UBS AG v. Andrew Sergeev
Claim Number: FA2002001882625
Complainant is UBS AG (ďComplainantĒ), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Andrew Sergeev (ďRespondentĒ), Russian Federation.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-capitals.com>, registered with NameCheap, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 10, 2020; the Forum received payment on February 10, 2020.
On February 10, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <ubs-capitals.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On February 11, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to email@example.com.† Also on February 11, 2020, 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 Respondentís 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 March 5, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant contends as follows:
Complainant, UBS AG, provides 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 (ďUSPTOĒ).
Respondentís <ubs-capitals.com> domain name is confusingly similar to Complainantís mark as Respondent merely adds the descriptive term ďcapitalsĒ and the ď.comĒ generic top-level domain (ďgTLDĒ) to Complainantís mark.
Respondent does not have rights or legitimate interests in the <ubs-capitals.com> domain name. Respondent is not licensed or authorized to use Complainantís UBS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the <ubs-capitals.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to impersonate Complainant.
Respondent registered or uses the <ubs-capitals.com> domain name in bad faith. Respondent attempts to disrupt Complainantís business by impersonating Complainant as part of a phishing scheme. Furthermore, Respondent had actual knowledge of Complainantís UBS mark when it registered the <ubs-capitals.com> domain name.
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in UBS.
Respondent is not affiliated with Complainant and is not authorized to use the UBS mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in UBS.
Respondent uses the at-issue domain name to impersonate Complainant so that it may inappropriately exploit Complainantís trademark and goodwill.
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) (ďBecause Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the ComplaintĒ).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainantís registration of the USB mark with the USPTO sufficiently demonstrates Complainantís rights in a mark under Policy ∂ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainantís USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ∂ 4(a)(i)).
Furthermore, Respondentís <ubs-capitals.com> domain name incorporates Complainantís UBS trademark, adds a hyphen and the generic term ďcapitals,Ē then follows all with the generic top-level domain ď.comĒ. Under the Policy the resulting differences between Complainantís trademark and Respondentís domain name do nothing to distinguish the at-issue domain name from Complainantís trademark. Therefore, the Panel concludes that Respondentís <ubs-capitals.com> domain name is confusingly similar to Complainantís UBS trademark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainantís 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 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).
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. See Hanna-Barbera Prods., Inc. v. Entmít Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainantís prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainantís trademark in any capacity and, as discussed below, there are no Policy ∂ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain nameís registrant as ďAndrew SergeevĒ and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <ubs-capitals.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <ubs-capitals.com> domain name for the purposes of Policy ∂ 4(c)(ii). 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).
Additionally, Respondent uses its <ubs-capitals.com> domain name to impersonate Complainant in furtherance of what appears to be a phishing scheme. †The website addressed by the at-issue domain name displays Complainantís UBS trademark, adapts its color scheme, purports to offer competing financial related services and contains a mechanism whereby website visitors may sign-up by giving up personal and confidential private information to Respondent. Respondentís use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ∂ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ∂ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (ĒPassing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.Ē).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondentís lack of rights and lack of interests in respect of the at-issue domain name under Policy ∂ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ∂ 4(a)(iii).
First, as mentioned above regarding rights and interests, Respondent uses the at-issue confusingly similar domain name to pass itself off as Complainant. Respondentís use of its <ubs-capitals.com> domain name to steal Complainantís identity and exploit a fake affiliation with Complainant disrupts Complainantís business and indicates bad faith registration and use under Policy ∂ 4(b)(iii) and/or (iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (ďRespondent is using the domain name at issue to resolve to a website at which Complainantís trademarks and logos are prominently displayed.† Respondent has done this with full knowledge of Complainantís business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.Ē); 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 supports a finding of bad faith).
Additionally, Respondent had actual knowledge of Complainantís rights in the UBS mark when it registered <ubs-capitals.com> as a domain name. Respondentís actual knowledge is evident from Respondentís use of the <ubs-capitals.com> domain name to impersonate complainant, as wells as from the notoriety of Complainantís USB trademark. Respondentís registration and use of a confusingly similar domain name with knowledge of Complainantís rights in such domain name shows Respondentís bad faith pursuant to Policy ∂4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ∂ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
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-capitals.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated:† March 5, 2020
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