DECISION

 

UBS AG v. Phu Nguyen Duc

Claim Number: FA1704001727950

 

PARTIES

Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA.  Respondent is Phu Nguyen Duc (“Respondent”), Italy.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <ubs-email.com> (‘the Domain Name’) registered with REGISTER.IT SPA.

 

PANEL

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.

 

Dawn Osborne of Palmer Biggs IP as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on April 20, 2017; the Forum received payment on April 20, 2017.

 

On April 24, 2017, REGISTER.IT SPA confirmed by e-mail to the Forum that the <ubs-email.com> domain name is registered with REGISTER.IT SPA and that Respondent is the current registrant of the name.  REGISTER.IT SPA has verified that Respondent is bound by the REGISTER.IT SPA 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 April 24, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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-email.com.  Also on April 24, 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 May 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Complainant’s contentions can be summarized as follows:

 

Complainant is one of the largest financial services firms in the world with offices in more than 50 countries. Since at least 1962 Complainant has been using the UBS mark in commerce in relation to its services. Complainant owns a large number of trade mark registrations in, inter alia, the USA and the EU for its UBS word mark and logo. The UBS mark is famous. Complainant also owns and operates a web site at UBS.com registered in 1993.

 

The Domain Name is confusingly similar to Complainant’s UBS mark. The Domain Name contains all of Complainant’s UBS mark and the dominant element of the domain name is identical to Complainant’s UBS mark. The generic word ‘e mail’ and the gTLD .com does not differentiate the Domain Name from Complainant’s famous mark.

 

Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized to use any of Complainant’s  marks.

 

Respondent is using the Domain Name to suggest a connection with Complainant when there is none and to capitalize on the fame of the UBS mark in the financial services sector.

 

Respondent is using the Domain Name to redirect Internet users to Complainant’s UBS.com web site. This is not bona fide offering of services or a legitimate non commercial use.

Respondent is not commonly known or identified by the Domain Name or UBS.

Respondent knew that the Domain Name containing Complainant’s famous BIC mark would infringe Complainant’s rights when it was registered.

Redirecting users to Complainant’s web site is a sign of bad faith. The Domain Name is being or will be used to trade on Complainant’s good will, suggesting a connection with Complainant and to confuse and defraud customers for commercial gain. This is bad faith under para 4 (b) (iv) of the Policy.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

 

 

FINDINGS

 

Complainant is one of the largest financial services firms in the world. Since at least 1962 Complainant has been using the UBS mark in commerce  in relation to its services. Complainant owns a number of trade mark registrations in, inter alia,  the USA and the EU for its UBS word mark and logo.

 

The Domain Name registered in 2017 has been used to point to the web site of Complainant.

 

DISCUSSION

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:

 

 

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.”).

 

Identical or Confusingly Similar

The Domain Name consists of Complainant's UBS mark (which is registered in USA and EU for financial services and has been used since 1962), a hyphen, the generic term ‘e mail’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by Complainant). The Panel agrees that the addition of a hyphen and the generic term ‘e mail’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy.

 

The gTLD .com does not serve to distinguish the Domain Name from the UBS  mark, which is the distinctive component of the Domain Name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).

 

Accordingly, the Panel holds that the Domain Name is confusingly similar for the purpose to a mark in which Complainant has rights.

 

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has not authorised the use of its mark.  Respondent has not answered this Complaint and there is no evidence or reason to suggest Respondent is, in fact. commonly known by the Domain Name.  See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).

 

The web site attached to the Domain Name redirects users to Complainant’s web site at UBS.com.   The Panel finds this use is confusing and suggests a connection between Complainant and Respondent when there is none. See Sports Auth Mich. Inc. v Domhold Co, FA 135011 (Forum Jan 9, 2003)(finding that using a domain name to redirect Internet users to a complainant’s web site is not a bona fide offering of goods and services nor a non commercial use of the Domain Name.)

As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

Registration and Use in Bad Faith

Using the Domain Name to point to Complainant’s web site is, in the opinion of the Panel, confusing and disruptive in that visitors to the site might reasonably believe the Domain Name is connected to or approved by Complainant when it is not. This use demonstrates that Respondent is aware of Complainant and its business. See Advance Auto Parts, Inc dba Advance Auto Innovations LLC v Dragan Platic / Poste Restante, FA 1401001537469 (Forum February 13, 2014)(holding that the respondent’s behaviour in redirecting Internet users to the complainant’s own web site was indicative of the respondent’s bad faith registration and use pursuant to Policy 4 (b)(iii).)

The Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website at the Domain Name by creating a likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site at the Domain Name for commercial reasons likely to disrupt the business of Complainant.

As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b) ( iii).

 

DECISION

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-email.com> domain name be TRANSFERRED from Respondent to Complainant

 

 

 

Dawn Osborne>>, Panelist

Dated:  May 31, 2017