UBS AG v. hager manuela
Claim Number: FA1710001756004
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is hager manuela (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsseuropa.com>, registered with Ligne Web Services SARL dba LWS.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 27, 2017; the Forum received payment on October 27, 2017.
On November 2, 2017, Ligne Web Services SARL dba LWS confirmed by e-mail to the Forum that the <ubsseuropa.com> domain name is registered with Ligne Web Services SARL dba LWS and that Respondent is the current registrant of the name. Ligne Web Services SARL dba LWS has verified that Respondent is bound by the Ligne Web Services SARL dba LWS 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 November 2, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 22, 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@ubsseuropa.com. Also on November 2, 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 November 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) 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). Additionally, Complainant registered the UBS mark with the World Intellectual Property Office (“WIPO”) (e.g., Reg. No. 803311, registered May 7, 2003). See Compl. Annex 3. Respondent’s <ubsseuropa.com> is confusingly similar to Complainant’s UBS mark because it incorporates the mark in its entirety, adding the letter “s,” the geographic term “Europa” and the “.com” generic top level domain (“gTLD”).
ii) Respondent does not have rights or legitimate interests in <ubsseuropa.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 regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <ubsseuropa.com> resolves to a website promoting competing banking services, while creating the illusion that Respondent is affiliated with Complainant. See Compl. Annex 4.
iii) Respondent registered and is using <ubsseuropa.com> in bad faith. The disputed domain name attracts Internet users to Respondent’s website, presumably for commercial gain. Respondent’s <ubsseuropa.com> creates initial interest confusion among users looking for Complainant’s website, leading them to believe that Complainant endorses or is connected to Respondent’s business. Respondent registered <ubsseuropa.com> with constructive and/or actual knowledge of Complainant and its rights to the UBS mark.
B. Respondent
Respondent did not submit a Response. The Panel notes that Respondent registered <ubsseuropa.com> on October 23, 2017.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
Preliminary Issue: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the French language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the English language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the French language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, in the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides that the proceeding should be in English.
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 provides worldwide financial goods and services. Complainant uses the UBS mark in conjunction with its business practices. Complainant claims it registered the UBS mark with USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. Additionally, Complainant claims it registered the UBS mark with WIPO (e.g., Reg. No. 803311, registered May 7, 2003). Id. Registrations with multiple government trademark entities are sufficient to show rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel determines that Complainant’s registrations with USPTO and WIPO are sufficient to establish rights in the UBS mark.
Complainant asserts that Respondent’s <ubsseuropa.com> is confusingly similar to Complainant’s UBS mark because it incorporates the mark in its entirety, adding the letter “s,” the geographic term “Europa” and the “.com” gTLD. The inclusion of a geographic term in a disputed domain name does not distinguish that name from the original mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.). Likewise, the addition of a letter and a gTLD to a fully incorporated mark are insignificant to a Policy ¶ 4(a)(i) analysis. See TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015) (finding that the addition of the letter ‘s’ in the <tripadvisosr.com> domain name was of no consequence, and thus resulted in a confusing similarity when compared to the complainant’s TRIP ADVISOR trademark); Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). As such, the Panel concludes that Respondent’s <ubsseuropa.com> is confusingly similar to Complainant’s UBS mark.
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 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); 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 does not have rights or legitimate interests in <ubsseuropa.com>. To support its contention, Complainant asserts that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “hager manuela.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel “infers that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant avers it has not authorized or licensed Respondent to use the UBS mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant demonstrates that Respondent’s <ubsseuropa.com> resolves to a website promoting competing banking services, while creating the illusion that Respondent is affiliated with Complainant. See Compl. 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). Moreover, purporting to have an affiliation with a complainant evinces that the respondent lacks rights or legitimate interests in the disputed domain name. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] 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).”).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant maintains that Respondent registered and is using <ubsseuropa.com> in bad faith. Complainant asserts that the disputed domain name attracts Internet users to Respondent’s website, presumably for commercial gain. Specifically, Complainant argues that Respondent’s <ubsseuropa.com> creates initial interest confusion among users looking for Complainant’s website, leading them to believe that Complainant endorses or is connected to Respondent’s business. See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). Therefore, the Panel determines that Respondent registered and is using <ubsseuropa.com> in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent registered <ubsseuropa.com> with constructive and/or actual knowledge of Complainant and its rights to the UBS mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found“
actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame, notoriety, and long-standing use of Complainant's UBS mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, where the circumstances indicate that Respondent had actual knowledge of Complainant's mark when it registered <ubsseuropa.com>, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsseuropa.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 5, 2017
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