UBS AG v. Hok Sun Chan
Claim Number: FA0607000755015
Complainant is UBS AG (“Complainant”), represented by Kenneth L. Bressler, of Blank Rome LLP, The Chrysler Building, 405 Lexington Avenue, New York, NY 10174. Respondent is Hok Sun Chan (“Respondent”), NA NA NA NA NA, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ubspactual.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Tyrus R. Atkinson, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 19, 2006.
On July 19, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <ubspactual.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 20, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 9, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@ubspactual.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 17 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <ubspactual.com> domain name is confusingly similar to Complainant’s UBS mark.
2. Respondent does not have any rights or legitimate interests in the <ubspactual.com> domain name.
3. Respondent registered and used the <ubspactual.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, UBS AG, is a prominent international financial institution providing investment management, and wealth and asset management services. Complainant holds numerous registrations of the UBS mark, including registration with the United States Patent and Trademark Office (‘USPTO”) (Reg. Nos. 1,573,828 issued December 26, 1989; 3,006,891 issued October 18, 2005). Complainant utilizes the UBS mark in extensive advertising of its financial goods and services on television, the Internet and in print media. On May 9, 2006 Complainant publicly announced its intention to acquire Brazilian investment bank Banco Pactual SA in the third quarter of 2006.
Respondent registered the <ubspactual.com> domain name on May 9, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which hosts links to the third-party websites of financial institutions in direct competition with Complainant. The third-party websites include the websites of Citibank, ING and Wachovia Bank, among others, all of which offer securities, investment banking and hedge fund goods and services in direct competition with Complainant.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant has established rights in the UBS mark through
registration with the USPTO. The Panel
finds that such registration is sufficient to establish rights pursuant to
Policy ¶ 4(a)(i), and the Panel further finds that Complainant’s rights in the
mark were established well before Respondent’s registration of the disputed
domain name. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive."); see also Innomed Techs., Inc.
v. DRP Servs., FA 221171 (Nat. Arb. Forum
Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”).
The <ubspactual.com> mark
is confusingly similar to Complainant’s UBS mark. Respondent’s domain name contains Complainant’s UBS mark in its
entirety. The disputed domain name adds
the term “pactual,” an element of the name of Banco Pactual SA, which is being
acquired by Complainant. The disputed
domain name was registered on the same day that Complainant announced its
intention to acquire Banco Pactual SA.
It seems likely that the disputed domain name is intended to combine the
UBS mark with the term “pactual” to describe Complainant’s new business
association. The Panel finds that
Respondent’s use of Complainant’s UBS mark in its entirety combined with the
term “pactual,” which is descriptive of Complainant’s business, creates a
domain name that is confusingly similar to Complainant’s mark. See Oki Data Ams., Inc. v.
ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name
wholly incorporates a Complainant’s registered mark is sufficient to establish
identity [sic] or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where the respondent’s domain
name combines the complainant’s mark with a generic term that has an obvious
relationship to the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has created a prima facie case by submitting a Complaint and asserting that Respondent lacks rights or legitimate interests in the <ubspactual.com> domain name. Once a prima facie case exists, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(a)(ii). Respondent has the opportunity to submit a Response in order to assert facts or circumstances indicating that Respondent does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c), and Respondent’s failure to avail itself of this opportunity suggests to the Panel that Respondent lacks rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.”). The Panel will review the available evidence to determine whether Respondent has rights or legitimate interests in the <ubspactual.com> domain name pursuant to Policy ¶ 4(c).
Respondent is using the <ubspactual.com> domain name to redirect Internet users to Respondent’s website. Respondent’s website consists entirely of links to third-party website, it contains no original content of its own. The third-party links featured on Respondent’s website redirect Internet users to the websites of Complainant’s direct competitors in the financial services industry. Presumably, Respondent receives pay-per-click referral fees from these links. The Panel finds that such use is not an bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) because the website does not offer any goods or services for sale. The Panel further finds that such use is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is presumably generating fees and making a commercial profit from the links hosted on its webpage. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant also asserts without contradiction that
Respondent is not commonly known by the <ubspactual.com> domain
name. In support of Complainant’s
assertion, Respondent’s WHOIS information identifies Respondent as “Hok Sun
Chan,” a name that appears to be unrelated to the disputed domain name. Complainant further contends that Respondent
has never been sponsored by or affiliated with Complainant and that Complainant
has never given Respondent permission to use the UBS mark in a domain
name. The Panel finds that the
available evidence indicates that Respondent is not commonly known by the <ubspactual.com>
domain name and thus, lacks rights or legitimate interests pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s
WHOIS information implies that Respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de
Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding
no rights or legitimate interest where the respondent was not commonly known by
the mark and never applied for a license or permission from the complainant to
use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <ubspactual.com> domain name is confusingly similar to Complainant’s mark making it likely that Internet users will be redirected to Respondent’s website when seeking Complainant’s business online. Online consumers who are aware of Complainant’s acquisition of Banco Pactual SA may seek information about the acquisition, or seek Complainant’s goods and services online, by combining Complainant’s UBS mark with the term “pactual” either by combining the two in a web browser and adding the top-level domain “.com,” or by combining the two in an Internet search engine. Either way, Internet users will find themselves redirected to Respondent’s website where there is no genuine information about Complainant’s acquisition of Banco Pactual SA, or about Complainant’s financial services, but are instead greeted by links to commercial third-party websites in direct competition with Complainant. Presumably, Respondent is receiving referral fees when Internet users click on these third-party links. The Panel finds that Respondent’s use of the <ubspactual.com> domain name to attract Internet users to its website in order to generate pay-per-click referral fees is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Respondent’s <ubspactual.com> domain name redirects Internet users to Respondent’s website featuring links to the third-party websites of financial services organizations in direct competition with Complainant. When an Internet user seeking Complainant’s genuine website in order to engage Complainant’s financial services is redirected to Respondent’s website, they may find it easier to follow a link to a third-party website of a competing financial service provider than to try to find Complainant’s genuine website. In this scenario, Complainant loses business because of Respondent’s confusingly similar domain name. The Panel finds that Respondent’s use of the <ubspactual.com> domain name to redirect Internet users to its website populated with links to Complainant’s competitors disrupts Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubspactual.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 31, 2006
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