UBS AG v. DARREN WOOD
Claim Number: FA1801001766468
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is DARREN WOOD (“Respondent”), Dominican Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubspc.com>, registered with Enom, Llc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2018; the Forum received payment on January 11, 2018.
On January 11, 2018, Enom, Llc confirmed by e-mail to the Forum that the <ubspc.com> domain name is registered with Enom, Llc and that Respondent is the current registrant of the name. Enom, Llc has verified that Respondent is bound by the Enom, 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 January 12, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 1, 2018 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@ubspc.com. Also on January 12, 2018, 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 February 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 service firms in the world, is present in more than 50 countries, and has approximately 60,000 employees worldwide. Complainant has rights in the UBS mark through its registration of the mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubspc.com> domain name is confusingly similar to Complainant’s UBS mark because Respondent adds the generic letters “pc” and a “.com” generic top level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interest in the <ubspc.com> domain name because Respondent has no connection with Complainant and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant to divert users from Complainant to Respondent’s website.
Respondent’s use of the <ubspc.com> domain name to divert users seeking Complainant and attract them to the disputed domain name shows bad faith registration and use. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the UBS mark at the time Respondent registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, Respondent sent the Forum an email stating that he has taken down the site and cancelled the hosting. When he received the Forum’s initial email, he realized that the site was probably being used for a scam. He does websites and publicity for clients and does not pay much attention to the content.
Complainant, UBS AG, is one of the largest financial service firms in the world. Complainant has rights in the UBS mark through its registration of the mark with multiple trademark agencies, including the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubspc.com> domain name is confusingly similar to Complainant’s UBS mark.
Respondent, DARREN WOOD, registered the <ubspc.com> domain name on January 9, 2018.
Respondent has no rights or legitimate interest in the <ubspc.com> domain name. Respondent’s domain name was used to pass off as Complainant to divert users from Complainant to the resolving website.
The use of the <ubspc.com> domain name shows bad faith registration and use.
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.”).
Complainant has rights in the UBS mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <ubspc.com> domain name is confusingly similar to Complainant’s UBS mark because Respondent merely added a generic term and gTLD to the mark.
Respondent has no rights or legitimate interests in the <ubspc.com> domain name. Respondent has no connection to Complainant. Respondent is not commonly known by the disputed domain name. In the event a respondent fails to submit a response to a UDRP proceeding, WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <ubspc.com> domain name identifies the Registrant as “Darren Wood.” Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <ubspc.com> domain name. Respondent’s domain name is used to pass off as Complainant in order to divert Internet users to the resolving website for commercial gain. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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).”). The resolving website for the disputed domain name features Complainant’s UBS mark, three-key logo, and color scheme and information related to banking and financial services. The diversion of users to the <ubspc.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the name per Policy ¶¶ 4(c)(i) or (iii).
The use of Respondent’s domain name in an attempt to create a false affiliation with Complainant to divert users to the <ubspc.com> domain name shows bad faith registration and use. Passing off as a complainant to divert users for commercial gain may shows bad faith registration and use per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Furthermore, Respondent had actual knowledge of Complainant’s rights in the UBS mark at the time Respondent registered and subsequently used the <ubspc.com> domain name, which shows bad faith registration and use per Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubspc.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 17, 2018
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