UBS AG v. Domains 4Sale / Domains 4Sale Ghana
Claim Number: FA1611001701732
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Domains 4Sale / Domains 4Sale Ghana (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsbs.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 7, 2016; the Forum received payment on November 8, 2016.
On November 08, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <ubsbs.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 December 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 28, 2016 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@ubsbs.com. Also on November 8, 2016, 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 December 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in UBS and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a Swiss financial services provider which does business by reference to the registered trademark UBS;
2. the disputed domain name was registered on October 31, 2016 and resolves to a website promoting banking services under the name, “UBSBS: Swiss private bank”; and
3. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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(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).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Complainant appears to rely for its trademark rights principally upon evidence of United States Patent and Trademark Office (“USPTO”) Reg. No.1,573,828, registered December 26, 1989, for the plain letter mark, UBS.
Panel observes that the evidence of that registration does not show Complainant as the owner. There is no evidence of an assignment or change of name. Nonetheless, the likely connection between the named proprietor and Complainant is plain. Further, the Complaint references other national registrations of the trademark which stand in the name of Complainant. Panel is satisfied that Complainant has trademark rights.
For the purposes of comparison of the disputed domain name with the trademark, panelists agree that the non-distinctive gTLD, “.com”, can generally be disregarded, as the Panel finds it can in this case (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Stripped of the gTLD, Complainant’s argument is that the domain name is confusingly similar to the trademark because it:
“contains all of [the trademark] and the dominant portion of the Domain Name is identical to [the trademark]. The fact the Domain Name also contains “bs” does not differentiate the Domain Name from [the trademark], particularly where the complainant’s mark is well known – as in this case.”
Panel is uneasy with that submission. The trademark DIOR is fully contained by the dictionary word “diorama”, but the terms would not be regarded as confusingly similar. Nor would the trademark DIOR be regarded as the “dominant portion” of the dictionary word in spite of the fact that the letters “dior” are the first and quantitatively greater part of that word.
Here, the compared terms have no inherent meaning and so no distinctions arise because of meaning. The comparison is simply UBS with UBSBS. On the face of it, the compared terms are quite different.
Complainant makes the unsupported assertion that the additional letters “BS” fail to differentiate one term from the other. Panel is not so easily persuaded of that bald claim. There is no suggestion (or evidence) that the letters “BS” are to be discounted because they are somehow descriptive or generic. It may be that the letters might refer, for example, to “banking services” (of which there is no evidence) but they could equally refer to “business school” or, as seems to be the case, have no connotation at all.
When compared simply, the terms UBS and UBSBS do not of themselves suggest an obvious connection. Whether or not they might in fact be confused depends entirely on the strength of the reputation of Complainant’s trademark. In turn, whether the terms are confusingly similar for the purposes of paragraph 4(a)(i) of the Policy, hinges on a long debated question as to whether the reputation of a trademark has any place in the assessment of confusing similarity.
To the extent that Complainant does rely on the (undisputed) reputation in the trademark, it cites UDRP cases such as Arthur Guinness Son & Co. (Dublin) Limited v. Tim Healy/BOSTH, WIPO Case No. D2001-0026 where the panelist found <guinnessirishstout.com> and other domain names confusingly similar to complainant’s GUINNESS mark.
Those citations are of no assistance to this Panel since in these proceedings the disputed domain name is not, to coin parallel examples, of the form, <ubsfinance.com> or <ubsglobal.com>. Contrary to the cases cited by Complainant, addition of the apparently arbitrary letters “BS” reduces the likelihood of confusion.
Put simply, the argument put in favour of a finding of confusing similarity is less than compelling. Nevertheless, on balance, Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark. Respondent might have argued for a different outcome but, in the absence of a Response, Panel need not become Respondent’s advocate. Nor is this uncontested case the place to reconsider the competing arguments regarding the influence of reputation under this aspect of the Policy. Finally, whilst it is well settled that website content associated with a disputed domain name is irrelevant to the paragraph 4(a)(i) analysis, for reasons which follow Panel finds that Respondent targeted Complainant’s trademark. It can be said that if a respondent set out to choose a confusingly similar domain name then it should be assumed that it succeeded in its ambition.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
The publicly available WHOIS information provides no prima facie evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. Complainant provides evidence that the domain name resolves to a website offering private banking services from a business named as “UBSBS: Swiss private bank.” Panel has already found the disputed domain name to be confusingly similar to the trademark and Panel accepts Complainant’s statements that it has not authorized Respondent to use the trademark or any similar trademark. Complainant asserts that the resolving website exists to phish for personal and financial information from internet users.
Panel finds that the use of the domain name is not in respect of a bona fide offering of goods or services or a legitimate noncommercial or fair use (see Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name. In the absence of a Response, that case is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark. Complainant submits evidence of the web homepage corresponding with the disputed domain name. It is clear that the website exists for commercial gain. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it is more likely than not that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark (see, for example,Bank of America, National Association v. Marcos Alexis Nelson, FA1505001621654 (Forum July 2, 2015) (findings that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where it used the disputed domain name to promote its business in real estate and financial services, which were services that competed with the services the complainant offered).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsbs.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: December 14, 2016
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