UBS AG v. Mr.uncle Mr.uncle
Claim Number: FA1710001756012
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington DC, USA. Respondent is Mr.uncle Mr.uncle (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-sms.com>, registered with GoDaddy.com, LLC.
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 October 27, 2017; the Forum received payment on October 27, 2017.
On October 30, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubs-sms.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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-sms.com. Also on November 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 November 27, 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 is a large financial service firm that conducts business in over 50 countries and employs approximately 60,000 people. Complainant 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 with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubs-sms.com> domain name is confusingly similar as the domain name consists of the entire UBS mark and only adds the generic word “sms” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <ubs-sms.com> domain name. Respondent is not commonly known by the disputed domain, nor has Complainant authorized or licensed 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. Rather, the domain name resolves to a website that features the UBS mark and Three Keys logo; a black, white, and red color scheme identical to that of Complainant; references to banking services; and log-in and registration pages that Respondent uses to steal user’s information and commit fraud and other illegal activities.
Respondent registered and uses the <ubs-sms.com> domain name in bad faith. Respondent attempts to pass off as Complainant, for commercial gain, by falsely suggesting a partnership, connection, and affiliation with Complainant by using the UBS name and registered marks. Finally, Respondent had constructive notice of Complainant’s mark when it registered the infringing domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is UBS AG, of Zurich, Switzerland. Complainant is the owner of domestic and international registrations for the mark UBS, and associated marks and logos, which it has been continuously using since at least as early as 1989, in connection with its provision of wide ranging financial goods and services such as banking, investment banking, securities brokerage, and lending.
Respondent is Mr.uncle Mr.uncle of Fujian, China. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that Respondent registered the <ubs-sms.com> domain name on or about October 24, 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 registered the UBS mark with the USPTO (e.g., Reg. No. 1,573,828, registered December 26, 1989). Prior panels have held that registration of a mark with the USPTO is sufficient to establish a registrant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.). The Panel here finds that Complainant has established rights in the UBS mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <ubs-sms.com> is confusingly similar as the domain name consists of the entire UBS mark and only adds a generic word and a gTLD. Respondent’s domain name also adds a hyphen in between the mark and the added word. Adding punctuation and a generic word has been found to not 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 See 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.”). Here, Respondent uses the entire UBS mark and adds a hyphen and the generic word “sms,” as well as the gTLD “.com”. The Panel here finds that Respondent has not included elements in the domain name that provide distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent raises 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 the <ubs-sms.com> domain name as Respondent is not commonly known by the name, nor has Complainant licensed or authorized Respondent to use the UBS mark. When a Respondent fails to submit a response, the WHOIS information can support a finding that the respondent is not commonly known by a 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)). Here, the WHOIS information of record identifies Respondent as “Mr.uncle Mr.uncle / Mr.uncle.” 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). Based on the WHOIS information here and Respondent’s failure to contest Complainant’s assertions, the Panel here finds that Respondent is not commonly known by the disputed domain name, and thus does not have any rights or legitimate interests under Policy ¶ 4(c)(ii).
Complainant further alleges that Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use as the <ubs-sms.com> domain name resolves to a website that features the UBS mark and Three Keys logo; a black, white, and red color scheme identical to that of Complainant; references to banking services; and log-in and registration pages that Respondent uses to steal user’s information and commit fraud and other illegal activities. Past panels have held that using a confusingly similar domain name to pass off as a complainant and commit fraud or illegal activities can demonstrate a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA 1741976 (Forum Aug. 22, 2017) (“The usage of Complainant’s NETFLIX mark which has a significant reputation in relation to audio visual services for unauthorised audio visual material is not fair as the site does not make it clear that there is no commercial connection with Complainant and this amounts to passing off… As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name.”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage for the disputed domain name, which appears to contain Complainant’s UBS mark and Complainant’s three keys logo in the top left corner. The Panel here finds that Respondent attempts to pass itself off as Complainant, presumably to phish for users’ information, and that Respondent’s actions fail to indicate a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
Respondent raises 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 further argues that Respondent registered and uses <ubs-sms.com> in bad faith by attempting to pass off as Complainant, for commercial gain, by falsely suggesting a partnership, connection, and affiliation with Complainant through the use of UBS’s name and registered marks. Using a disputed domain name to pass off as a complainant and trade upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). Complainant’s provided screenshot demonstrates that Respondent uses Complainant’s UBS mark and three keys logo in the upper left hand corner of the resolving webpage. The Panel here finds that Respondent attempts to pass off as Complainant, presumably for commercially gain, in bad faith under Policy ¶ 4(b)(iv).
Additionally, Complainant claims that Respondent uses the disputed domain name to engage in a phishing scheme intended to defraud users. Phishing for information can indicate 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).”). Complainant alleges that the resolving webpage for the disputed domain name offers a login option, presumably to fraudulently obtain information from customers to defraud users seeking Complainant’s services. While Complainant’s screenshots do not show where users can log in, there is a drop down menu that may offer a login option. The Panel here finds that Respondent attempts to phish for users’ login information, indicating that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
DECISION
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-sms.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: December 11, 2017
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