UBS AG v. Peter mayer
Claim Number: FA1702001719446
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Peter Mayer (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-banking.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 28, 2017; the Forum received payment on February 28, 2017.
On March 1, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ubs-banking.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 March 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 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-banking.com. Also on March 1, 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 National Arbitration Forum appointed Darryl C. Wilson, 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, UBS, AG, operates in the financial industry. In furtherance of its business, 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). Respondent’s <ubs-banking.com> is confusingly similar to the UBS mark because it incorporates the mark in entirety adding only a hyphen, the generic or descriptive term “banking”, and the “.com” generic top level domain (“gTLD”).
Respondent has no rights or legitimate interests in <ubs-banking.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the UBS mark in any respect. Respondent does not have any connection with Complainant, yet Respondent is using the Domain Name to resolve to a website that contains information about financial services, money lending, and secure payments and presumably nets Respondent commercial profit.
Respondent has registered and used <ubs-banking.com> in bad faith. Respondent registered the disputed domain name in an attempt to falsely suggest a partnership, connection, and affiliation with Complainant, confuse consumers, and capitalize on the fame and notoriety of Complainant and its UBS mark in the financial services marketplace. The Domain Name resolves to a Web site that contains information about financial services, money lending, and secure payments. Such actions exhibit bad faith under Policy ¶ 4(b)(iv). In addition, Respondent has at least constructive notice of Complainant’s federally registered UBS mark when it registered the domain name. Constructive knowledge of a complainant’s rights in a mark supports a finding of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant UBS AG, of Zurich, Switzerland is the owner of domestic and international registrations for the mark UBS, which it has used continuously since at least as early as 1962, in connection with its provision of a wide range of financial services such as banking, lending and brokerage services. Complainant has real space locations throughout the globe, and has operated in cyberspace since 1993 from its principal site located at <ubs.com>.
Respondent is Peter Mayer of Berlin, Germany. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that the <ubs-banking.com> domain name was registered on or about February 25, 2017.
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 operates in the financial industry. In furtherance of its business, Complainant registered the UBS mark with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Prior panels have found 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).”). The Panel here finds that Complainant’s evidence of a USPTO registration for the UBS mark to be sufficient in establishing rights under Policy ¶ 4(a)(i).
Complainant next contends that Respondent’s <ubs-banking.com> is confusingly similar to the UBS mark because it incorporates the mark in entirety, adding only a hyphen, the generic or descriptive term “banking”, and the “.com” gTLD. Past panels have determined that domain names are confusingly similar to a mark where the domain name consisted of a mark or marks and an added gTLD. See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law). Additionally, the inclusion of a hyphen and an additional term descriptive of a complainant’s business does not create unique characteristics which overcome a confusingly similar conclusion under Policy ¶ 4(a)(i). 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.”). The Panel here finds that Respondent’s <ubs-banking.com> is confusingly similar to the UBS mark per Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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), 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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <ubs-banking.com>. In support of this assertion, Complainant claims that Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the UBS mark in any manner. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the 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). The WHOIS information of record identifies Respondent as “Peter mayer.” Additionally, failure to establish authorization or approval for a Respondent to use Complainant’s mark can be evidence of a lack of rights or legitimate interests in a confusingly similar domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). The Panel here finds that Respondent is not commonly known by the disputed domain name.
Respondent has provided no evidence of any connection with Complainant, yet Respondent is using the Domain Name to resolve to a competing website. Previous panels have found that use of a disputed domain name to resolve to a competing website does not amount to a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant 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).”) The disputed domain name resolves to Respondent’s own website, which contains information about financial services, money lending, and secure payments and presumably nets Respondent commercial profit. The Panel here finds that Respondent’s use of the disputed domain name is not a permitted use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant claims Respondent has registered and used <ubs-banking.com> in bad faith. Respondent allegedly registered the disputed domain name in an attempt to falsely suggest a partnership, connection, and affiliation with Complainant, confuse consumers, and capitalize on the fame and notoriety of Complainant and its UBS mark in the financial services marketplace. The disputed domain name resolves to a website that contains information about financial services, money lending, and secure payments. Prior panels have found that use of a disputed domain name to resolve to a website that competes directly with Complainant’s business can evince bad faith per Policy ¶ 4(b)(iv). See Bank of America, National Association v. Marcos Alexis Nelson, FA1505001621654 (Forum July 2, 2015) (findings that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the disputed domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered). The Panel here finds that Respondent registered and used the disputed domain in bad faith per Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ubs-banking.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 17, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page