name and registered marks. The disputed domain name resolves to a webpage that offers services in direct competition with Complainant. Additionally, the resolving webpage offers a login option, presumably to fraudulently obtain information from customers to defraud users seeking Complainant’s services. Finally, Respondent also had actual or constructive knowledge of Complainant’s mark as the resolving webpage prominently displays Complainant’s registered UBS marks and uses it for an unlawful purpose.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark UBS and uses it to market financial services around the world. The mark is famous.
Complainant’s rights in its mark date back to at least 1989.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a website that prominently features Complainant’s mark and trade dress, an e-banking login box purporting to allow login to Complainant’s services, and links to services that compete with those of Complainant.
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 disputed domain name is confusingly similar to Complainant’s mark as it includes Complainant’s entire mark and adds a hyphen and the generic word “kreditkarte”, which means “credit card” in German, as well as the gTLD “.com”. Adding punctuation and a generic word has not been found to be distinguishing. 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.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Similarly, Panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See 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.”). Therefore, the Panel finds that Respondent has not included elements in the domain name that would provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the UBS mark. Respondent is not commonly known by the disputed domain name: the Panel notes that the WHOIS information of record identifies Respondent as “Peter mayer”. When a respondent fails to submit a response, the WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of evidence in the record to indicate that a complainant authorized respondent to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent does not have any rights or legitimate interests in the disputed domain name.
Further, Respondent’s actions are not a bona fide offering of goods or services or a legitimate noncommercial or fair use as the disputed domain name resolves in a website that offers similar services to Complainant, such as “E-Banking” and “Digital Banking”. Using a confusingly similar domain name to offer similar services to a complainant can demonstrate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Accordingly, the Panel finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for his use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Respondent uses the disputed domain name in bad faith by attempting to intercept users seeking Complainant’s services and commercially benefit by using a confusingly similar domain name and offering competing services. Prior Panels have concluded that conduct of this nature may evince bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Therefore the Panel finds that Respondent attempts to commercially benefit off Complainant’s mark in bad faith.
Further, the disputed domain name resolves to a webpage that prominently displays Complainant’s marks and designs, which would lead users to believe that an association existed between Complainant and Respondent when no such relationship did or does exist. Thus, Respondent disrupts Complainant’s business for commercial gain by creating a likelihood for confusion. Leading potential users to mistakenly believe that an association exists between a complainant and a respondent can evince bad faith. See Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). The Panel therefore finds that the confusing similarity between Complainant’s mark and the disputed domain name created confusion in prospective users and thus demonstrates bad faith registration and use.
Additionally, Respondent appears to be using the disputed domain name to engage in a phishing scheme intended to defraud users. The resolving webpage for the disputed domain name displays Complainant’s log and trade dress, and offers a login option for e-banking, presumably to fraudulently obtain information from customers so as to defraud users seeking Complainant’s services. Phishing for information indicates bad faith use of a domain name. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Accordingly, the Panel finds that Respondent registered and uses the domain name in bad faith pursuant to 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-kreditkarte.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 4, 2017
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