UBS AG v. Ray Don
Claim Number: FA1910001866856
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Ray Don (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubslondon-online.com>, registered with OwnRegistrar, Inc..
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 15, 2019; the Forum received payment on October 15, 2019.
On October 17, 2019, OwnRegistrar, Inc. confirmed by e-mail to the Forum that the <ubslondon-online.com> domain name is registered with OwnRegistrar, Inc. and that Respondent is the current registrant of the name. OwnRegistrar, Inc. has verified that Respondent is bound by the OwnRegistrar, Inc. 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 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 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@ubslondon-online.com. Also on October 17, 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 November 8, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant, UBS AG, is one of the largest financial services firms in the world. 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).
2. Respondent’s <ubslondon-online.com>[i] is confusingly similar to Complainant’s mark as Respondent merely adds the geographic term “london,” the generic term “online” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
3. Respondent does not have rights or legitimate interests in the <ubslondon-online.com> domain name. Respondent is not permitted or licensed to use Complainant’s UBS mark and is not commonly known by the domain name.
4. Respondent is not using the 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 <ubslondon-online.com> domain name to pass off as Complainant in order to phish for users’ personal information.
5. Respondent registered and uses the <ubslondon-online.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of a phishing scheme.
6. Finally, Respondent had actual knowledge or constructive notice of Complainant’s UBS mark prior to registering the <ubslondon-online.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the UBS mark. Respondent’s domain name is confusingly similar to Complainant’s UBS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <ubslondon-online.com> domain name and that Respondent registered and uses the domain name in bad faith.
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 has 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). Therefore, Complainant has rights in the UBS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <ubslondon-online.com> domain name is confusingly similar to Complainant’s UBS mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of geographic terms, generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a domain name and a 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 Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶4(a)(i) analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent merely adds the terms “london,” “online,” and a “.com” gTLD to Complainant’s UBS mark. The Panel agrees with Complainant and holds that the <ubslondon-online.com> does not contain changes that would sufficiently distinguish it from the UBS mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <ubslondon-online.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <ubslondon-online.com> domain name. Specifically, Complainant argues Respondent is not licensed or authorized to use the UBS mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a 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, the lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by a 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 “Ray Don,” and there is no other evidence to suggest Respondent is authorized to use the UBS mark. The Panel holds Respondent is not commonly known by the <ubslondon-online.com> domain name per Policy ¶ 4(c)(ii).
Moreover, Complainant argues that Respondent is not using the <ubslondon-online.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Use of a domain name incorporating the mark of another to pass off as that party in furtherance of phishing is not indicative of rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”); see also iFinex Inc. v. Yuri Hefetz / Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s website in order to cause existing or potential customers to falsely believe they are setting up a new account with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Here, Complainant has provided evidence that Respondent uses Complainant’s UBS mark, logo and color scheme on the <ubslondon-online.com> domain name’s resolving webpage to impersonate Complainant in order to defraud users and steal their personal information and banking details. Thus, the Panel agrees that Respondent’s use of the <ubslondon-online.com> domain name indicates it lacks rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <ubslondon-online.com> domain name in bad faith. Complainant alleges Respondent attempts to disrupt Complainant’s business. Specifically, Complainant argues Respondent is attempting to impersonate Complainant as part of a phishing scheme, presumably for commercial gain. Use of a domain name incorporating the mark of another to impersonate that party in furtherance of a fraudulent scheme constitutes bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). Complainant has provided evidence that Respondent uses Complainant’s UBS mark, logo and color scheme on the <ubslondon-online.com> domain name’s resolving webpage to impersonate Complainant in order to defraud users and steal their personal information and banking details. Therefore, the Panel holds that Respondent registered and uses the <ubslondon-online.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues Respondent had actual and knowledge of Complainant’s UBS mark. 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.). The Panel agrees 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, Respondent had actual knowledge of Complainant’s rights in the UBS mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubslondon-online.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 14, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page