DECISION

 

UBS AG v. Archille SOSSOU

Claim Number: FA1901001824298

 

PARTIES

Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA.  Respondent is Archille SOSSOU (“Respondent”), Benin.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ubs-capital-investment.com>, registered with Hostinger, UAB.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on January 9, 2019; the Forum received payment on January 9, 2019.

 

On January 10, 2019, Hostinger, UAB confirmed by e-mail to the Forum that the <ubs-capital-investment.com> domain name is registered with Hostinger, UAB and that Respondent is the current registrant of the name. Hostinger, UAB has verified that Respondent is bound by the Hostinger, UAB 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 15, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2019 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@ubs-capital-investment.com.  Also on January 15, 2019, 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 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

Complainant:

Complainant, UBS AG, offers a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. Complainant has rights in the UBS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. Respondent’s <ubs-capital-investment.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds two hyphens, the generic terms “capital” and “investment” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.

 

Respondent does not have rights or legitimate interests in the <ubs-capital-investment.com> domain name. Respondent is not permitted or licensed to use Complainant’s UBS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <ubs-capital-investment.com> domain name to mimic Complainant in order to offer products and services that compete directly with Complainant’s business. In addition, Respondent uses the disputed domain name to divert Internet users to Respondent’s website where Respondent hosts pay-per-click advertisements.

 

Respondent has registered and uses the <ubs-capital-investment.com> domain name in bad faith. Respondent is attempting to attract Internet users to its competing website for commercial gain. Respondent also uses the disputed domain name to host a phishing scheme. Finally, Respondent had actual knowledge or constructive notice of Complainant’s UBS mark prior to registering the <ubs-capital-investment.com> domain name.

 

FINDINGS

1.    Respondent’s <ubs-capital-investment.com> domain name is confusingly similar to Complainant’s UBS mark.

2.    Respondent does not have any rights or legitimate interests in the <ubs-capital-investment.com> domain name.

3.    Respondent registered or used the <ubs-capital-investment.com> domain name in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights to the UBS mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the UBS mark (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. Therefore, the Panel finds that Complainant has rights in the UBS mark per Policy ¶ 4(a)(i).

 

Complainant next claims that Respondent’s  <ubs-capital-investment.com> domain name is confusingly similar to Complainant’s UBS mark as Respondent merely adds two hyphens, a generic modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms, hyphens and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant argues Respondent merely adds two hyphens, the terms “capital”, “investment” and a “.com” gTLD to Complainant’s UBS mark. The Panel agrees with Complainant and find that the <ubs-capital-investment.com> does not contain changes that would sufficiently distinguish it from the UBS mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <ubs-capital-investment.com> domain name. Specifically Complainant argues Respondent is not licensed or authorized to use the UBS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record identifies Respondent as “Archille SOSSOU,” and there is not information that Respondent was authorized to use the UBS mark. The Panel therefore finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Additionally, Complainant argues Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant claims Respondent is using the <ubs-capital-investment.com> domain name to pass off as Complainant and offer competing goods at the disputed domain name’s resolving website. Attempting to pass off as a complainant in order to sell competing goods or services is not a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp.  v. Eagle,  FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the disputed domain name which resolves to a website that uses Complainant’s UBS mark, purports to provide banking and financial services, contains log-in screens on which Respondent asks users to provide personal information about themselves See Compl. Annex 4. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <ubs-capital-investment.com> domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Further, Complainant argues that the <ubs-capital-investment.com> domain name resolves to a website that is offering advertisements. Advertisements that divert traffic to third-party websites do not constitute a bona fide offering of goods or services, or a noncommercial or fair use per Policies ¶¶ 4(c)(i) or (iii). See TGI Friday’s of Minnesota, Inc. v. Tulip Company / Tulip Trading Company, FA 1691369 (Forum Oct. 10, 2016) (”Respondent uses the domain for a parking page displaying various links that consumers are likely to associate with Complainant, but that simply redirect to additional advertisements and links that divert traffic to third-party websites not affiliated with Complainant… The Panel here finds that Respondent is not using the domain name in connection with a bona fide offering of goods or services.”). Complainant provides a screenshot of the disputed domain name’s resolving website which appears to contain links to various links Internet users can use to apply for credit, insurance or loans. See Compl. Annex 4. The Panel therefore determines that Respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and is using the <ubs-capital-investment.com> domain name in bad faith. Specifically, Respondent attempts to offer goods and services that compete with Complainant’s business. Offering competing products at the disputed domain name may be evidence of bad faith per Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). As previously mentioned, Complainant provides screenshots of the disputed domain name which resolves to a website that uses Complainant’s UBS mark, purports to provide banking and financial services, contains log-in screens on which Respondent asks users to provide personal information about themselves See Compl. Annex 4. The Panel agrees and finds that Respondent registered and uses the <ubs-capital-investment.com> domain name in bad faith under Policy ¶ 4(b)(iv).

 

Next, Complainant contends Respondent uses the disputed domain name to host a phishing scheme. Use of a disputed domain name in connection with a phishing scheme does not represent good faith per Policy ¶ 4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). Complainant contends Respondent hosts a website that is visually identical to that hosted by Complainant in an attempt to gain the personal login information of Internet users that mistake Respondent’s resolving website for Complainant’s own. See Compl. Annex 4. The Panel agrees with Complainant and finds Respondent registered or used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).

 

Finally, Complainant argues Respondent must have had actual and constructive knowledge of Complainant’s UBS mark. The Panel is reminded that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.). Complainant claims that due to Respondent’s use of Complainant’s famous UBS mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s UBS mark. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the UBS mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ubs-capital-investment.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  February 14, 2019