UBS AG v. Siraj Patel
Claim Number: FA1612001708168
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Siraj Patel (“Respondent”), Arab Emirates.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsbonds.com>, registered with NameSilo, LLC.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2016; the Forum received payment on December 19, 2016.
On December 19, 2016, NameSilo, LLC confirmed by e-mail to the Forum that the <ubsbonds.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 December 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 10, 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@ubsbonds.com. Also on December 21, 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 January 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, UBS AG, is one of the largest financial services firms in the world employing more than 60,000 employees in over 50 countries. Complainant’s rights in the UBS mark stem from registration of the mark with the United States Patents and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s domain name <ubsbonds.com> is confusingly similar to the UBS mark as the domain name includes the entire UBS mark and merely adds the generic word “bonds,” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known or identified by the domain name, been a licensee or partner of Complainant, or been authorized to use Complainant’s UBS marks. Respondent’s use of the domain name, to resolve to a website containing Complainant’s marks and referencing banking and financial services, is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s bad faith is evident from attempting to falsely suggest a partnership or affiliation between Complainant and Respondent, from which Respondent presumably financially gains. Based on the fame and notoriety of Complainant’s marks it should be found that Respondent has actual or constructive notice of Complainant’s rights in the UBS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <ubsbonds.com>, was registered on May 17, 2009.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in or to the disputed domain name; and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark. Complainant has adequately plead its rights and interests in and to the trademark UBS. Respondent arrives at the disputed domain name by taking the trademark in its entirety, adding the generic word “bonds,” and the g TLD “.com.” This is insufficient to distinguish the disputed domain name from the registered trademark of Complainant.
As such, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has it been licensed or authorized to use the Complainant’s trademark. WHOIS information associated with the disputed domain name identifies Respondent as, “Siraj Patel.” As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name resolves to a website that includes the UBS mark and logo, and advertises banking or financial services. See Compl., at Attached Annex 4. Panels have held that using another’s mark in a disputed domain name to sell goods or services related to the mark is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (FORUM Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). As such, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. At Respondent’s disputed domain name, it attempts to pass itself off as Complainant by falsely suggest a partnership or affiliation between Complainant and Respondent, from which Respondent presumably financially gains. Again, Respondent’s domain name resolves to a website featuring the UBS mark and logo, and advertises services and a phone number related to banking and financial services. See Compl., at Attached Annex 4. Panels found bad faith where a respondent used another’s mark to financially gain through confusion among Internet users. See ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (FORUM Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore, the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). The Panel finds that Respondent’s use of the domain name demonstrates bad faith under Policy ¶ 4(b)(iv).
Finally, the Panel finds that, due to the fame of Complainant’s mark and the totality of the circumstances, it is very unlikely that Respondent registered the disputed domain name without prior knowledge of Complainant’s rights and interests in and to the trademark UBS. As such, the Panel finds that Respondent registered the disputed domain name with prior knowledge of Complainant’s rights and interests in and to the trademark UBS.
As such, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <ubsbonds.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: January 18, 2017
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