UBS AG v. nadr bigdli
Claim Number: FA1710001753309
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is nadr bigdli (“Respondent”), Swaziland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsbankagubs.com>, registered with CSL Computer Service Langenbach GmbH d/b/a joker.com.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 11, 2017; the Forum received payment on October 11, 2017.
On October 12, 2017, CSL Computer Service Langenbach GmbH d/b/a joker.com confirmed by e-mail to the Forum that the <ubsbankagubs.com> domain name is registered with CSL Computer Service Langenbach GmbH d/b/a joker.com and that Respondent is the current registrant of the name. CSL Computer Service Langenbach GmbH d/b/a joker.com has verified that Respondent is bound by the CSL Computer Service Langenbach GmbH d/b/a joker.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 October 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 2, 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@ubsbankagubs.com. Also on October 13, 2017, 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 November 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is one of the largest financial services firms in the world, present in all major financial centers worldwide, with offices in more than 50 countries and approximately 60,000 employees. Complainant uses its UBS mark to promote its products and services and has rights in the mark through registration in the United States in 1989. The mark is also registered elsewhere around the world.
According to Complainant, the disputed domain name is confusingly similar to its mark because it fully incorporates the UBS mark twice, sandwiching the generic word “bank,” the generic entity designator “ag” between the marks, and appends the generic top-level domain (“gTLD”) “.com.”
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its UBS mark in any fashion, and Respondent is not commonly known by the disputed domain name. Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users seeking Complainant’s <ubs.com> site to Respondent’s website, which features Complainant’s UBS mark and numerous links to and information about financial and banking services identical to those provided by Complainant.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to attract Internet traffic and commercially benefit from the goodwill of the UBS mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant on its resolving website and by featuring hyperlinks related to Complainant’s business. Due to Complainant’s trademark registration, Respondent had constructive notice of Complainant’s rights in the UBS mark. Additionally, Respondent had actual knowledge of Complainant’s rights in light of the fame of the UBS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark UBS and uses it to market banking and financial services around the world. The mark is well known.
Complainant’s rights in its mark date back to at least 1989.
The disputed domain name was registered in 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a website that displays Complainant’s mark and offers information about financial and banking services identical to those provided by Complainant, and it contains links to competing services.
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 disputed domain name is confusingly similar to Complainant’s mark because it fully incorporates the UBS mark twice, sandwiching the generic word “bank,” the generic entity designator “ag” between the marks, and appends the gTLD “.com.” The addition of generic terms and a gTLD do not negate confusing similarity between a mark and a disputed domain name. See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark, in the sense of the Policy.
Complainant has not licensed or otherwise authorized Respondent to use its UBS mark in any fashion. WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name, in particular when there is no response. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the WHOIS information of record lists “nadr bidli” as the registrant. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to divert Internet users seeking Complainant’s <ubs.com> site to Respondent’s website which features Complainant’s UBS mark and numerous links to and information about financial and banking services identical to those provided by Complainant. The resolving website contains information directly related to Complainant’s financial service, it features competing hyperlinks, and it confuses Internet users into believing the website is affiliated with Complainant’s business. In particular, the site’s content includes information about “UBS and Society The long-term view,” “Investor Relations,” and “Our firm Global financial advice and expertise that matters.” Further, the site displays hyperlinks for competing services such as “Wealth Management,” “Retail Banking for private clients,” and “Corporations and institutions.”
Use of a confusingly similar domain name to divert Internet users to a respondent’s website that features complainant’s mark and competing hyperlinks is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use, and it finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the UBS mark by passing itself off as Complainant or Complainant’s affiliate and by featuring competing hyperlinks. Use of a domain name to create confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant and featuring competing hyperlinks related to a complainant’s business is evidence of bad faith registration and use. See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also TM Acquisition Corp. v. Warren, FA 204147 (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 misled 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.”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith, in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsbankagubs.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: November 7, 2017
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