UBS AG v. Frank Kelechi / Harmony House
Claim Number: FA1903001832240
Complainant is UBS AG ("Complainant"), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Frank Kelechi / Harmony House ("Respondent"), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsofficial.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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2019; the Forum received payment on March 1, 2019.
On March 4, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by email to the Forum that the <ubsofficial.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 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2019 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@ubsofficial.com. Also on March 4, 2019, the Written Notice of the Complaint, notifying Respondent of the email 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 March 27, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 one of the largest financial services firms in the world, with offices in more than 50 countries and approximately 60,000 employees. Complainant has used the UBS mark since at least as early as 1962 in connection with a wide range of financial services. Complainant owns numerous registrations for the UBS mark in the United States, the European Union, Switzerland, China, and WIPO, among other jurisdictions. Complainant asserts that the UBS mark is famous, and it has been found to be so in previous proceedings under the Policy.
Respondent registered the disputed domain name <ubsofficial.com> in February 2019. The domain name is being used for a website that displays the UBS mark and Complainant’s UBS logo and color scheme. The site purports to offer financial services similar to those offered by Complainant, and includes a login screen that solicits users’ personal and financial information. Complainant states that Respondent has no connection with Complainant, is not authorized to use Complainant’s mark, and is not commonly known by the disputed domain name. Complainant further accuses Respondent of using the domain name and associated website for unlawful and fraudulent purposes. Complainant contends on these grounds that the disputed domain name <ubsofficial.com> is confusingly similar to its UBS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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."
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 Management, 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 <ubsofficial.com> incorporates Complainant's registered UBS trademark, adding the generic term "official" and the ".com" top-level domain. These additions do nothing to diminish and in fact likely contribute to the confusing similarity between the domain name and Complainant's mark. See, e.g., Dell Inc. v. Vikas Tiwari, FA 1724159 (Forum Apr. 18, 2017) (finding <dellofficial.com> confusingly similar to DELL); IM Production v. Whoisguard Protected / Whoisguard Inc. / Tina Fusa, D2015-1532 (WIPO Oct. 30, 2015) (finding <isabelmarant-official.com> confusingly similar to ISABEL MARANT); UBS AG v. Koffi Simplice, FA 1641625 (Forum Nov. 4, 2015) (finding <ubs‑company.com> confusingly similar to UBS); UBS AG v. Hildegard Gruener, FA 1547946 (Forum Apr. 15, 2014) (finding <ubs‑com.com> confusingly similar to UBS). Accordingly, the Panel considers the disputed domain name to be confusingly similar to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's famous registered mark without authorization, and is being used for a website that imitates Complainant’s own site, presumably for fraudulent purposes. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., UBS AG v. Mr.uncle Mr.uncle, FA 1754571 (Forum Nov. 17, 2017) (finding lack of rights or interests under similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent's registration and use of a domain name obviously intended to create confusion with Complainant is indicative of bad faith under the Policy. See, e.g., UBS AG v. Mr.uncle Mr.uncle, supra (finding bad faith registration and use under similar circumstances). Respondent clearly was aware of Complainant and its mark, considering inter alia Respondent's prominent use of Complainant's mark and logo on Respondent's website. See id. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsofficial.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 4, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page