UBS AG v. Aktien Geldanlage
Claim Number: FA1905001842201
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington DC, USA. Respondent is Aktien Geldanlage (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-finance.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2019; the Forum received payment on May 8, 2019.
On May 10, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubs-finance.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 30, 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-finance.com. Also on May 10, 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 June 3, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 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 has rights in the UBS trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubs-finance.com> domain name is confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety and merely adds the generic term “finance” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ubs-finance.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to pass off as Complainant and divert users to a website offering competing services.
Respondent registered and uses the <ubs-finance.com> domain name in bad faith. Respondent uses the domain name to trade on Complainant’s goodwill by falsely suggesting a partnership, connection, and affiliation with Complainant and offering competing services. Further, Respondent likely uses the domain name in connection with a fraudulent scheme. Additionally, Respondent had actual and/or constructive notice of Complainant’s rights in the UBS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following trademark registrations:
U.S. Trademark Registration No. 3,623,958 UBS (fig.), registered May 9, 2009 for services in class 36;
U.S. Trademark Registration No. 2,918,463 UBS INVESTMENT BANK (word), registered January 18, 2005 for services in classes 35 and 36;
U.S. Trademark Registration No. 2,918,462 UBS WEALTH MANAGEMENT (word), registered January 18, 2005 for services in classes 35 and 36;
U.S. Trademark Registration No. 3,018,190 UBS (fig.), registered November 22, 2005 for services in classes 35, 36, 38, 39 and 42;
U.S. Trademark Registration No. 2,851,071 UBS (fig.), registered June 8, 2004 for goods and services in classes 9, 14, 35, 36, 38 and 42;
International Registration No. 700385 UBS (fig.), registered July 23, 1998 for goods and services in classes 9, 14, 16, 35, 36, 38, 41 and 42, designating more than 50 countries and regions around the world;
International Registration No. 650692 UBS (word), registered September 24, 1995 for goods and services in classes 14, 16, 35, 36, 41 and 42, designating 37 countries and regions around the world; and
International Registration No. 700406 UBS CAPITAL (word), registered August 13, 1998 for services in class 36, designating 11 countries;
The Complainant has also referred to some other trademark registrations. The Panel notes that these are registered in the name of “UBS Group AG” or “Schweizerische Bankgesellschaft”, with the same address as of the Complainant, UBS AG. Although this fact may well be an indication of relationship between these two company names / companies and the Complainant, in the absence of further clarification by the Complainant, the Panel will not take these trademark registrations into consideration.
Respondent registered the <ubs-finance.com> domain name on April 24, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the UBS trademark through its registration of the trademark with the USPTO (e.g. Reg. No. 2,851,071, registered June 8, 2004). Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the UBS trademark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ubs-finance.com> domain name is confusingly similar to Complainant’s trademark as it incorporates the trademark in its entirety and merely adds the generic term “finance” along with the “.com” gTLD. The Panel also notes that the domain name adds a hyphen and finds that similar changes in a registered trademark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a trademark under Policy ¶ 4(a)(i).); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered trademark). In fact, the addition of the generic word “finance” is directly connected to the Complainant’s services and trademark, and thereby rather further indicates the relationship with the UBS trademark. The Panel therefore finds that the <ubs-finance.com> domain name is confusingly similar to the UBS trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 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 contends that Respondent has no rights or legitimate interests in the <ubs-finance.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Aktien Geldanlage” as the registrant, and nothing in the record indicates that Complainant authorized Respondent to use the trademark for any purpose. Accordingly, the Panel agrees that Respondent is not commonly known by the <ubs-finance.com> domain name under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent uses the domain name to pass off as Complainant and divert users to a website offering competing services. Using a confusingly similar domain name to both pass off as a complainant and to offer competing services can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). Complainant provides a screenshot of the resolving webpage, which displays the UBS mark and uses the “UBS Investment Group” name while purporting to offer various financial services. Accordingly, the Panel finds that Respondent attempts to pass off as Complainant to offer competing services, thereby failing to use the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant claims that Respondent registered and uses the <ubs-finance.com> domain name in bad faith to trade on Complainant’s goodwill by falsely suggesting a partnership, connection, and affiliation with Complainant and offering competing services. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s trademark and offer competing services can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”); see also 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.”). Once again, Complainant provides a screenshot of the resolving webpage, which displays the UBS trademark and uses the “UBS Investment Group” name while purporting to offer various financial services. Accordingly, the Panel agrees with Complainant that Respondent attempted to commercially benefit off Complainant’s trademark in bad faith under Policy ¶ 4(b)(iv).
Next, Complainant claims that Respondent likely uses the domain name in connection with a fraudulent scheme. Using a confusingly similar domain name for fraudulent purposes can provide evidence of bad faith registration and use within the meaning of 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, though not providing any documentary evidence to support this assertion, however claims that “[a] German person has already contacted Complainant about fraudulent e-mails emanating from the Domain Name” and that “Complainant is pursuing this fraudulent activity with local law enforcement.” As said, there is no clear evidence to support this claim, but the Panel accepts that there may at least be indications supporting a conclusion of Respondent’s bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant’s UBS trademark at the time of registering the infringing domain name.
The Panel disregards Complainant’s arguments of bad faith based on constructive notice, as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the trademark prior to registering the disputed domain name, and actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). Complainant contends that Respondent had knowledge of Complainant’s rights given Complainant’s numerous federal trademark registrations along with the fame associated with the trademark.
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-finance.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 7, 2019
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