UBS AG v. Pavel Naprimerov
Claim Number: FA1907001852430
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington DC, USA. Respondent is Pavel Naprimerov (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-sw.site>, registered with Registrar of Domain Names REG.RU LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. The case was assigned to the Arbitrator August 20, 2019, and the Decision is due September 3, 2019. The Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically February 2, 2015; the Forum received payment February 2, 2015. The Complaint was received in both Russian and English.
The Panel notes that the Registration Agreement is written in Russian, thereby making the language of the proceedings Russian. The Panel, however,
pursuant to Rule 11(a), determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (FORUM Aug. 30, 2010) (“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”)
On July 18, 2019, Registrar of Domain Names REG.RU LLC confirmed by e-mail to the Forum that the <ubs-sw.site> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 29, 2019, the Forum served the Russian language Complaint and all Annexes, including a Russian language Written Notice of the Complaint, setting a deadline of August 19, 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-sw.site. Also, on July 29, 2019, the Russian language 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 August 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 established rights and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights to or legitimate interests in the mark or in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used a domain name containing Complainant’s protected mark that is confusingly similar to that mark and Respondent did so 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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”).
Parties’ Contentions in this Proceeding:
a. Complainant ‘s Allegations:
Complainant 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 its registrations of the mark around the world, including 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-sw.site> domain name is confusingly similar to Complainant’s UBS mark because it wholly incorporates Complainant’s UBS mark, and merely adds a hyphen, the letters “sw” and the “.site” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <ubs-sw.site> domain name because Respondent is not authorized or licensed to use Complainant’s UBS mark and no evidence suggests that the Respondent listed in the WHOIS record is commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to divert users seeking Complainant to Respondent’s website.
Respondent registered and uses the <ubs-sw.site> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name, which resolves to a website that copies Complainant’s UBS mark, color scheme, and engages in phishing. See Compl. Annex 4. Respondent had actual knowledge of Complainant’s UBS mark prior to registering the disputed domain name.
b. Respondent’s Response:
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name June 18, 2019.
Identical or Confusingly Similar:
Complainant asserts rights in the UBS mark based upon registration with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. Registration of a mark with the USPTO is sufficient to establish rights in the mark pursuant to 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).”). The Panel finds that Complainant has rights in the UBS mark pursuant to Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <ubs-sw.site> domain name is identical or confusingly similar to Complainant’s UBS mark because it wholly incorporates Complainant’s UBS mark, the letters “sw” and the “.site” gTLD. Though Complainant does not argue it, the Panel notes that the disputed domain name also adds a hyphen. The addition of generic or descriptive terms, a hyphen, and a gTLD to a complainant’s mark are insufficient to withstand a test of confusing similarity pursuant to 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 insufficient to distinguish a disputed domain name from a mark 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 mark). Therefore, the Panel agrees with Complainant and finds that Respondent’s disputed domain name is confusingly similar to the Complainant’s UBS mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name containing Complainant’s protected mark that is confusingly similar to Complainant’s mark; Complainant satisfied the elements of ICANN 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 of proof shifts to Respondent to show it does have such 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-sw.site> domain name as Respondent is not authorized by Complainant to use the UBS mark and there is no evidence to suggest Respondent is commonly known by the disputed domain name. WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark supports a finding that the respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug, 3, 2017) (”Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s 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.”). Though Complainant does not provide it, the relevant WHOIS information for Respondent indicates that Respondent is known as “Pavel Naprimerov” and no information in the record indicates that Respondent was authorized to use the Complainant’s UBS mark. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).
Furthermore, Complainant argues, Respondent fails to use the <ubs-sw.site> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant contends that Respondent uses the disputed domain name to divert users away from Complainant to Respondent’s website. Use of a domain name to redirect users, presumably for commercial gain, may not be indicative of any rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides a screenshot of the disputed domain name’s resolving webpage, which features Complainant’s mark, similar color scheme and a log-in feature. See Compl. Annex 4. Complainant claims that the log-in feature may be used as part of a phishing scheme. Id. Therefore, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Respondent registered and uses the <ubs-sw.site> domain name in bad faith because Respondent attempts to attract, for commercial gain, users to the disputed domain name by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website. Specifically, Complainant argues that Respondent’s domain name resolves to a website that features the UBS mark and copies the color scheme, while also potentially engaging in a phishing scheme. Bad faith registration was found under Policy ¶ 4(b)(iv) where respondent was diverting Internet users, searching for the complainant to its own website and likely profiting. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Wells Fargo & Co. v. Mihael, FA 605221 (Forum Jan. 16, 2006) (“Complainant asserts,…that soon after the disputed domain name was registered, Respondent arranged for it to resolve to a web site closely resembling a legitimate site of Complainant, called a ‘doppelganger’ (for double or duplicate) page, the purpose of which is to deceive Complainant’s customers into providing to Respondent their login identification, social security numbers, and/or account information and Personal Identification Numbers…. The Panel finds that Respondent’s behavior, as alleged, constitutes bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).”). Here, Complainant provides a screenshot of the disputed domain name’s resolving webpage where Respondent purportedly attempts to pass off as Complainant to gain Internet users’ personal information. See Compl. Annex 4. The Panel agrees and finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Finally, Complainant asserts that Respondent had actual and/or constructive knowledge of Complainant’s rights in the UBS mark as the result of Complainant’s extensive use of the mark predating the date on which respondent registered the <ubs-sw.site> domain name and Respondent’s use of the mark on the resolving webpage. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s mark prior to registering supports findings of bad faith under Policy ¶ 4(a)(iii). 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.”). Use of a mark on a resolving webpage may demonstrate that a respondent had actual knowledge of a complainant’s rights in a mark at the time of registration, thus constituting bad faith. Finex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Here, the Panel notes that Complainant provides a screenshot of the disputed domain name’s resolving webpage, which prominently displays the UBS mark and Respondent purportedly attempts to pass off as Complainant to gain Internet users’ personal information. See Compl. Annex 4. The Panel finds that Respondent had actual notice of Complainant’s rights in the UBS mark under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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-sw.site> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 3, 2019
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