UBS AG v. Deepak Kadadi
Claim Number: FA0703000938011
Complainant is UBS AG (“Complainant”), represented by Patrick
J. Jennings, of Pillsbury Winthrop Shaw Pittman, LLP,
2300 N Street, N.W.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ubsbusinessconsultants.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2007; the National Arbitration Forum received a hard copy of the Complaint on March 19, 2007.
On March 20, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <ubsbusinessconsultants.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 March 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 2007 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@ubsbusinessconsultants.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the UBS trademark (Reg. No. 1,573,828, issued December 26, 1989).
Complainant has used the UBS mark in connection with its provision of banking, investment banking, securities brokerage and other financial services, since 1962.
Moreover, since 1998, Complainant has used the UBS mark for the sale of services for businesses, including tax consultation, administration of business payroll and employee benefits, accounting services, business audits, and business consultation.
Complainant has registered the <ubs.com> domain name, which it uses in connection with its sale of financial services, including business consultations.
Respondent registered the disputed domain name <ubsbusinessconsultants.com> on November 6, 2006.
Respondent is using the disputed domain name to redirect Internet users to Respondent’s website, which resolves to a website owned by United Business Solutions, Inc. d/b/a UBS Group Inc. (“UBS Group”), offering services in direct competition with Complainant’s sale of financial services under the UBS mark.
Complainant has previously filed successful actions with the courts against UBS Group for infringement of Complainant’s UBS mark.
Respondent’s <ubsbusinessconsultants.com> domain name is confusingly similar to Complainant’s UBS mark.
Respondent does not have any rights or legitimate interests in the domain name <ubsbusinessconsultants.com>.
Respondent registered and used the <ubsbusinessconsultants.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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. See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Nov. 11, 2003) (“Complainant's federal trademark registrations establish
Complainant's rights in the BLIZZARD mark.”); 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.”).
Respondent’s <ubsbusinessconsultants.com> domain name is confusingly similar to Complainant’s UBS mark because it uses the mark in its entirety and merely adds the descriptive words “business” and “consultants” to the mark. The words added to Complainant’s mark describe Complainant’s business, which includes the sale of business consulting services. The mere addition of these descriptive words does not distinguish the disputed domain name sufficiently from Complainant’s mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see also Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that domain names that added the descriptive words "fashion" or "cosmetics" after a trademark were confusingly similar to that trademark).
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent has no rights to or
legitimate interests in the <ubsbusinessconsultants.com>
domain name. Complainant’s submission
establishes a prima facie case, which shifts to Respondent the burden to
prove that it has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug.
21, 2000) (holding that once a complainant asserts that a respondent has no
rights or legitimate interests with respect to a domain, the burden shifts to
that respondent to provide “concrete evidence that it has rights to or
legitimate interests in the domain name at issue”); see also G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (Because
Complainant’s Submission constitutes a prima
facie case under the Policy, the burden effectively shifts to Respondent.
Respondent’s failure to respond means
that Respondent has not presented any circumstances that would promote its
rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).).
Panels have therefore found that a failure to respond to a complaint not only fails to establish Respondent’s burden, but may also be considered evidence that Respondent lacks rights or legitimate interests in the domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002). We may thus presume that Respondent has no rights or legitimate interests here because it has failed to respond to the Complaint. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond to a complaint can be construed as an admission that it has no legitimate interest in a domain name); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond). However, we will nonetheless consider all available evidence to determine whether there is any basis for concluding that Respondent has rights or legitimate interests in the disputed domain under Policy ¶ 4(a)(ii).
In this regard, we first note that Complainant contends, and Respondent does not deny, that Respondent is using the <ubsbusinessconsultants.com> domain name to redirect Internet users to Respondent’s website, which resolves to a website offering services in competition with the business of Complainant. Respondent’s use of the domain name in this way is not a use in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that a respondent’s use of a complainant’s mark in domain names makes it difficult to infer a legitimate use); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services).
Further, Respondent offers no evidence, and none is present in the record before us, to indicate that Respondent is commonly known by the <ubsbusinessconsultants.com> domain name. Indeed, Respondent’s WHOIS information identifies Respondent as “Deepak Kadadi.” Therefore, Respondent has failed to establish rights or legitimate interests in the <ubsbusinessconsultants.com> domain name under Policy ¶ 4(c)(ii). See Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that a respondent was not commonly known by the domain name <greatsouthernwood.com> where it linked the same domain to <bestoftheweb.com>); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent does not deny Complainant’s allegation that Respondent
has registered and is using the <ubsbusinessconsultants.com>
domain name to redirect Internet users to Respondent’s website, which resolves
to a website selling services in direct competition with the business of Complainant. Because Respondent’s domain name is
confusingly similar to Complainant’s UBS mark, Internet users may become confused
as to Complainant’s possible affiliation with the website. Presumably, Respondent is profiting from this
confusion. That being so, Respondent’s
use of the disputed domain name to redirect Internet users to a website
offering services in competition with Complainant’s services constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where a
respondent used a domain name, for commercial gain, to intentionally attract
users to a direct competitor of a complainant); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where a domain name resolved to a website
that offered products similar to those sold under a complainant’s famous mark).
In addition, it appears that Respondent registered the <ubsbusinessconsultants.com> domain name
with at least constructive knowledge of Complainant’s rights in the UBS trademark
by virtue of Complainant’s prior registration of that mark with the United
States Patent and Trademark Office.
Registration of a confusingly similar domain name despite such
constructive knowledge is, without more, evidence of bad faith registration and
use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi
Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also
For these reasons, the
Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <ubsbusinessconsultants.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 1, 2007
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum